Ex Parte Portilla et al

Patent Trial and Appeal Board

Dec 17, 2014

12340323 (P.T.A.B. Dec. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JESUS I. PORTILLA, ASHOO B. SHETTY, and
MICHAEL R. STRICKLER
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Appeal 2012-006654
Application 12/340,3231
Technology Center 2100
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Before ERIC B. GRIMES, CHRISTOPHER G. PAULRAJ, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to computer
program products for converting data in Extensible Markup Language
(“XML”) format to a form configured for storage in a relational database.
The Examiner rejected the claims as failing to comply with the written
description requirement and obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm the obviousness rejections.

1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 1.
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STATEMENT OF THE CASE
Background
“The invention generally relates to a method and system of exporting
data and, in particular, to a system and method of exporting data from a
client-server, collaborative application to a relational database and/or web
based application.” Spec. ¶ 1.
The Claims
Claims 21–23 are on appeal. Claim 21 is representative and reads as
follows.
2l. A computer program product for converting a tabbed
table in an XML format to a form configured for storage in a
relational database and use by a web-based application, the
tabbed table in the XML format derived from unstructured rich
text, the computer program product comprising:
one or more computer-readable tangible storage devices
and program instructions stored on at least one of the one or
more storage devices, the program instructions comprising:
program instructions to transform the tabbed table in the
XML format to an XHTML format configured for storage in a
relational database by creating a parent, table object, creating a
body for the parent table object to form a container including
cells for the tabbed table and creating children of the parent,
table object to record information contents of the cells in the
container;
program instructions to initiate storage of the tabbed
table object, including the body of the parent table object and
the children of the parent table object, in the XHTML format in
a relational database; and
program instructions to subsequently export the tabbed
table, including the body of the parent table object and the
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children of the parent table object, in the XHMTL [sic] format
from the relational database to a web-based application.
App. Br. 26.
The Rejections
1. The Examiner maintains that claims 21–23 are unpatentable under
35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
2. The Examiner maintains that claim 21 is unpatentable under
35 U.S.C. § 103(a) over Eross2 in view of Basu3 and further in
view of Tab Content Script.4
3. The Examiner maintains that claim 22 is unpatentable under
35 U.S.C. § 103(a) over Eross in view of Basu and further in view
of Animated Collapsible Panel in HTML.5
4. The Examiner maintains that claim 23 is unpatentable under
35 U.S.C. § 103(a) over Eross in view of Basu and further in view
of Tab Content Script and Animated Collapsible Panel in HTML.

