Ex parte BROSDA et al.

Board of Patent Appeals and Interferences

Jul 15, 1998

07916770 (B.P.A.I. Jul. 15, 1998)

Application for patent filed July 17, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte VOLKERT BROSDA and
VOLKER OBERMEIT
__________
Appeal No. 95-2429
Application 07/916,7701
__________
ON BRIEF
__________
Before THOMAS, HAIRSTON, and JERRY SMITH, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's final rejection of claims 1, 3 and 7-22,
which constitute all the claims remaining in the application.
Amendments after final rejection were filed on September 2, 1994
Appeal No. 95-2429
Application No. 07/916,770
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and September 25, 1996, and both amendments were entered by the
examiner. The former amendment resulted in the withdrawal of
rejections under 35 U.S.C. §§ 112 and 101 [Paper #s 11 and 12].
The claimed invention pertains to a computer system and
computer implemented method for storing and searching a
multiplicity of dictionary entries. Specifically, each
dictionary entry is stored as a group of data structures. Each
data structure of the group is made up of a plurality of
hierarchically related entries.
Representative claim 1 is reproduced as follows:
1. A computer system for storing a multiplicity of dictionary
entries, said system comprising:
a memory;
a group of data structures stored in said memory for each of said
dictionary entries, each of said data structures in each group
comprising a root entry common for said group, a data segment
entry for data, a label entry which indicates a type of said data
and is a node in a label entry hierarchy, and a label sequence
entry indicating a path of label entries in said label entry
hierarchy between the label entry of said each data structure and
said root entry, some of said data segments in each group
collectively forming a word definition; and
means for searching said data structures.
The examiner relies on the following reference:
Simonetti 5,295,261 Mar. 15, 1994
(filed July 27, 1990)
Appeal No. 95-2429
Application No. 07/916,770
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Claims 1, 3 and 7-22 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness the examiner offers Simonetti
taken alone.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants'
arguments set forth in the brief along with the examiner's
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner's answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 1, 3 and 7-22. Accordingly, we reverse.
Appeal No. 95-2429
Application No. 07/916,770
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In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
In so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
Appeal No. 95-2429
Application No. 07/916,770
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The only applied reference in this case is the patent to
Simonetti. Simonetti discloses a database search system and
method which combines features of relational database searching
and hierarchical database searching. The example of a
hierarchical database relationship disclosed in Simonetti is the
relationship between states, counties and cities [column 4].
Simonetti has no discussion whatsoever of a database system for
storing data structures related to dictionary entries.
With respect to independent claim 1, the examiner
basically found that Simonetti teaches a hierarchical database
searching system. According to the examiner, although Simonetti
does not teach the claimed features of dictionary entries or
definitions of words, such limitations do not affect the
functionality of the claimed system, and therefore, do not
structurally distinguish the claimed invention from the Simonetti
system [final rejection, pages 9-10]. Appellants argue that
Simonetti does not disclose or suggest data structures of a
dictionary entry, and that the hierarchy and labels of a
dictionary entry data structure must be considered in the
determination of obviousness. According to appellants, the
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Application No. 07/916,770
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hierarchy and label sequences for data structures of a dictionary
entry would not have been obvious over the teachings of Simonetti
because the components of a dictionary entry are not hierarchical
by nature [brief, page 4]. Appellants also argue that Simonetti
does not teach that some of the data segments collectively form a
word definition as recited in claim 1.
The examiner has responded that the hierarchy that exists
between streets, cities and states in Simonetti is just as
natural as the hierarchy between the letters in the English
alphabet and the alphabetical arrangement of words in a
dictionary. Additionally, the examiner argues that “the
hierarchy recited in the claims in question lacks adequate
structure to distinguish over the prior art” [answer, page 4].
The examiner also asserts that the collection of data segments to
form a word definition has not been given patentable weight
because the phrase is simply a functional recitation without
supporting structure.
We must first consider the examiner’s implicit position
that the recitation of specific data structures and labels cannot
be used to structurally distinguish one database search system
Appeal No. 95-2429
Application No. 07/916,770
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from another. We do not agree with this position as broadly
applied by the examiner. The examiner’s position is essentially
the same position adopted by the examiner in In re Lowry, 32 F.3d
1579, 32 USPQ2d 1031 (Fed. Cir. 1994). There, the court
determined that a memory as a structure could be distinguished by
the nature of the data structures which are stored therein. The
court noted that the data structures in Lowry imposed a physical
organization on the data, 32 F.3d 1583, 32 USPQ2d 1034. We are
of the view that the data structures recited in the appealed
claims impose a similar physical constraint on the memory which
distinguishes the claimed memory from a memory which does not
have these specific data structures.
We also note that independent claim 1, for example, also
recites a “means for searching said data structures.” We fail to
see how such a means could be suggested by the prior art unless
the particular data structures themselves were suggested by the
prior art. Thus, we conclude that the specific recitations of
the data structures must be considered in determining whether the
appealed claims are unpatentable over the prior art.
Having made this determination, we observe that the
examiner has argued that hierarchical data structures of a
Appeal No. 95-2429
Application No. 07/916,770
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dictionary entry would have been obvious in view of the database
system of Simonetti. As noted above, appellants argue that the
artisan would not have appreciated that dictionary entries would
lend themselves to hierarchical data structures of the type
claimed. We agree. The claimed hierarchical data structures
have nothing to do with the “commonly known lexical order”
pointed to by the examiner. The hierarchy in the claimed
invention is established between the items which make up the
entry for a given dictionary entry (see Figures 2-5 which show
the relationship for a single dictionary entry). We agree with
appellants that such dictionary definitions are not normally
considered to be hierarchical in nature in the manner recited in
the claims. Therefore, the database of Simonetti would not have
suggested the hierarchical data structure of a dictionary entry
as recited in the claims.
Since both independent claims 1 and 22 recite the
specific features of data structures which are not taught or
suggested by the data structures of Simonetti, we do not sustain
Appeal No. 95-2429
Application No. 07/916,770
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the rejection of the claims under 35 U.S.C. § 103. Therefore,
the decision of the examiner rejecting claims 1, 3 and 7-22 is
reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JERRY SMITH )
Administrative Patent Judge )
Arthur J. Samodovitz
IBM Corporation/IPLAW Dept.
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