12573829 (P.T.A.B. May. 9, 2014)

Ex Parte Andrews

Patent Trial and Appeal BoardMay 9, 2014

12573829 (P.T.A.B. May. 9, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/573,829 10/05/2009 Mark Andrews 151.P004C 6948 43831 7590 05/09/2014 BERKELEY LAW & TECHNOLOGY GROUP, LLP 17933 NW Evergreen Parkway, Suite 250 BEAVERTON, OR 97006 EXAMINER BHATIA, AJAY M ART UNIT PAPER NUMBER 2117 MAIL DATE DELIVERY MODE 05/09/2014 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 MARK ANDREWS ____________________ Appeal 2012-000271 Application 12/573,829 Technology Center 2100 ____________________ Before CARLA M. KRIVAK, JASON V. MORGAN, and HUNG H. BUI, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1-36 and 49-60. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 The Real Party in Interest is Robert T. and Virginia Jenkins, as Trustees for the Jenkins Family Trust. 2 Our decision refers to Appellant’s Appeal Brief filed May 4, 2011 (“App. Br.”); Reply Brief filed September 21, 2011 (“Reply Br.”); Examiner’s Appeal 2012-000271 Application 12/573,829 2 STATEMENT OF THE CASE Appellant’s Invention Appellant’s invention relates to recognizing specific data patterns where data is arranged in a complex hierarchy referred to as a “tree,” shown in FIG. 1 as reproduced below with additional markings for illustration. FIG. 1 shows a tree with root 105, eight nodes 110-145 respectively, and eight edges. As shown in FIG. 1, a tree encompasses root or node 105 and additional “nodes” 110-145 connected by branches, referred to as “edges,” with a path existing between any two nodes of the tree. Spec. 7:3-16. Claims on Appeal Claims 1, 13, 25, and 49 are the independent claims on appeal. Claim 1 is representative of the invention, as reproduced below, with disputed limitations emphasized: 1. A method of performing tree matching comprising: subdividing a target tree and a query tree; and applying at least one of the subdivided query trees to at least one of the subdivided target trees. Answer mailed July 21, 2011 (“Ans.”); and the original Specification filed October 5, 2009 (“Spec.”). Appeal 2012-000271 Application 12/573,829 3 Evidence Considered Marquis US 5, 930, 805 July 27, 1999 Christoph M. Hoffmann & Michael J. O’Donnell (Hoffmann), Pattern Matching in Trees, 29 J. ASS’N FOR COMPUTING MACHINERY 68 (1982). Examiner’s Rejections (1) Claims 1-7, 9-19, 21-31, 33-36, 49-55, and 57-60 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Hoffmann. Ans. 4-19. (2) Claims 8, 20, 32, and 56 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hoffmann and Marquis. Ans. 19-22. Issues on Appeal Based on Appellant’s arguments, the dispositive issue on appeal is whether the Examiner erred in rejecting claims 1-7, 9-19, 21-31, 33-36, 49- 55, and 57-60 under 35 U.S.C. § 102(b) as being anticipated by Hoffmann. In particular, the appeal turns on: (1) Whether Hoffmann discloses “subdividing a target tree and a query tree” as recited in Appellant’s independent claims 1, 13, 25, and 49. App. Br. 30-42; Reply Br. 8-11. (2) Whether Hoffmann discloses “subdividing the trees so that the size of the subdivisions does not exceed a specific threshold” as recited in Appellant’s dependent claims 3-6, 14-18, 26-30, and 50- 54. App. Br. 43-44. (3) Whether Hoffmann discloses a “specific threshold comprises a particular number of nodes” as recited in Appellant’s dependent claims 4, 16, 28, and 52. Id. at 44-46. Appeal 2012-000271 Application 12/573,829 4 (4) Whether Hoffmann discloses a “specific threshold comprises the platform native integer of fixed size” as recited in Appellant’s dependent claims 5, 17, 29, and 53. Id. at 47-48. (5) Whether Hoffmann discloses a “specific threshold comprises a natural numeral” as recited in Appellant’s dependent claims 6, 18, 30, and 54. Id. at 49-55. (6) Whether the Examiner’s combination of Hoffman and Marquis discloses “a binary edge labeled tree” as recited in Appellant’s dependent claims 8, 20, 32, and 56. ANALYSIS § 102(b) Rejection of Claims 1-7, 9-19, 21-31, 33-36, 49-55, and 57-60 based on Hoffmann With respect to independent claim 1, and similarly, independent claims 13, 25, and 49, the Examiner finds Hoffmann discloses a computing system and method for pattern matching in trees where a target and a query tree are subdivided with subtrees and comprise