Ex Parte Binding et al

Board of Patent Appeals and Interferences

Sep 25, 2009

10893692 (B.P.A.I. Sep. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CARL BINDING,
RETO HERMANN,
and ANDREAS SCHADE
____________
Appeal 2009-002081
Application 10/893,6921
Technology Center 2100
____________
Decided: September 25, 2009
____________
Before LEE E. BARRETT, JEAN R. HOMERE, and STEPHEN C. SIU,
Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 1-18. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We reverse.

1 Filed July 17, 2004, titled "System and Method for Processing of
Markup Language Information." The real party in interest is International
Business Machines Corporation.
Appeal 2009-002081
Application 10/893,692

2
STATEMENT OF THE CASE
The invention
The invention relates to a processing of markup language information,
such as extensible markup language (XML) based control information. One
of the problems of XML based data is its verbosity. All data is textual in
nature and thus has a low information density. For example, tags and
attribute names represent elements of a finite, small vocabulary for which a
plain text representation is inefficient. Moreover, the processing of textual
XML data is space and time consuming. For instance, to encode a color set
of (red, blue, green) a computing entity would have to handle the strings
"red", "blue", or "green" rather than manipulating a 2-bit binary value.
Additionally, string operations are of linear complexity for comparison and
searches of patterns within a string. Spec. 1, l. 27 to Spec. 2, l. 9.
"The system is to encode structured XML data containing
combinations of a priori well-known data values as binary data, encode the
binary data as textual string data, and embed the binary data in a specifically
marked comment field." Spec. 5, ll. 27-30. For example, textual XML
encoding with embedded tokenized tags and data is shown below:

green
high

Spec. 8, ll. 9-14. In the above, the encoding uses binary value 01 for the
tag, 02 for the tag, 03 for the tag, and 00 for the
Appeal 2009-002081
Application 10/893,692

3
end tag. The values 05 represents "green" and 06 represents "high." The
binary values can be represented with one byte (8 bits). The term
"" represents a specialized comment field. This
binary encoding avoids using strings.
In terms of the claim language, the XML document corresponds to
"markup language information," a tag or data element corresponds to a "part
[of the markup language information] for compression," assigning a binary
value to an XML tag or data element corresponds to "assigning a label
representative of the part to form compressed information representative of
the markup language information." The receiving entity performs the
operations of "receiving the compressed information from the first data
processor, decompressing the information, identifying the label and
associating the label with the part of markup language information," e.g.,
decompressing the 01 label into a tag, identifying it as a
tag, and associating the tag with the proper part of the markup
language information.

Appeal 2009-002081
Application 10/893,692

4
The claims
Representative claim 1 is reproduced below:2
1. A system for processing of markup language information, the
system comprising:
a first computer including a first data processor for receiving
markup language information, identifying a part thereof for
compression, assigning a label representative of the part to form
compressed information representative of the markup language
information comprising the label; and
a second computer including a second data processor, in
communication with the first data processor, for receiving the
compressed information from the first data processor, decompressing
the information, identifying the label and associating the label with
the part of markup language information.

The references

Kataoka US 2003/0005001 A1 Jan. 2, 2003
Sullivan US 7,007,105 B1 Feb. 28, 2006
(filed Jan. 11, 2001)

2 The limitation "assigning a label representative of the part to form
compressed information representative of the markup language information
comprising the label" is somewhat ambiguous. The limitation of "assigning
a label representative of the part to form compressed information
representative of the markup language information" says that the label forms
compressed information representative a part of the markup language
information. The limitation "compressed information representative of the
markup language information comprising the label" can be interpreted as
either: (1) the "compressed information . . . comprising the label," which is
redundant since assigning the label forms the compressed information, or
(2) the "markup language information comprising the label," which does not
make sense since the label represents the markup language.
Appeal 2009-002081
Application 10/893,692

5
Maruyama EP 1 122 655 A2 Aug. 8, 2001

Morin, How to Base64, 2002, http://www.kbcafe.com/articles/
HowTo.Base64.pdf ("Morin").

XER (XML Encoding Rules) Concept, Oct. 14, 2003, http://web.
archive.org/web/20031014134312/http://asf.gils.net/xer/concept.html
("XER Concept").

The rejections
Claims 1, 2, 6, 9, 11, 13, 14, 17, and 18 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Kataoka.
Claims 3-5 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kataoka and Maruyama.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Kataoka and Sullivan.
Claims 8 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kataoka and XER Concept.
Claims 10 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kataoka and Morin.

Groupings of claims
Appellants separately argue the rejection of independent claim 1 and
dependent claim 9. The rejection of independent claims 11 and 17 is stated
to be in error for the reasons stated for independent claim 1. The rejections
of dependent claims 2-8, 10, 12-16, and 18 are stated to be in error for the
reasons given for the claims from which they depend.
Appeal 2009-002081
Application 10/893,692

6
ANTICIPATION
Principle of law
"Anticipation requires the presence in a single prior art disclosure of
all elements of a claimed invention arranged as in the claim." Connell v.
Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983).

