Ex Parte Potts

Patent Trial and Appeal Board

Feb 28, 2013

11114651 (P.T.A.B. Feb. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MATHEW P. POTTS
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Appeal 2010-010117
Application 11/114,651
Technology Center 2100
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Before MAHSHID D. SAADAT, HUNG H. BUI, and MIRIAM L. QUINN,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant
1
seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-12. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
2

1
Real Party in Interest is Hewlett-Packard Development Company LP.
2
Our decision refers to Appellant’s Appeal Brief filed March 1, 2010
(“App. Br.”); Reply Brief filed June 28, 2010 (“Reply Br.”); Examiner’s
Answer mailed April 30, 2010 (“Ans.”); Final Office Action mailed October
Appeal 2010-010117
Application 11/114,651

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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to a computer program, and an
associated method of parsing a large computer file for a set of target strings
in an efficient manner in which computing power is conserved and parsing
speed is increased. Spec. 2:7-9. The method parses for the selected set of
target strings by initially writing a comprehensive regular expression that
will return a match if any component of the target strings in the set are
present in a line of the computer file. Id. 2:9-12. If a regular expression
match is made in a line, string comparisons for all of the strings in the set of
target strings are run for the line. Id. 2:12-14. A log of all positive string
comparisons that are made in the file is then generated. Id. 2:16, FIG. 1, and
Abstract.
Claims on Appeal
Claims 1, 8, 10, and 12 are independent claims on appeal. Claim 1 is
representative of the invention, as reproduced below with disputed
limitations emphasized:

1. A method of parsing a computer file for a set of
target strings, the file having a multiplicity of lines, each line
being separated by a newline character, in a manner that
conserves computing power and increases parsing speed,
comprising the steps of:

determining individual target strings that comprise the set
of target strings;

29, 2009 (“FOA”); and the original Specification filed April 26, 2005
(“Spec.”).
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writing a comprehensive regular expression based on the
set of target strings, which identifies a line in which a substring
of any individual target string is present;

parsing a line of the file for said comprehensive regular
expression;

running string comparisons between said individual
target strings and strings contained in said line if a match is
successful for said comprehensive regular expression for said
line;

generating a log of successful string comparisons that are
made for said line, said line being identified based how many
newline characters are read as the file is parsed; and

repeating said parsing, running and generating steps for
remaining lines of the file.

Evidence Considered
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gupta US 5,826,258 Oct. 20, 1998
Eminovici US 2003/0236783 A1 Dec. 25, 2003
Baffes US 2004/0123145 A1 Jun. 24, 2004

Examiner’s Rejection
Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eminovici, Baffes and Gupta. Ans. 3-6.

Appeal 2010-010117
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§ 103(a) Rejection of Claims 1-12 over Eminovici, Baffes and Gupta
Regarding independent claim 1, the Examiner finds that Eminovici
discloses a method of parsing a computer file for a set of target strings,
including all of the limitations of claim 1, except for a disclosure of: (1)
parsing a line of the file for said comprehensive regular expression, and (2)
the [comprehensive] regular expression based on a set of strings. Ans. 4-5.
The Examiner finds, however, that: (1) Baffes discloses parsing a line of the
file for said comprehensive regular expression (Ans. 5 (citing Baffes,
¶[0041])) and (2) Gupta discloses the [comprehensive] regular expression
based on a set of strings (Ans. 5 (citing Gupta, figs.4-5, col. 4, ll. 47-55)).
The Examiner then concludes that it would have been obvious to (1)
combine parsing lines according to the regular expression of Baffes with
Eminovici, and (2) generate a regular expression based on a set of strings.
Id. 5. The Examiner also concludes that a person of ordinary skill in the
relevant art would have had a reason to combine the teachings of Baffes and
Gupta with Eminovici, because “it would help to find whether the function
parses,” and because a “regular expression can be generated more accurately
th[a]n by manually attempting to determine a regular expression from a set
of text.” Id. 5.

ISSUE
Based on Appellant’s arguments, the dispositive issue on appeal is
whether the Examiner has erred in rejecting claims 1-12 under 35 U.S.C.
§ 103(a) as being obvious over Eminovici, Baffes and Gupta. In particular,
the issue turns on whether the combination of Eminovici, Baffes and Gupta
discloses or suggests several limitations: “a comprehensive regular
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expression based on the set of target strings,” “parsing a line of the file for
said comprehensive regular expression,” and “running string comparisons
between said individual target strings and strings contained in said line if a
match is successful for said comprehensive regular expression for said line,”
as recited in independent claim 1 and commensurately recited in
independent claims 8, 10, and 12 (emphasis added). App. Br. 11-15.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Only those arguments actually made
by Appellant in the Appeal Brief have been considered. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Independent claims 1, 8, 10 and 12
Appellant contends that the combination of Eminovici, Baffes and
Gupta does not disclose or suggest the following limitations: “a
comprehensive regular expression based on the set of target strings,”
“parsing a line of the file for said comprehensive regular expression,” and
“running string comparisons between said individual target strings and
strings contained in said line if a match is successful for said comprehensive
regular expression for said line,” as recited in independent claim 1 and
commensurately recited in independent claims 8, 10, and 12 (emphasis
added). App. Br. 11-15. In particular, Appellant makes several arguments
against the application of Eminovici, Baffes and Gupta, including:
(1) Eminovici merely compares the string inputted by the user with
the set of substrings 104, without writing any comprehensive regular
expression or parsing a line of the file for that comprehensive regular
expression . . . . Eminovici fails to teach or suggest the
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comprehensive regular expression and all of the features using the
comprehensive regular expression, as recited in claim 1 (App. Br. 12-
13);

(2)[T]he Examiner has not and cannot reasonably assert that the
disclosures contained in Baffes and [Gupta] make up for any of the
deficiencies with respect to Eminovici. For instance, Baffes discloses
in paragraph [0041] that "the event-to-example converter parses the
known events using the functions in the Regular Expression Feature
Parser Library." However, Eminovici does not have an event-to-
example converter. Therefore, the features disclosed in Baffes would
not have worked in Eminovici (App. Br. 13); and

(3) [E]ven if one skilled in the art were somehow motivated to
combine the disclosures of Eminovici and Baffes as proposed by the
Examiner, the proposed combination would still fail to result in
"running string comparisons between said individual target strings and
strings contained in said line if a match is successful for said
comprehensive regular expression for said line," as recited in claim 1
(Reply Br. 6) (emphasis in the original).