roots, nodes, and edges. Ans. 5 (citing Hoffmann, Abstract; pp. 72, 80, 84, and 90-91; FIG. 2A and FIG. 2B). FIG. 2A and FIG. 2B of Hoffmann are reproduced below for illustration. FIG. 2A shows a subject tree and FIG. 2B shows a pattern tree comprising roots, nodes, and edges. Appeal 2012-000271 Application 12/573,829 5 Nevertheless, Appellant contends Hoffmann does not disclose “subdividing” a target tree and a query tree, as recited in independent claim 1. App. Br. 30-42; Reply Br. 8-11. In particular, Appellant contends “identifying” a subtree in a tree is not the same as the “act of subdividing” a tree. App. Br. 33-35. In addition, Appellant also argues Appellant’s Specification and claims apply the term “subdivide” as “splitting a larger tree into separate smaller trees or subtrees.” Id. at 35 (emphasis omitted). We disagree with Appellant. At the outset, we note the claim term “subdividing” is neither defined in Appellant’s claims nor Appellant’s Specification. In the absence of such an explicit definition, the Examiner may adopt the broadest reasonable definition of the term consistent with the Specification. In re Morris, 127 F.3d 1048, 1053-54 (Fed. Cir. 1997). In the instant appeal, the Examiner has broadly interpreted the claim term “subdividing a target tree and a query tree” as encompassing Hoffmann’s disclosed “subject tree” and “pattern tree.” Additionally, Hoffmann’s tree matching algorithm finds all matches of a “pattern tree” to subtrees of a “subject tree” using a subdivision process of these two trees. Ans. 24 (citing Hoffmann pp. 69 and 72 and FIG.2A). We find the Examiner’s broad interpretation of the claim term “subdividing” is reasonable and consistent with Appellant’s own Specification. In our view, Hoffmann’s tree matching algorithm defines a total number of subtrees in a tree; therefore, Hoffmann has shown the subdivisions of trees. Moreover, and contrary to Appellant’s arguments, Figures 1-12 of Appellant’s own Specification are also “identifying” subtrees of a tree with nodes and edges similarly to Hoffmann’s Figures 1, 2, 4, and 7-11. Consequently, we find Hoffmann discloses “subdividing” a Appeal 2012-000271 Application 12/573,829 6 target tree and a query tree, as recited in Appellant’s independent claim 1, and similarly recited in Appellant’s independent claims 13, 25, and 49. With respect to dependent claims 2 and 4, and similarly, dependent claims 3-6, 14-18, 26-30, and 50-54, Appellant argues Hoffmann does not disclose “subdividing the trees so that the size of the subdivisions does not exceed a specific threshold” and that a “specific threshold comprises a particular number of nodes.” App. Br. 43-46. We disagree. As correctly found by the Examiner, Hoffmann discloses a pattern of a maximum size and a total number of subtrees in a tree. Ans. 26 (citing Hoffmann p. 72). We agree the “specific threshold” of the subdivisions can be broadly interpreted as the “the total number of subtrees” in a tree. Consequently, we find Hoffmann discloses the disputed limitations of claims 2 and 4, and similarly, dependent claims 3-6, 14-18, 26-30, and 50-54. With respect to dependent claims 5 and 6, and similarly, dependent claims 17, 18, 29, 30, 53 and 54, Appellant argues Hoffmann does not disclose a “specific threshold comprises the platform native integer of fixed size” and the “specific threshold comprises a natural numeral”. App. Br. 47- 55. Again, we disagree. As correctly found by the Examiner, Hoffmann discloses a machine model can perform bit-string operations where each node n of the tree is associated with a bit string bn. Ans. 28 (citing Hoffmann p. 89). Moreover, and contrary to Appellant’s arguments, Appellant’s own Specification defines “natural numerals” as a “platform native integer of fixed size in a binary format, most commonly either 32 or 64 bits” and a one node tree root comprises a single node associated with the natural numeral one. See Appellant’s Spec. 17 and 23. Consequently, we find the Examiner’s broad interpretation of the claim terms “natural Appeal 2012-000271 Application 12/573,829 7 numerals” and “platform native integer of fixed size” are reasonable and consistent with Appellant’s own Specification. For the reasons set forth above, Appellant’s contentions have not persuaded us of any error in the Examiner’s