Ex Parte Style

Patent Trial and Appeal Board

Oct 25, 2017

13551891 (P.T.A.B. Oct. 25, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/551,891 07/18/2012 Bernard J. STYLE JR-5135-71 6422
23117 7590 10/27/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
DYER, ANDREW R
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
10/27/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNARD J. STYLE
Appeal 2017-001133
Application 13/551,8911
Technology Center 2100
Before JOHNNY A. KUMAR, TERRENCE W. MCMILLEN and
CARL L. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—23, which constitute all the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The real party in interest is identified as Software AG USA, Inc. App. Br.
3.
Appeal 2017-001133
Application 13/551,891
STATEMENT OF THE CASE
Appellant’s invention relates to processing XML documents of large
size. Abstract; Spec. 16—18, 40-42. Claim 1 is exemplary of the matter
on appeal (emphasis added):
1. A system for processing XML documents, comprising:
processing resources including at least one processor, a
memory, and a nontransitory computer readable storage medium;
wherein the processing resources are configured to:
parse an XML document into one or more constituent
nodes, the XML document including a plurality of objects
representable in accordance with an object model, the XML
document being parsed without also instantiating the objects
therein;
store the parsed constituent nodes and associated
metadata in one or more cacheable partitions; and
in response to requests for objects from the XML
document from a user program, instantiate only said requested
objects from their associated cacheable partitions) in
accordance with the object model.
App. Br. 27 (Claims Appendix).
REJECTIONS
Claims 1, 14, and 23 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1,17, and
20 of copending Application No. 14/109, 118. Final Act. 4.
Claims 1—23 are rejected under 35 U.S.C. § 112 (pre-AIA), second
paragraph, as being indefinite for failing to particularly point out and
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Application 13/551,891
distinctly claim the subject matter which the inventor or a joint inventor, or
for pre-AIA the applicant regards as the invention. Final Act. 4—6.
Claims 1 and 13 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Pullen (US 7,191,186 Bl; iss. March 13, 2007). Final Act. 6—
7.
Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pullen and Shopiro et al. (US 7,680,875 Bl; iss. March
16,2010) (“Shopiro”). Final Act. 7-9.
Claims 4—7, 10, 12, 14—17, 20, 22, and 23 are rejected2 under 35
U.S.C. § 103(a) as being unpatentable over Pullen and Chakraborty et al.
(US Patent 6,542,911; B2; iss April 1, 2003) (“Chakraborty”). Final Act. 9—
17.
Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pullen and Bopardikar et al. (US 6,654,855 Bl; iss.
November 25, 2003) (“Bopardikar”). Final Act. 17—19.
Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Pullen and Meijer et al. (US 7, 454,436 B2; iss. November 18, 2008)
(“Meijer”). Final Act. 19-20.
Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Pullen, Chakraborty, and Shopiro. Final Act. 20-22.
2 The Heading of the Rejection incorrectly identifies the rejected claims, but
the context is clear regarding the rejected claims. Final Act. 9 —17.
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Claim 19 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Pullen, Chakraborty, and Clark et al. (US 7,809,888 Bl; iss. October 5,
2010) (“Clark”). Final Act. 22-23.
Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Pullen, Chakraborty, and Meijer. Final Act. 23—24.
ANALYSIS
The obvious-type double patenting rejection
The Examiner provisionally rejects claims 1,14, and 23 on the ground
of nonstatutory double patenting as being unpatentable over claims 1,17,
and 20 of copending Application No. 14/109,118. Although the claims at
issue are not identical, they are not patentably distinct from each other.
Final Act. 4. In the Answer, the Examiner provides a chart and findings
addressing six points raised by Appellant in the Appeal Brief. Ans. 3—6.
Regarding the differences between the current Application and the
copending Application, the Examiner finds:
The only difference of any significance is co-pending application
14/109,118 performs a step of "pre-parsing" the document before later
re-parsing the same data in the same manner performed by the present
application. Further, the claimed pre-parsing of co-pending application
14/109,118 performs the same steps as the parsing of both its own
reparsing and the parsing of the present application. In other words, co­
pending application 14/109,118 has merely duplicated the step of
parsing, which is obvious absent a showing of new and unexpected
results.
Id. at 5—6 (citing In re Harza, 274 F.2d 669 (CCPA I960)).