At the outset, we note that the Examiner has made “specific fact
findings” with respect to each of the argued claims. See FOA 4-11; Ans. 4-
11. In response thereto, Appellant merely asserts that Eminovici, Baffes and
Gupta do not teach the above-identified limitations of Appellant’s
independent claim 1. App. Br. 11-14. Appellant does not contest the
Examiner’s factual findings regarding Eminovici and Gupta. Nor does
Appellant present any arguments to explain why the Examiner’s factual
findings are in error. As such, we will not review those uncontested aspects
of the rejection. See App. Br. passim; see also Ex Parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) (the BPAI “reviews the obviousness
rejection[s] for error based upon the issues identified by appellant, and in
light of the arguments and evidence produced thereon,” and treats arguments
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not made as waived). See, e.g., Ex parte Cabral, No. 2010-001572, 2012
WL 683718, at *3 (BPAI 2012) (non-precedential), and In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.”).
Regarding the alleged differences between Appellant’s claims 1-12
relative to Eminovici, Baffes and Gupta, we are not persuaded by
Appellant’s arguments and do not find reversible error in the Examiner’s
position. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). We agree
with the Examiner and adopt as our own (1) the Examiner’s findings and
conclusions regarding Eminovici, Baffes and Gupta, and (2) the reasons set
forth by the Examiner in the Examiner’s Answer (Ans. 11-13) in response to
Appellant’s Appeal Brief.
Based on the record before us, we find that the preponderance of the
evidence supports the Examiner’s findings that the combined teachings of
Eminovici, Baffes and Gupta would have suggested the subject matter of
Appellant’s claim 1. Ans. 4-5, 11-13.
More importantly, we find the step of “running string comparisons
between said individual target strings and strings contained in said line” is
conditioned on only “if a match is successful for said comprehensive regular
expression for said line.” During examination, claims are given their
broadest reasonable interpretation. See In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest interpretation,
method steps of Appellant’s claim 1, such as “running string comparisons
between said individual target strings and strings contained in said line” and
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“generating a log of successful string comparisons that are made for said
line, said line being identified based how many newline characters are read
as the file is parsed,” may be contingent. If the condition for performing a
contingent step is not satisfied, the performance recited by these steps need
not be carried out in order for the claimed method to be performed. Cf. In re
Johnston, 435 F.3d. 1381, 1384 (Fed. Cir. 2006) (“[O]ptional elements do
not narrow the claim because they can always be omitted.”). Under this
broadest scenario, the Examiner is not required to find the disclosure of that
step in the prior art in order to render the claims obvious. See Ex Parte Gary
M. Katz, 2011 WL 514314, *4 (BPAI 2011). Therefore, we agree with the
Examiner’s broad interpretation of the disputed limitation of Appellant’s
claim 1. Ans. 11.
For the reasons set forth above, we find Appellant has not shown the
Examiner erred in rejecting representative claim 1 under 35 U.S.C. §103(a).
Accordingly, we sustain the Examiner’s rejection of claim 1 and claims 2-12
that fall therewith.

CONCLUSION
On the record before us, we conclude that the Examiner has not erred
in rejecting claims 1-12 under 35 U.S.C. § 103(a).
3

3
We note that the instant appeal was filed prior to the Supreme Court’s
opinion in Bilski v Kappos, 130 S.Ct. 3218 (June 28, 2010). In the event of
further prosecution, we leave it to the Examiner to evaluate claims 1-11 for
compliance with 35 U.S.C. § 101 in view of Bilski v Kappos, 130 S.Ct. 3218
(June 28, 2010), MPEP revised § 2106.01 (August 2012), and CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011). For
example, independent claims 1, 8, 10, and 12 do not appear to meet the safe-
harbor “machine-or-transformation” (MoT) test of Bilski. Similarly to
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Application 11/114,651

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DECISION
As such, we affirm the Examiner’s final rejection of claims 1-12.
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) (2011).

AFFIRMED
tj

CyberSource Corp., these claims could also be viewed as an abstract idea
capable of being performed in the human mind or by a human using a pen
and paper. In addition, claim 12 could be broadly construed to cover forms
of non-transitory tangible media and transitory propagating signals per se in
view of the ordinary and customary meaning of computer readable media,
particularly where Appellant’s Specification is silent. As such, we leave it
to the Examiner to evaluate and reject claim 12 under 35 U.S.C. § 101 as
covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346,
1355 (Fed. Cir. 2007); and U.S. Patent and Trademark Office, Interim
Examination Instructions for Evaluating Subject Matter Eligibility Under 35
U.S.C. § 101, at 2 (Aug. 2009), available at
http://www.uspto.gov/patents/law/comments/2009-08-
25_interim_101_instructions.pdf (emphases omitted); see also David J.
Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off.
Gaz. Pat. Office 212 (Feb. 23, 2010) (citation omitted).