11377016 (P.T.A.B. May. 28, 2013)

Ex Parte Sanders

Patent Trial and Appeal BoardMay 28, 2013

11377016 (P.T.A.B. May. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/377,016 03/16/2006 Daniel Sanders 26530.112 (IDR-920) 5116 47699 7590 05/28/2013 HAYNES AND BOONE, LLP IP Section 2323 Victory Avenue Suite 700 Dallas, TX 75219 EXAMINER LIAO, JASON G ART UNIT PAPER NUMBER 2156 MAIL DATE DELIVERY MODE 05/28/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DANIEL SANDERS ____________ Appeal 2010-008577 Application 11/377,016 Technology Center 2100 ____________ Before MARC S. HOFF, CAROLYN D. THOMAS, and JEFFREY S. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008577 Application 11/377,016 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-22, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Representative Claim Claim 1. A system for providing compound indexes for documents comprising hierarchical, semi-structured data, the system comprising: an XML database for storing a document comprising hierarchical, semi-structured data, the XML database having as its fundamental unit of logical storage an XML document; a computer configured to implement a database engine for performing operations on and in connection with data stored in the XML database; and means for storing at least a portion of an index definition document (“IDD”) for defining an index for the document; wherein the database engine applies the IDD to the document to generate a set of index keys for the document. Prior Art Roth US 2006/0253476 A1 Nov. 9, 2006 Examiner’s Rejections Claims 1 and 19 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claims 1-3, 5-12, and 14-22 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Roth. Claims 4 and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Roth and Thompson. Appeal 2010-008577 Application 11/377,016 3 ANALYSIS Section 101 rejection of claims 1 and 19 The Examiner finds that claims 1 and 19 encompass software per se because the “means for storing” may be software. Ans. 6. Claim 1 recites “a computer configured to implement a database engine,” and claim 19 recites “means for applying the XIDD to the XML document.” The Examiner has not persuasively explained how the computer recited in claim 1 or the means for applying recited in claim 19 encompass software per se. We do not sustain the rejection of claims 1 and 19 under 35 U.S.C. § 101. Section 102 rejection of claims 1-3, 5-12, and 14-22 Appellant contends that Roth does not disclose “an XML database for storing a document comprising hierarchical, semi-structured data, the XML database having as its fundamental unit of logical storage an XML document” as recited in claim 1. App. Br. 4-5. According to Appellant, the XML database that has as its fundamental unit of logical storage an XML document described in paragraphs 4-6 of Roth is somehow different than the data store that stores XML documents described in paragraph 33 of Roth. Reply Br. 4-5. Appellant has not provided persuasive evidence or argument to distinguish “the XML database having as its fundamental unit of logical storage an XML document” from the data store that stores XML documents described by Roth. Appellant contends that Roth does not disclose “means for storing at least a portion of an index definition document (“IDD”) for defining an index for the document.” App. Br. 5. The Examiner finds that Roth Appeal 2010-008577 Application 11/377,016 4 discloses a server 120 with system memory 122 that stores a semantic matching engine 130 which operates with semantic index 172 stored in data store 170. Appellant has not provided persuasive evidence or argument to distinguish “means for storing at least a portion of an index definition document (“IDD”) for defining an index for the document” from the semantic matching engine 130 stored in system memory 122 described by Roth. Appellant contends that Figure 1 of Roth fails to disclose a database engine that “applies the IDD to the document to generate a set of index keys for the document.” Reply Br. 5. Appellant presents this argument for the first time in the Reply Brief. Appellant’s new argument is untimely and has not been considered. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). We sustain the rejection of claim 1 under 35 U.S.C. § 102. Appellant has not presented arguments for separate patentability of claims 2, 3, 5-12, and 14-22, which fall with claim 1. Section 103 rejection of claims 4 and 13 Appellant presents arguments for the patentability of claims 4 and 13 similar to those presented for claim 1 which we find unpersuasive. We sustain the rejection of claims 4 and 13 under 35 U.S.C. § 103. Appeal 2010-008577 Application 11/377,016 5 DECISION The rejection of claims 1 and 19 under 35 U.S.C. § 101 as being directed to non-statutory subject matter is reversed. The rejection of claims 1-3, 5-12, and 14-22 under 35 U.S.C. § 102(e) as being anticipated by Roth is affirmed. The rejection of claims 4 and 13 under 35 U.S.C. § 103(a) as being unpatentable over Roth and Thompson is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED kis