Appellant argues, inter alia, that none of the six points is adequately
or accurately addressed. Reply Br. 2—6. According to Appellant, the
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Application 13/551,891
Examiner’s findings regarding “parsing” do not meet the requirement for
obvious-type double patenting. Id. at 2-4. In particular, Appellant argues
the Examiner incorrectly equates “pre-parsing” with “parsing” and
the actual "parsing" in the relevant claims occurs on different elements
and at different times and in response to different events. That is, the
parsing in claim 1 herein parses "an XML document into one or more
constituent nodes." By contrast, the parsing in claim 1 of the T18
application parses "the identified at least one XML segment into one or
more constituent nodes", with XML segments having been already-
generated from the pre-parsing of the XML document called for in that
claim. And in claim 1 of the instant application, the parsing happens
prior to "requests for objects from the XML document from a user
program" — whereas the parsing in the T18 application actually takes
place "in response to a request received for an object from a user
program." The best and most logical comparison of the relevant claims
in this application and the T18 application indicate an enormous set of
nonobviousness differences as between the two claimed parsing
operations. The rejection is flawed for failing to make the appropriate
comparison, and for failing to recognize the problems with
that comparison.
Id. at 3.
On the record3 before us, we are persuaded by Appellant’s arguments
because the Examiner’s findings are insufficient to explain why the
identified differences meet the requirement for obviousness-type double
patenting.
In view of the above, we do not sustain the rejection of claims 1, 14,
and 23.
3 The Examiner refers to the chart as “merely a summary of the record on
appeal, it is neither a new ground of rejection nor a shift in the Examiner's
position.” Ans. 3, fii 1. We find no additional substantive findings in the
record before us.
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The § 112, paragraph 2, rejection
Appellant argues the Examiner errs, in finding as indefinite, the claim
1 limitations “parsing] an XML document into one or more constituent
nodes, the XML document including a plurality of objects representable in
accordance with an object model, the XML document being parsed without
also instantiating the objects therein.'1'’ App. Br. 10— 14; Reply Br. 6—9.
(Emphasis added).
In particular, Appellant argues the Examiner errs in finding “(1)
parsing an XML document necessarily involves ‘converting] an XML
document into an XML DOM object’ and (2) parsing necessarily involves
instantiating.” App. Br. 11. Appellant presents several examples to support
this argument. See App. Br. 11—14.
The Examiner finds the terms “parsing” and “instantiation” are not
defined in the Specification and presents definitions from dictionaries4 for
these terms:
“Parsing” refers to the act of “break[ing] input into smaller chunks so
that a program can act upon the information.” further, instantiation of
an XML object is the act of binding a variable to some value, finally,
binding is understood to mean “[t]o associate two pieces of information
with one another.”
Thus, the act of parsing always instantiates the objects parsed because
it takes the data (i.e., the value) and associates (i.e., binds) that data into
a chunk (i.e., a variable, which is an object). As a result, even
4 “Parse;” Microsoft Computer Dictionary; May 1, 2002; fifth Edition;
Page 494; cited in the present application on June 11, 2015.
“Instantiation;” Tree On-line Dictionary of Computing; June 20,
2010; Page 1, cited in the present application on September 29, 2014.
“Bind;” Microsoft Computer Dictionary; May 1, 2002; fifth Edition;
Page 73.
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Application 13/551,891
Appellant's hypothetical scenario of “parsing] an XML document so
that every X lines of the XML document correspond to a different
object,” which does not appear to be disclosed in the present
specification, requires instantiation.
Therefore, Appellant's argument should not be found persuasive and
the Examiner's rejection should be maintained.
Ans. 8.
In Reply, Appellant argues the Examiner’s errs by presenting
inapplicable dictionary definitions and ignoring the plain language of the
claim language and the Specification. Reply Br. 6—8; see also App. Br. 12—
14; Spec. 1116-28.
We are persuaded by Appellant’s arguments. The claim expressly
recites parsing without instantiation and instantiating later upon request from
a user program, and this is consistent with the Specification. See Spec. 11
16—28. The Examiner’s interpretation is contrary to the language of the
claim and is not consistent with the Specification. Claim terms in a patent
application are given the broadest reasonable interpretation consistent with
the Specification, as understood by one of ordinary skill in the art. In re
Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
In view of the above, we do not sustain the rejection of claim 1, and
independent claim 14 which recites the disputed limitations. We also do not
sustain the rejection of dependent claim 3—13 and 15—23.
