Ex Parte Caswell

Board of Patent Appeals and Interferences

Aug 29, 2008

10405674 (B.P.A.I. Aug. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte THOMAS J. CASWELL
________________

Appeal 2008-0987
Application 10/405,674
Technology Center 2100
________________

Decided: August 29, 2008
________________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1, 3-8, 10-15, 17-21, and 23-28. Claims 2, 9,
16, and 22 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE.
Appeal 2008-0987
Application 10/405,674

THE INVENTION
The disclosed invention relates generally to a computer system.
More particularly, Appellant’s invention relates to programmatically
creating an index for a directory database, such as a Lightweight Directory
Access Protocol (LAPD) directory (Spec. 1).
Independent claim 1 is illustrative:
1. A method of creating an efficient index for a directory,
comprising steps of:
obtaining an index for a directory comprising a plurality
of entries, the index structured as a first multi-level hierarchical
tree comprising a plurality of nodes, a topmost one of the levels
comprising a single root node and at least one remaining one of
the levels comprising more than one of the nodes, each of the
nodes specifying an attribute type and a corresponding attribute
value, such that, for each of a plurality of leaf nodes of the first
tree, a path from the leaf node to the root node corresponds to
one of the entries in the directory, the attribute type and
corresponding attribute value specified in each of nodes in the
path representing attribute types and corresponding attribute
values of the corresponding entry in the directory; and
programmatically creating a compressed version of the
index, further comprising the steps of:
programmatically determining, for each of the
levels of the first tree, each unique one of the attribute
types specified in the nodes at that level; and

programmatically building, as the compressed
version, a second multi-level hierarchical tree, wherein:

hierarchical relationships among the levels
of the first tree are preserved in the second tree;
2
Appeal 2008-0987
Application 10/405,674

each of the multiple levels of the second tree
comprises, for each of the programmatically-determined
unique attribute types in a corresponding one of the
levels of the first tree, only a single node in the second
tree, the single node specifying the unique attribute type;
and

the attribute values specified in the nodes of
the first tree are omitted from the nodes of the second
tree.

THE REFERENCES
The Examiner relies upon the following as evidence in support of the
rejections:
Myllymaki US 2002/0188598 A1 Dec. 12, 2002
(filed Apr. 12, 2001)
Kiessig US 2005/0027757 A1 Feb. 3, 2005
(filed Aug. 1, 2003)
Caswell US 2004/0199485 A1 Oct. 7, 2004
(filed Apr. 1, 2003)
Applicant’s Admitted Prior Art (AAPA)

THE REJECTIONS
1. Claims 1, 3, 4, 7, 8, 10, 11, 14, 15, 17, 18, 21, and 23-26 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Myllymaki in view of AAPA.
2. Claims 5, 6, 12, 13, 19, 20, 27, and 28 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Myllymaki in
view of Kiessig.

3
Appeal 2008-0987
Application 10/405,674

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, “[w]hat matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1742
(2007). To be nonobvious, an improvement must be “more than the
predictable use of prior art elements according to their established
functions.” Id. at 1740.
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)). Therefore, we look to Appellant’s Briefs to show error in the
proffered prima facie case.

FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Myllymaki
1. Myllymaki is directed to building a comprehensive database of
a configurable entity, while removing redundancies. (Abst.)
2. Myllymaki teaches a MERGE feature that determines how two
matching nodes are to be integrated. In addition, the MERGE
feature specifies what is to be done to the output when two tree
nodes match. (para. [0016]).
4
Appeal 2008-0987
Application 10/405,674

3. Myllymaki teaches a MATCH feature that is used to describe
how and when two nodes match or overlap. (See para. [0017]).
4. Myllymaki teaches a UNIQUE functionality that specifies that
duplicates potentially generated by MERGE nodes are to be
removed. (para. [0018]).

ANALYSIS
Claims 1, 8, and 15
We consider the Examiner’s rejection of independent claims 1, 8, and
15 under 35 U.S.C. § 103(a) as being unpatentable over Myllymaki in view
of AAPA.
Appellant contends that the cited references, most notably Myllymaki,
fail to disclose or suggest the limitations of “each of the multiple levels of
the second tree . . . comprises, for each of the programmatically determined
unique attribute types in a corresponding one of the levels of the first . . .
tree, only a single node in the second tree, the single node specifying the
unique attribute type.” (App. Br. 13). More specifically, Appellant
contends that instead of having only a single node for each of the unique
attribute types, Myllymaki (Figs. 5 and 8) actually shows multiple nodes of
the same attribute type (App. Br. 13, para. 25).
The Examiner contends that Myllymaki teaches the MATCH feature
includes an attribute that specifies the matching condition, and the UNIQUE
functionality results in the removal of duplicate values (see FF 3-4).
Therefore, according to the Examiner, the aforementioned limitations are
obvious over the teachings of Myllymaki because the MATCH and
UNIQUE functions teach that the attribute type can be selected as a
5
Appeal 2008-0987
Application 10/405,674