2 Eross, US 2005/0097452 A1, published on May 5, 2005.
3 Basu et al., US 2007/0180144 A1, published on Aug. 2, 2007.
4 “Tab content Script (v 2.2),” Dynamic Drive, pages 1–3, (2007) (see Ans.
4), available at
http://www.dynamicdrive.com/dynamicindex17/tabcontent.htm (last visited,
Dec. 2, 2014).
5 “Animated Collapsible Panel in HTML,” XtractPro, pages 1–3, July 5,
2007. See Ans. 4.
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DISCUSSION
1. Written Description
The Examiner finds that claims 21–23 fail to comply with the written
description requirement because there is no support in the Specification for
certain claim limitations. Ans. 5–7. Specifically, the Examiner finds no
support for the limitation “by creating a parent[] table object, creating a body
for the parent table object to form a container including cells for the tabbed
table and creating children of the parent, table object to record information
contents of the cells in the container” in claims 21 and 23. Id. The
Examiner also finds no support for the limitation “by creating a parent[]
collapsed object, creating a body for the parent collapsed object to form a
container including cells for the tabbed table and creating children of the
parent, collapsed object to record information content of the uncollapsed
form of the collapsed parent object” in claims 22 and 23. Id.
The dispositive issue with respect to this rejection is whether one of
ordinary skill in the art would recognize that the cited portions of the
Specification provide a description of the invention as claimed.
Principles of Law
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the Applicants’ specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir.
1991)). It is the Examiner’s burden to establish a prima facie case of
unpatentability based on the written description requirement by presenting
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evidence or reasons establishing why persons skilled in the art would not
recognize in the original disclosure a description of the invention defined by
the claims. In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
Analysis
Appellants argue that written description support for the claims is
found in paragraphs 16, 27, and 28 of the original Specification. App. Br.
13–14, 17–18, 21. Appellants submitted a Rule 132 Affidavit from Jesus
Ivan Portilla, executed on October 3, 2011 (“Affidavit”), explaining how
these portions of the original Specification provide a description of the
claim. Specifically, the Affidavit explains how the “pseudo code” in
paragraphs 27 and 28 of the Specification provides support for the claim
limitations at issue. Affidavit 3–7; see also App. Br. 15–21.
In response, the Examiner argues that one of ordinary skill in the art
would not be “able to read the pertinent sections of the Specification and
understand [the] invention.” Ans. 15. The Examiner argues that the
Affidavit provides a detailed description of the pertinent sections of the
Specification but does not explain why one of ordinary skill in the art would
understand those sections to support the claims. Id. at 16–17. The Examiner
asserts that the detailed description provided in the Affidavit should have
been included in the Specification. Id. at 16.
In reply, Appellants argue that the statements in the Affidavit are
correlated to specific statements in the pseudo code in the Specification and
persons of ordinary skill in the art, including computer programmers, would
understand the pseudo code without the explanation provided in the
Affidavit. Reply Br. 1. Appellants also argue that the Examiner has not
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pointed to any statements in the Affidavit that misinterpret the code found in
the Specification. Id.
We find that the Examiner has not established a prima facie case of
non-patentability based on the written description requirement. We note that
the Examiner does not dispute that paragraph 16 and the programming code
in paragraphs 27 and 28 are pertinent to the claim limitations at issue. See
Ans. 15–17. The Examiner only argues that one of ordinary skill in the art
would not understand the code to mean what the Affidavit says it does
without “intimate knowledge of the invention.” Id. at 15. However, we are
persuaded by Appellants’ argument that a person of ordinary skill in the art
would understand the programming code provided in the Specification, and
we find that the Examiner has not pointed to anything in the Affidavit that
misinterprets the code or provides additional information that is not found in
the code. Thus, we conclude that the Examiner has failed to establish why
persons skilled in the art would not recognize that the original disclosure
includes a description of the invention defined by the claims. Accordingly,
we reverse the written description rejection of claims 21–23.
2. Obviousness: Claim 21
The Examiner finds that Eross teaches a computer program product
including program instructions for converting a table in XML format to
XHTML format as required by claim 21. Ans. 8–9. The Examiner
acknowledges that Eross does not expressly disclose storage in a relational
database or use by web-based applications, for which the Examiner relies on
Basu. Id. at 9. The Examiner finds that it would have been obvious to
modify the methods of Eross “to include storage using relational databases
and use by web-based applications, for the purpose of efficiently storing the
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data for later retrieval, as taught by Basu.” Id. at 10. The Examiner also
acknowledges that Eross and Basu fail to disclose the use of tabbed tables.
Id. For this claim requirement, the Examiner relies on Tab Content Script
and concludes that it would have been obvious for the method of Eross and
Basu to convert tabbed tables “for the purpose of rendering tabs on a web
page, as taught by [Tab Content Script].” Id.
The dispositive issue with respect to this rejection is whether the