Issues
Based on Appellants' contentions, the issues are: Have Appellants
shown that the Examiner erred in finding that Kataoka describes the
following limitations of claim 1: (1) "identifying a part [of the markup
language information] for compression"; (2) "assigning a label
representative of the part to form compressed information representative of
the markup language information comprising the label"; (3) "identifying the
label" and "associating the label with the part of markup language
information"?

Findings of fact
Kataoka describes that is possible to reduce the file size of an XML
(eXtensible Markup Language) document by compressing the document
with a universal data compression technology. ¶ [0007].
Kataoka describes that when the universal data compression
technology is used, a compression process is executed regardless of the data
format of the XML document and, accordingly, it is impossible to identify
whether or not a compressed data file is an XML document when it is in a
compressed state. ¶ [0013].
Appeal 2009-002081
Application 10/893,692

7
Kataoka describes a conversion method for an XML document
capable of identifying an XML document even in a state of data
compression, and capable of recognizing a compression type thereof.
¶ [0016].
Kataoka describes that an XML header is normally added to the front
of an XML document. ¶ [0046]; Fig. 1A. The invention lies is leaving the
XML header intact and compressing the rest of the document. In this way it
is possible to identify that a compressed data file is an XML document by
referring to an XML header. ¶ [0047]; Fig. 1B.

Analysis
(1) "identifying a part[of the markup language
information] for compression"

Appellants argue that: (a) Kataoka teaches compression of the entire
XML document, not a part of the XML document, and the term "part" does
not mean "whole," citing the Merriam-Webster Online dictionary, Br. 5-6;
and (b) Kataoka does not teach identifying a part of markup language
information which is to be compressed, Br. 6-8.

(a) "part"
The Examiner responds that Appellants did not provide a date for the
Merriam-Webster Online dictionary or any hardcopies of the reference on a
Form-1440 or in the evidence appendix, and therefore the reference is not
viewed as prior art. Ans. 12.
Appeal 2009-002081
Application 10/893,692

8
Appellants reply that a dictionary definition is not categorized as
"extrinsic evidence" that is required to be submitted and one of ordinary skill
in the art would interpret the word "part" as having a meaning substantially
similar to the Merriam-Webster Online definition. Reply Br. 2-3.
A dictionary definition is extrinsic evidence. See Phillips v. AWH
Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc) ("Within the class of
extrinsic evidence, the court has observed that dictionaries and treatises can
be useful in claim construction."). Nevertheless, a definition is capable of
easy verification by reference to available dictionaries. Our copy of
Webster's New Collegiate Dictionary (G.&C. Merriam Co. 1977) contains
the identical definition quoted by Appellants. Moreover, the meaning of a
term seldom changes so significantly that a definition after the filing date is
meaningless. The meaning of "part" is understood by an ordinary person to
not include the "whole." The Examiner could have provided a counter-
definition, but did not. The Examiner's interpretation that "part is not
limited to just a part, but is viewed a whole part," (Final Rej. 11; Ans. 12), is
in error because a "part" is not a "whole." We agree with Appellants that
Kataoka does not teach identifying a "part."

(b) "identifying"
The Examiner finds that Kataoka teaches "identifying" a part at
¶ ¶ [0064]-[0066], which describes character extracting and converting after
which the data from the conversion is used for compression, because "data
from the XML document was identified during the extraction and
Appeal 2009-002081
Application 10/893,692

9
conversion since the data needed to be extracted and converted in order to be
compressed when the compression stage occurs within the encoder."
Final Rej. 12; Ans. 12.
The Examiner finds that Kataoka's method is capable of identifying an
XML document even in a state of data compression (Final Rej. 12; Ans. 12),
and "Kataoka does 'identify' part of the XML document by having the
encoder identifies the document" (Final Rej. 12; Ans. 13). The Examiner
again refers to ¶ ¶ [0064]-[0066].
Appellants argue that "[t]he phrase, 'identifying a part thereof for
compression' clarifies that the identifying operation precedes and is
preparatory to a compressing operation." Br. 6. It is argued that Kataoka
fails to teach "identifying" a "part" to be compressed. Br. 7. It is argued that
the character extracting and converting operations in Kataoka are not
equivalent to "identifying" because a table is used to define a determinate
relationship between specific input and output values. Id. at 7-8.
Kataoka does not "identify" a "part" for compression because it
compresses the entire document, not an identified "part" thereof. Kataoka
does not "identify," as a specific recognition operation, "part" of the
document. We agree with Appellants that character extracting and
converting is not equivalent to "identifying a part . . . for compression,"
because these steps are just part of the overall method of forming a
compressed XML document. The fact that Kataoka discloses a header that
identifies an XML document even when it is in a state of data compression,
¶ [0016], is not the same thing as "identifying a part . . . for compression."
Appeal 2009-002081
Application 10/893,692

10
For the reasons stated above, Appellants have shown that the
Examiner erred in finding that Kataoka describes "identifying a part . . . for
compression."