matching feature. Thus, the Examiner’s proffers that the first tree can be
merged and pruned based on the attribute type such that the attribute values
specified in the first tree are not included. (Ans. 12-13).
We disagree for the reasons discussed infra.

Claim Construction
“[T]he PTO gives claims their ‘broadest reasonable interpretation.’”
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)).
In the present case, we consider the language of the claim as a whole
and we note that the claimed “attribute values” recited in line 22 of claim 1
derive their antecedent basis from lines 5-6 of claim 1. Lines 5-6 of claim 1
specifically recite “each of the nodes specifying an attribute type and a
corresponding attribute value . . . .” (Claim 1, emphasis added). Therefore,
the language of the claim requires that all of the nodes (i.e., each node) in
the first tree must have an attribute type and a corresponding attribute value.
Thus, we broadly but reasonably interpret the limitation “the attribute values
specified in the nodes of the first tree are omitted from the nodes of the
second tree” (App. Br. 30, claim 1, ll. 22-23) to require that all of the
attribute values of the first tree are omitted from the nodes of the second
tree. (Claim 1, emphasis added).
After considering the evidence before us, we concur with Appellant’s
observation that Myllymaki teaches that the result of the MATCH and
UNIQUE functions is that the non-redundant attribute values will not be
pruned from the tree (see Reply Br. 3). Thus, in Myllymaki all of the
attribute values of the first tree are not omitted.
6
Appeal 2008-0987
Application 10/405,674

Given the claim construction discussed above, and for the reasons
discussed by Appellant in the Briefs, we agree that Myllymaki does not
teach and/or reasonably suggest that all of the attribute values of the first
tree are omitted from the nodes of the second tree. Moreover, the Examiner
has not demonstrated that AAPA cures the deficiencies of Myllymaki. We
note that the aforementioned limitations of claim 1 are also recited in each of
independent claims 8 and 15.
Because we conclude that Appellant has met his burden of showing
error in the Examiner’s prima facie case of obviousness by a preponderance
of the evidence, we reverse the Examiner’s rejection of independent claims
1, 8, and 15 as being unpatentable over Myllymaki in view of AAPA.
If an independent claim is nonobvious under 35 U.S.C. § 103, then
any claim depending therefrom is nonobvious. In re Fine, 837 F.2d 1071,
1076 (Fed. Cir. 1988). Therefore, because we have reversed the Examiner’s
rejection of independent claims 1, 8, and 15, we also reverse the Examiner’s
rejections of each dependent claim on appeal. 1

1 As discussed above, claims 1, 8, and 15 were rejected as being
unpatentable over Myllymaki and AAPA, wherein AAPA was relied upon
by the Examiner to cure the deficiencies of Myllymaki. However, in the
Final Rejection and the Examiner’s Answer, dependent claims 5, 6, 12, 13,
19, 20, 27, and 28 were rejected by the Examiner as being unpatentable over
Myllymaki and Kiessig only (see Ans. 9-10). Although the omission of
AAPA was not argued by Appellant, we nevertheless conclude that the
Examiner’s rejection of dependent claims 5, 6, 12, 13, 19, 20, 27, and 28 is
facially improper under 35 U.S.C. § 103(a) because each dependent claim
incorporates by reference all the limitations of the claims from which it
depends. See 35 U.S.C. § 112, 4th paragraph (“A claim in dependent form
shall be construed to incorporate by reference all the limitations of the claim
to which it refers.”). In addition, the Examiner has not explained how
7
Appeal 2008-0987
Application 10/405,674

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has shown the Examiner erred in rejecting claims 1, 3-8, 10-15,
17-21, and 23-28 under 35 U.S.C. § 103(a) for obviousness.

DECISION
The decision of the Examiner rejecting claims 1, 3-8, 10-15, 17-21,
and 23-28 under 35 U.S.C. § 103 is reversed.

REVERSED

rwk

MARCIA L. DOUBET LAW FIRM
PO BOX 422859
KISSIMMEE FL 34742

Kiessig teaches the limitations that were previously relied upon as being
taught by AAPA.
8