Examiner has set forth a prima facie case of obviousness.
Principles of Law
In order to establish a prima facie case of obviousness, the Examiner
must show that each and every limitation of the claim is described or
suggested by the combination of prior art references or would have been
obvious based on the knowledge of those of ordinary skill in the art. In re
Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). “[T]he test for combining
references is not what the individual references themselves suggest but
rather what the combination of disclosures taken as a whole would suggest
to one of ordinary skill in the art.” In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971); see also In re Keller, 642 F.2d 413, 426 (CCPA 1981) (one
cannot show nonobviousness by attacking references individually where the
rejections are based on a combination of references).
Analysis
The Examiner finds that claim 21 is obvious in light of the
combination of Eross, Basu, and Tab Content Script. Ans. 18. The
Examiner explains that Eross teaches or suggests the conversion of XML
data, including tables, by the following process:
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Eross teaches this conversion by traversing (parsing) the XML
file. A fi[r]st level XHTML content fragment (parent-table
object) is generated. Each first level fragment corresponds to
each element in the set of first level elements. Next, it is
determined the first level elements contain a set of second level
elements. A second level XHTML content fragment (children
of the parent-table object) is generated that corresponds to each
element . . . in the set of second level elements contained in the
first level elements. The conversion method can be
accommodated for elements nesting to any depth or level. (see
Paragraphs 0010 and 0011).
Ans. 19–20 (citing Eross, ¶¶1011). The Examiner also finds that “Basu
teaches that XML and XHTML documents can be stored and managed in a
relational database” and that Tab Content Script “teaches how to define
HTML tabs for rendering on a web application.” Id. at 20 (citing Basu,
¶¶ 33–35; Tab Content Script 1–2). The Examiner concludes that the
combination of these disclosures teach and suggest the limitations of the
claim. Id.
We find that Appellants have not identified any errors or
inconsistencies in the Examiner’s findings with respect to the prior art, and
Appellants have not called into question the Examiner’s reasoning for
combining the references as proposed. See App. Br. 22–23. Reply Br. 3.
Rather, Appellants only argue that Eross, Basu, and Tab Content Script each
individually fail to disclose “the implementation recited in claim 21 for
converting tabbed tables in the XML to an XHTML format.” App. Br. 22–
23. Based on a review of the cited portions of the prior art, we find that the
evidence of record supports the Examiner’s findings, and Appellants have
failed to identify any errors in the Examiner’s conclusion that the
combination of Eross, Basu, and Tabbed Content Script teaches or suggests
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every limitation of claim 21. Thus, we find that the Examiner has
established a prima facie case of obviousness with respect to claim 21,
which Appellants have failed to rebut. Accordingly, we affirm this
rejection.
3. Obviousness: Claim 22
The Examiner finds that Eross teaches a computer program product
including program instructions for converting data in XML format to
XHTML format as required by claim 22. Ans. 10–11. Again, the Examiner
acknowledges that Eross does not expressly disclose storage in a relational
database or use by web-based applications, for which the Examiner relies on
Basu. Id. at 11–12. The Examiner also acknowledges that Eross and Basu
fail to disclose that the data is a collapsible section. Id. at 12. For this claim
requirement, the Examiner relies on Animated Collapsible Panel in HTML
and concludes that it would have been obvious to combine the art “for the
purpose of rendering collapsible sections on a web page, as taught by
[Animated Collapsible Panel in HTML].” Id. at 12–13.
Similar to their arguments with respect to claim 21, Appellants only
argue that Eross, Basu, and Animated Collapsible Panel in HTML each
individually fails to disclose “the implementation recited in claim [22] for
converting a collapsible section in the XML format to an XHTML format.”
App. Br. 23–25. Again, we find that Appellants have not identified any
errors or inconsistencies in the Examiner’s findings with respect to the prior
art, and Appellants have not called into question the Examiner’s reasoning
for combining the references as proposed. See id.; Reply Br. 3. Based on a
review of the cited portions of the prior art, we find that the evidence of
record supports the Examiner’s findings, and Appellants have failed to
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identify any errors in the Examiner’s conclusion that the combination of
Eross, Basu, and Animated Collapsible Panel in HTML teaches or suggests
every limitation of claim 22. Thus, we find that the Examiner has
established a prima facie case of obviousness with respect to claim 22,
which Appellants have failed to rebut. Accordingly, we affirm this
rejection.
4. Obviousness: Claim 23
Claim 23 is directed to a computer program product incorporating
program instructions related to a tabbed table and a collapsible section as
required by claims 21 and 22, respectively. Appellants do not present any
separate arguments with respect to claim 23. See App. Br. 25. For the
reasons set forth above with respect to claims 21 and 22, we find that the
Examiner has established a prima facie case of obviousness with respect to
claim 23, which Appellants have failed to rebut. Accordingly, we affirm this
rejection.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims
21–23 as obvious, and we reverse the written description rejection of claims
21–23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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