(2) "assigning a label representative of the part . . ."

The Examiner finds that "assigning a label representative of the part to
form compressed information representative of the markup language
information comprising the label" reads on the document header in Kataoka.
Final Rej. 3, 13; Ans. 4, 14. The Examiner asserts:
Once the markup language was identified and used for compression,
the header is formed (Paragraphs 0032, 67) which is a part of the
document after compression and describes (represents) part of the
document since it discloses it is an XML document (FIG. 1B), then
Kataoka discloses assigning a label representative of the part to form
compressed information representative of the mark up language
information comprising the label.

Final Rej. 14; see also Ans. 15.
Appellants argue:
The header disclosed by Kataoka does not represent any definable part
of markup language. While the header includes an indication that
compression exists and that a specific type of compression exists, this
is a property of the document as opposed to a representation of the
document or any part thereof. Thus, the header cannot be equivalent
to the label representing a part of the markup language information
which was identified for compression.

Br. 8. Appellants reiterate that "the header only describes a property of the
document (in this case that the document is an XML document), rather than
Appeal 2009-002081
Application 10/893,692

11
represent a part of the markup language information identified for
compression." Br. 9.
Appellants further argue at length that an XML header is not
inherently equivalent of a "part" of markup language which was identified
for compression. Reply Br. 6-10.
We agree with Appellants that the XML header is not a "label
representative of the part" because the header describes the entire document,
and thus providing a header is not equivalent to "assigning a label
representative of the part." Appellants have shown that the Examiner erred
in finding that Kataoka describes "assigning a label representative of the
part."

(3) "identifying the label" and "associating the label . . ."

The Examiner finds: "The decoder reads the XML header, identifies
compression technique and is used to help decode the compressed markup
information into a decompressed state. The header is associated with the
type of character encoding presented in the data portion (markup
information that was previously compressed)." Final Rej. 14; Ans. 15.
The claim language requires "associating the label with the part of
markup language information," where the "label" is "representative of the
part [of the markup language information identified for compression]."
Appellants argue that a "character encoding is clearly not equivalent to a part
of markup language information." Br. 9. Appellants argue that the claim
limitation "identifying the label" and "associating the label with the part of
Appeal 2009-002081
Application 10/893,692

12
markup language information" incorporate requirements beyond those cited
by the Examiner. Reply Br. 10. It is argued that a compression technique
and character encoding relate to properties of the entire document, not a
document part. Id. at 11.
A "label" is "representative of the part [of the markup language
information]" and is "compressed information representative of the markup
language information." The limitation of "decompressing the information"
has to refer to compressed label information. The limitation of "associating
the label with the part of markup language" again indicates that the label is
representative of "part" of the markup language. The Examiner's
interpretation of the header as the "label" is inconsistent with the claim
language in at least two ways. First, the header is not a label because it does
not identify a "part" of the markup language information. As previously
discussed, "part" is not the "whole." And, because the header describes the
entire document, there is no operation of "associating" the label with a "part"
of the markup language information. Second, the header is not compressed
and the claim requires that the label is compressed information
representative of part of the markup language information.
The Examiner states for the first time in the Answer that "Appellants
failed to disclose how the invention identifies the label or associates the
label with any support from the specification within the brief." Ans. 15.
The Brief points to the Specification, page 6, lines 10-17. Br. 2. The
Examiner has not stated what is missing, so the suggestion that the limitation
can be ignored because it is not described is not persuasive.
Appeal 2009-002081
Application 10/893,692

13
Appellants have shown that the Examiner erred in finding that
Kataoka describes "identifying the label" and "associating the label with the
part of markup language information."

Conclusion
Appellants have shown that the Examiner erred in finding that
Kataoka describes the following limitations of claim 1: (1) "identifying a
part[of the markup language information] for compression"; (2) "assigning a
label representative of the part to form compressed information
representative of the markup language information comprising the label";
(3) "identifying the label" and "associating the label with the part of markup
language information." It is not necessary to address the arguments
regarding dependent claim 9. The rejection of claims 1, 2, 6, 9, 11, 13, 14,
17, and 18 is reversed.

OBVIOUSNESS
The Examiner does not rely on Maruyama, Sullivan, XER Concept, or
Morin for any of the limitations of claim 1. Thus, these references have not
been shown to cure the deficiencies of Kataoka with respect to the rejection
of independent claims 1, 11, and 17. Accordingly, the rejections of
dependent claims 2-10, 12-16, and 18 under 35 U.S.C. § 103(a) are reversed.

Appeal 2009-002081
Application 10/893,692

14
CONCLUSION
The rejections of claims 1-18 are reversed.

REVERSED

rwk

LAW OFFICE OF IDO TUCHMAN (YOR)
ECM #72212
PO Box 4668
New York NY 10163-4668