Appellant argues the Examiner errs in rejecting dependent claim 2
which recites “parsed constituent nodes stored in the cacheable partition are
encoded in the properties array” because one skilled in the art could tell the
presence of this limitation. App. Br. 14; Reply Br. 8—9 (“[vjisual guidance
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Application 13/551,891
is provided in Fig. 5, which shows an encoded node entry 510 stored in the
properties array 506 of the cacheable partition 502”]. According to
Appellant, the Examiner incorrectly proposes two alternative interpretations
of this limitation which are mutually exclusive because the two
interpretations are not an indication of indefmiteness as “breadth is not
indefmiteness.” Id. at 14. Moreover, the two interpretations are not
mutually exclusive because the latter interpretation would seem to result in
the former and
[n]ote the two interpretations provided on page 12 of the Examiner's
Answer. If (2) “the encoding process occurs while the nodes are stored
in the properties array,” then (1) “the nodes are stored in an encoded
state in the properties array.” There is no plausible basis for
maintaining this portion of the § 112, second paragraph rejection,
either.
Reply 8—9.
The Examiner finds
this claim limitation may be interpreted to mean either 1) the
nodes are stored in an encoded state in the properties array, or 2) the
encoding process occurs while the nodes are stored in the properties
array. (Final Act. 5-6). These interpretations are mutually exclusive
because the first interpretation focuses on the state of the nodes when
they are stored in the properties array (i.e., they are already in an
encoded state when they are stored into the properties array), while the
second interpretation focuses on when the encoding occurs (i.e., the act
of encoding occurs on nodes currently, and previous to the encoding,
stored in the properties array).
Contrary to Appellant's argument, the latter does not result in the
former because if the nodes are encoded while in the properties array,
those nodes cannot then be stored in the properties array in an encoded
state as the nodes are already in the properties array and were stored
there in an un-encoded state.
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Application 13/551,891
Ans. 12-13.
We are persuaded by Appellant’s arguments and do not sustain the
rejection of claim 2.
The §102 rejection
Appellant argues the Examiner errs because, inter alia, Pullen does
not describe the disputed claim 1 limitation of parsing without instantiating,
discussed supra. App. Br. 15—17; Reply Br. 9—10.
We are persuaded by Appellant’s argument that the Examiner applies
an unreasonably broad interpretation of the disputed limitation, discussed
supra regarding the § 112 rejection, which interpretation does not require
parsing without instantiating. In particular, the Examiner stated “[f]or
purposes of examination, this limitation shall be interpreted as requiring
after the XML document is parsed, further, significant processing is not
performed on the data until it is requested by the user program, as claimed in
the final limitation.” Final Act. at 5.
We are persuaded by Appellants’ arguments because the Examiner
provides insufficient evidence to meet the requirement for anticipation for
the claim as broadly, and reasonably, interpreted. In particular, the
Examiner presents insufficient finding that Pullen discloses the claimed
parsing without instantiation as would be understood by one of ordinary skill
in the art. A claim is anticipated only if each and every element as set forth
in the claims is found, either expressly or inherently described in a single
prior art reference, and arranged as required by the claim. Verdegaal Bros.,
Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). See also
In re Crish, 393 F.3d 1253, 1256.
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In view of the above, we do not sustain the rejection of claim 1, and
dependent claim 13 as this claim is not argued separately. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The §103 rejection
Appellant argues the rejections are based on the combination of Pullen
and other cited references and the Examiner presents no findings regarding
these references addressing the § 102 deficiencies of Pullen. App. Br. 17—
25. In particular, there are no additional findings regarding the disputed
limitation parsing without instantiating and, therefore, we agree with
Appellant’s arguments.
In view of the above, we do not sustain the rejection of independent
claim 14. We also do not sustain the rejection of dependent claims 2—12 and
15—23 as these claims are not argued separately. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Because our decision with regard to the disputed limitation is
dispositive of the § 102 and § 103 rejections, we do not address additional
arguments raised by Appellant.
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Application 13/551,891
DECISION
We pro forma reverse the Examiner’s decision rejecting claims 1—23
for obvious type double patenting.
We reverse the Examiner’s decision rejecting claims 1—23 under
35 U.S.C. § 112 (pre-AIA), second paragraph.
We reverse the Examiner’s decision rejecting claims 1 and 13 under
35 U.S.C. § 102(b).
We reverse the Examiner’s decision rejecting claims 2—12 and 14—23
under 35 U.S.C. § 103(a).
REVERSED
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