Ex Parte Storms et al

Board of Patent Appeals and Interferences

Mar 27, 2012

10038071 (B.P.A.I. Mar. 27, 2012)

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.
10/038,071 01/04/2002 Craig Storms 30566.203-US-01 7330
55895 7590 03/28/2012
GATES & COOPER LLP - Autodesk
HOWARD HUGHES CENTER
6701 CENTER DRIVE WEST, SUITE 1050
LOS ANGELES, CA 90045
EXAMINER
BETIT, JACOB F
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
03/28/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CRAIG STORMS and SOREN ABILDGAARD
____________

Appeal 2009-010290
Application 10/038,0711
Technology Center 2100
____________

Before JOHN A. JEFFERY, THU A. DANG, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Autodesk, Inc.
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Application 10/038,071

2

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 12-24, 38-50, and 64-76, which are all the
claims under appeal, as claims 1-11, 25-37, 51-63, and 77-89 are withdrawn.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
The present invention relates to a method for representing large table
structures in a small self-contained data package. (See Spec. 1:4-5.)
Claim 12 is illustrative:
12. A method for generating product data in a self-
expanding data package in a computer system comprising:
generating one or more values in a set of one or
more constant lists and storing said one or more values in the
self-expanding data package, wherein the self-expanding data
package is for product data;
generating one or more calculations that operate on
one or more values in the set of one or more constant lists and
storing said one or more calculations in the self-expanding data
package;
transmitting the self-expanding data package to a
second computer system that expands the self-expanding data
package into an expanded table having expanded table rows,
wherein each expanded table row represents a product and
comprises a combination and each combination is generated by
combining every value in each constant list with any
combination of values from remaining parameters and
performing the one or more calculations on the one or more
values, wherein the one or more calculations eliminate one or
more expanded table rows.

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Appellants appeal the following rejections:
1. Claims 12-16, 18-24, 38-42, 44-50, 64-68, and 70-76 under 35
U.S.C. § 102(e) as anticipated by Kark (US Patent Pub. 2002/0107761 A1,
Aug. 8, 2002); and
2. Claims 17, 43, and 69 under 35 U.S.C. § 103(a) as unpatentable over
Kark.

ANALYSIS
Issue: Did the Examiner err in finding that Kark discloses a self-
expanding data package, as claimed?

Appellants contend that “what is clearly lacking from Kark is any
concept of a self-expanding data package.” (App. Br. 8)
The Examiner found that “[t]he nature of a relational database is to be
‘self expanding’ by linking [the] fields to other tables.” (Ans. 11.) We
disagree with the Examiner.

Appellants’ claim 12 calls for a self-expanding data package and in
Appellants’ Specification “the self-expanding data package is self-contained
in that no external dependencies (e.g., table or database) are required to
interpret the data.” (Spec. 7:17-19.) Claims are given their broadest
reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). To determine whether Kark
anticipates claim 12, we must first determine the scope of the claims. Our
reviewing court stated in Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed.
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Application 10/038,071

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Cir. 2005): “The claims, of course, do not stand alone.” Rather, they are
part of “a fully integrated written instrument,” Markman v. Westview
Instruments, Inc., 52 F.3d 967, 978 (Fed. Cir. 1995), consisting principally
of a specification that concludes with the claims. For that reason, claims
“must be read in view of the specification, of which they are a part.” Id. at
979. As we stated in Vitronics v. Conceptronic, Inc., the specification “is
always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.” 90
F.3d 1576, 1582. Here, Appellants’ Specification describes a “self-
expanding data package” as having no external dependencies.
Contrary to Appellants’ definition of a self-expanding data package,
the Examiner found that Kark discloses a self-expanding data package
because Kark’s “‘LINKFROM fields’ are used both to expand a table using
other data from inside that table (in the case of a product having a sub-
product (see paragraph 0085)) and to expand the table to include any of
varying attributes that are available for a particular product found in another
table.” (See Ans. 11-12)(emphasis added.) In other words, the Examiner
directs our attention to a function whereby Kark uses an external
dependency, i.e., another table, to expand a specific table. “[A]nticipation of
a claim under § 102 can be found only if the prior art reference discloses
every element of the claim . . . .” In re King, 801 F.2d 1324, 1326 (Fed. Cir.
1986) (citing Lindemann Maschinenfabrik GMBH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). “[A]bsence from the
reference of any claimed element negates anticipation.” Kloster Speedsteel
AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986) (citing Atlas
Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1573-1574
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(Fed. Cir. 1984)). Here, the Examiner has failed to establish that Kark’s data
packages is self-expanding as that term is described in Appellants’
Specification. Thus, based upon our review of the record, we find the
weight of the evidence supports the Appellants’ position as articulated in the
Briefs.
Appellants’ independent claims 38 and 64 include limitations similar
in scope to the limitations of claim 12 (supra). Accordingly, we also
conclude Kark does not anticipate each recited feature of claims 38 and 64.
Claims 13-24 (dependent on claim 12), claims 39-50 (dependent on claim
38), and claims 65-76 (dependent on claim 64) stand with their respective
independent claims. Thus, based on the record before us, and for the reasons
set forth with respect to claim 12, we find that the Examiner erred in finding
that Kark discloses each limitation recited in Appellants’ claims 12-24, 38-
50, and 64-76. Accordingly, we reverse the Examiner’s anticipation
rejection of claims 12-16, 18-24, 38-42, 44-50, 64-68, and 70-76, and the
obviousness rejection of claims 17, 43, and 69.
Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments. It
follows that Appellants have shown that the Examiner erred in finding that
Kark renders claims 12-24, 38-50, and 64-76 unpatentable.
Based on the record before us, we find that the Examiner did err in
rejecting claims 12-24, 38-50, and 64-76. Accordingly, we reverse the
rejections of claims 12-24, 38-50, and 64-76 under Kark.
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DECISION
We reverse the Examiner’s § 102 and § 103 rejections.

REVERSED

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