Ex Parte Clarke et al

Patent Trial and Appeal Board

Aug 22, 2014

11421250 (P.T.A.B. Aug. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ADAM R. CLARKE, MATTHEW J. HICKS, and
JOSEPH J. KUBIK
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Appeal 2012-005468
Application 11/421,2501
Technology Center 2100
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Before JOSEPH F. RUGGIERO, STANLEY M. WEINBERG, and
JASON J. CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 21, 23, 24, 26, 31, 33, 34, and 36.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 2.
2 Claims 1–20, 22, 25, 27–30, 32, 35 and 37–40 were previously cancelled.
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Application 11/421,250

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INVENTION
The invention is directed to efficient transfer of large amounts of data
using streaming. Spec. ¶ 2. Claim 21 is illustrative of the invention and is
reproduced below:
21. A computer-implemented method for streaming a
document including metadata and a content body and having an
in-memory model architecture to a repository, comprising:
providing a computer hardware device having a
processor and a memory, the processor being configured to
perform:
creating a data type as a pointer of the content body;
attaching the created data type to the metadata; and
streaming the document to the repository by reading the
metadata including the created data type, not the content body,
of the document into the memory.

REFERENCES
Cicciarelli et al. US 2003/0037328 A1 Feb. 20, 2003
Lee et al. US 2004/0088332 A1 May 6, 2004

REJECTIONS AT ISSUE3
Claims 21, 23, 24, 26, 31, 33, 34, and 36 stand rejected under
35 U.S.C. § 112 second paragraph as being indefinite. Ans. 5.

3 We have decided the Appeal before us. However, in the event of further
prosecution, the Examiner might want to evaluate claims 31, 33, 34, and 36
in light of In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007); Subject Matter
Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010), and the recent Decision in Ex parte Mewherter, 107
USPQ2d 1857 (PTAB 2013)(precedential). We note that Appellants’
Specification specifically includes data signals (e.g. propagated signal) as a
computer-readable storage medium. Spec. ¶ 48.
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Application 11/421,250

3
Claims 21, 23, 24, 31, 33, and 34 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Lee. Ans. 5–7.
Claims 26 and 36 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Lee and Cicciarelli. Ans. 8–10.

ISSUES
Did the Examiner err in finding that claims 21, 23, 24, 26, 31, 33, 34,
and 36 are indefinite?
Did the Examiner err in finding that Lee discloses “streaming the
document to the repository by reading the metadata including the created
data type, not the content body, of the document into the memory,” as
recited in claim 21 and similarly recited in claim 31?

ANALYSIS
Rejection of Claims 21, 23, 24, 26, 31, 33, 34, and 36 under 35 U.S.C.
§ 112 second paragraph
The Examiner finds “[b]ecause the document by definition includes
both the metadata and the body, streaming the document implicitly requires
streaming both components. . . . the claim reads ‘streaming the document’,
NOT ‘streaming the metadata’. . . . [t]he claim contradicts itself as drafted.”
Ans. 10. Appellants contend “the entire document is considered as being
‘streamed’ although the content body is not actually read into the memory,
but rather is retrieved from the back end storage using the pointer.” App. Br.
5.
We agree with Appellants because the claim recites “streaming the
[entire] document [that includes the metadata and the content body] to the
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repository by reading the metadata including the created data type, not the
content body, of the document into memory.” Put another way, although the
entire document, which includes the metadata and content body, is streamed
to the repository, only the metadata (not the content body) is read into the
memory. App. Br. 5; Reply Br. 3. Thus, the claims are not contradictory
and are not indefinite.
Accordingly, for the reasons stated supra, we do not sustain the
Examiner’s rejection of claims 21, 23, 24, 26, 31, 33, 34, and 36 under 35
U.S.C. § 112, second paragraph.

Rejection of Claims 21, 23, 24, 26, 31, 33, 34, and 36 under 35 U.S.C.
§§ 102(b) and 103(a)
Claim 21 recites, “streaming the document to the repository by
reading the metadata including the created data type, not the content body,
of the document into the memory.” Claim 31 recites similar features.
Claims 23, 24, 26, 33, 34, and 36 depend from one of independent claims 21
and 31.
The Examiner finds Lee discloses “a compound document can be split
into two streams: one stream comprising the body of the document, and one
stream comprising the annotations of the document.” Ans. 12. Moreover,
the Examiner finds “the term ‘annotation’ to be within the definition of the
term ‘metadata’ as required by the claims.” Ans. 12. Appellants contend
“Lee does not teach the Appellants’ inventive concept, namely only reading
metadata including the attached pointer (not the body of the content which
can be very large) into the memory.” App. Br. 11. Further, Appellants
contend “Lee does not teach the claimed limitation of streaming the
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document to the repository by reading the metadata including the created
data type, not the content body, of the document into the memory.” Reply
Br. 6.
We agree with the Appellants because the cited portions of Lee relied
upon by the Examiner (¶ 152) merely state “the annotation data stream 1123
is separate from the document data stream 1121, and the annotations and
documents are stored separately…in an XML document repository 1101 and
an XML annotation repository 1103,” which does not disclose “streaming
the document to the repository by reading [as opposed to transferring or
writing as disclosed in Fig. 11 of Lee] the metadata including the created
data type, not the content body, of the document into the memory.”
(Emphasis added). Reply Br. 6.
Accordingly, for the reasons stated supra, we do not sustain the
Examiner’s rejection of claims 21, 23, 24, 26, 31, 33, 34, and 36 based on
the prior art of record.

DECISION
The Examiner’s decision to reject claims 21, 23, 24, 26, 31, 33, 34,
and 36 under 35 U.S.C. § 112 second paragraph is reversed.
The Examiner’s decision to reject claims 21, 23, 24, 26, 31, 33, 34,
and 36 under 35 U.S.C. §§ 102(b) and 103(a) is reversed.

REVERSED

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