position. Accordingly, we sustain the Examiner’s anticipation rejection of Appellant’s claims 1-7, 9-19, 21-31, 33-36, 49-55, and 57-60 by Hoffmann. § 103(a) Rejection of Dependent Claims 8, 20, 32, and 56 based on Hoffmann and Marquis With respect to claim 8, and similarly, dependent claims 20, 32, and 56, Appellant argues the Examiner’s combination of Hoffmann and Marquis does not disclose “trees comprise binary edge labeled tree.” App. Br. 55-57. Again, we disagree. Contrary to Appellant’s arguments, we agree with the Examiner that Marquis discloses a binary edge labeled tree where data is indexed and accessed. Ans. 29 (citing Marquis, col. 5, l. 51–col. 6, l. 16; and FIG. 2A). In addition, Marquis discloses that “[r]etrieval of the data records in the storage device 4 is achieved by successively comparing binary 0 and 1 symbols in one of the search keys 1420 with a 0 or 1 edge label on each arc 1412 between the nodes along a path of the connected dots and arcs starting with root node a and ending with the desired leaf.” Id. (citing Marquis, col. 6, ll. 17-22) (original emphasis omitted, some emphasis added). In view of these reasons, we sustain the Examiner’s obviousness rejection of dependent claim 8 and similarly, dependent claims 20, 32, and 56 based on Hoffmann and Marquis. Appeal 2012-000271 Application 12/573,829 8 CONCLUSION On the record before us, we conclude the Examiner has not erred in rejecting: (1) claims 1-7, 9-19, 21-31, 33-36, 49-55, and 57-60 under 35 U.S.C. § 102(b); and (2) claims 8, 20, 32, and 56 under 35 U.S.C. § 103(a). DECISION As such, we AFFIRM the Examiner’s final rejection of claims 1-36 and 49-60.3 3 We note the Examiner has withdrawn the rejection of claims 25-36 under 35 U.S.C. § 101 as covering software per se in response to Appellants’ arguments presented at pages 15-28 of the Appeal Brief. However, in the event of further prosecution, we leave it to the Examiner to evaluate claims 1, 12, 13, 25, and 49 for compliance with 35 U.S.C. § 101 in view of the Supreme Court decision in Bilski v. Kappos, 130 S.Ct. 3218, 3221 (2010), MPEP revised §2106.01 (August 2012), and post-Bilski application under § 101, including CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (holding that a method for verifying the validity of a credit card transaction over the Internet to be nonstatutory as an abstract idea capable of being performed in the human mind or by a human using a pen and paper) and Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render [a] claim patent eligible.” (citation omitted)). For example, independent claims 1 and 49 do not appear to meet the safe-harbor “machine-or-transformation” (MoT) test of Bilski. Similarly, in light of CyberSource, 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 13 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 when Appellant’s Specification is silent. As such, claim 12 could also be considered under 35 U.S.C. § 101 as covering non-statutory subject matter. See In re Nuijten, Appeal 2012-000271 Application 12/573,829 9 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 bar 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). Separately, independent claim 49 should also be evaluated for compliance with 35 U.S.C. § 112, 2nd paragraph for failure to disclose a corresponding structure for each means-plus-function limitation. “[T]he proper test for meeting the definiteness requirement [of 35 U.S.C. §112, 2nd paragraph] is that the corresponding structure (or material or acts) of a means (or step)- plus-function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function. See Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir. 1999). . . . If there is no disclosure of structure, material or acts for performing the recited function, the claim fails to satisfy the requirements of 35 U.S.C. 112, [2nd] paragraph.” MPEP § 2181. Lastly, independent claim 49 should be evaluated for compliance with 35 U.S.C. § 112, 1st paragraph for reciting essentially a single means claim with undue breadth. See MPEP 2164.08(a) and In re Hyatt, 708 F.2d 712, 714-715 (Fed. Cir. 1983) (A single means claim which covered every conceivable means for achieving the stated purpose was held nonenabling for the scope of the claim because the specification disclosed at most only those means known to the inventor.).