Ex Parte Doran et al

Patent Trial and Appeal Board

Oct 19, 2012

10037175 (P.T.A.B. Oct. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/037,175 11/09/2001 James R. Doran END920010073US1 6793
7590 10/19/2012
John R. Pivnichny, Ph.D.
IBM Corporation, N50/040-4
1701 North Street
Endicott, NY 13760
EXAMINER
TRUONG, LECHI
ART UNIT PAPER NUMBER
2194
MAIL DATE DELIVERY MODE
10/19/2012 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 JAMES R. DORAN, PAUL WILLIAM EVERETT,
GORDAN G. GREENLEE, and ASHRAF N. IBRAHIM
____________

Appeal 2010-005648
Application 10/037,175
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, MARC S. HOFF, and
ANDREW J. DILLON, Administrative Patent Judges.

COURTENAY III, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

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STATEMENT OF THE CASE
Appellants’ claimed invention relates generally “to apparatus and
methods for providing directory service to user applications.” (Spec. 1). In
particular, the invention on appeal is directed to the “use of a web server
having an API (application programming interface) coupled to a data store
of directory entries and a wrapper for accepting queries from a user
application.” (Id.). Independent claim 1, reproduced below, is
representative of the subject matter on appeal:
1. An enterprise directory service apparatus,
comprising:

a data store having a plurality of directory entries;

a web server having an API coupled to said data store,
for sending a query to said data store and receiving a directory
entry; and

a wrapper coupled to said API adapted for accepting said
query from a user application in a plurality of programming
languages.
(disputed limitations emphasized).

REJECTIONS
(1) The Examiner rejected claims 1, 2, 4, 5, 7-11, 13, 15-18, and 20-22
under 35 U.S.C. § 103(a) as being unpatentable over the combined
teachings and suggestions of Kirkwood (US Patent No. 6,665,662
B1) and Lippert (US Patent No 6,356,906 B1).
(2) The Examiner rejected claims 3 and 12 under 35 U.S.C. § 103(a)
as being unpatentable over the combined teachings and suggestions
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of Kirkwood in view of Lippert as applied to claim 1 above and
further in view of Kumar (US Patent No. 6,343,287 B1).
(3) The Examiner rejected claims 6, 14, and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over the combined teachings and
suggestions of Kirkwood in view of Lippert, as applied to claim 1
above, and further in view of Coden (US Patent 5,873,080).

ISSUE
This appeal turns upon claim construction. Based upon our review of
the record, the question presented is whether a broad but reasonable
interpretation, consistent with Appellants’ Specification, of the disputed
claim term “a plurality of programming languages” (claim 1) encompasses
markup languages, such as XML, and database query languages such as
SQL, as proffered by the Examiner (Ans. 5, 9-10), within the meaning of
Appellants’ independent claims?
Appellants’ Contentions
Appellants present the following principal arguments traversing the
Examiner’s rejection of the independent claims over the combination
Kirkwood and Lippert:
It is well known that programming languages are
different from and distinguishable over query languages, such
as SQL or markup languages such as HTML or XML. For
example, programming languages are used by programmers to
create executable applications. Query languages and markup
languages are not used this way. One of ordinary skill would
not be confused and could easily determine whether a language
is a programming language, a query language, or a markup
language.
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As noted by the examiner in the Final Office Action
dated 09/28/2005, page 2, last paragraph, Kirkwood does not
describe a wrapper adapted for accepting a query in a plurality
of programming languages. In fact, Kirkwood’s server side
adapter accepts and passes only XML documents. See
Kirkwood, column 22, lines 5 - 8, and 21 - 27. XML is a
markup language, for example, see Lippert, column 1, lines 40 -
44. XML is not a programming language.
(App. Br. 5).

Appellants’ independent claims require a web server
having an API coupled to a data store and a wrapper coupled to
the API adapted for accepting a query from a user application in
a plurality of programming languages. Although Lippert, as
noted above, describes wrapping in a markup language and
wrapping in a transport protocol, Lippert does not describe how
his server accepts and processes a query. He does state in
column 10, lines 23 - 35, that his invention can be used with
any database query language and any markup language, he does
not describe, suggest, or imply that a query in a plurality of
programming languages can be accepted. In fact, in his
statement of advantages of his invention in column 10, line 61 -
column 11, line 4, Lippert notes that various clients and servers
having inherent database capability such as SQL (a query
language but not a programming language) can interact because
his queries and responses are wrapped with transport protocols
and markup languages understood by the other clients and other
servers. However, he does not describe or suggest anything
about accepting a query in a plurality of programming
languages as required by Appellants’ independent claims.
(App. Br. 6).

The Examiner disagrees:

Kirkwood does not explicitly teach a wrapper is adapted the
query from a user application in a plurality of programming
languages. However, Lippert teaches the invention is not
particularly limited to using any of these constructs or
adaptations, however. Other constructs and adaptations can be
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used to adapt SQL (Structured Query Language) to XML, or
any other database query language to any other markup
language for example (col 10, ln 20-24)/ a predetermined query
language such as SQL. The method wraps the query according
to a predetermined markup language, such as XML (col 2, ln
26-30/ col 5, ln 63-67). In addition[], [a] wrapper [for]
accept[ing] [said] query in the plurality of programming
languages is not described in the specification instead … the
specification page 11, ln[s.] 10-15 said the wrappers may
interface to user applications specific to other programming
languages such as the Rexx programming language or the C
programming languages. The examination of the claims was
based on the meaning described in the specification. Examples
of such programming languages are given in Appellants
specification page 11 as Java, Lotus Script, Rexx, and C was
not in the claim limitation[s].
(Ans. 9).

ANALYSIS
This appeal presents a close question. At the outset, we agree with the
Examiner (Id.) that Appellants merely present examples of several
programming languages in the portions of the Specification proffered as
support for the disputed claim limitation “a plurality of programming
languages.” (See App. Br. 3; see also independent claims 1, 10, 18, 20, and
22). We also find no express definition for “programming languages”
within the Specification.
When we look to the Specification for context, Appellants point to,
inter alia, portions of page 11 as providing support:
Wrapper 1 may be written to interface to Java applications and
wrapper 2 written to interface to LOTUS SCRIPT®
application. Other wrappers may interface to user applications
specific to other programming languages such as the REXX
programming language or the “C” programming language or
other 151 programming languages. API locator 18 accepts the
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query from wrapper 1 or wrapper 2, may perform some
formatting, protocol, or programming language conversions,
and locates the proper API, in this case either API 1 or API 2,
to process the query.
(Spec. 11, ll. 10-18).

We observe that each of the aforementioned programming languages
(listed as examples) in the Specification is executable, or may be interpreted
(as a script) to become executable. (Id.). In particular, we observe that the
supporting portions of the Specification pointed to by Appellants1 are silent
regarding any description of a programming language that is a database
query language, such as SQL, or a markup language, such as XML or
HTML, as relied on by the Examiner in the rejection of each independent
claim on appeal:
Kirkwood does not explicit[ly] teach a wrapper is
adapted for accepting query in a plurality of programming
languages. However, Lippert teaches a wrapper is adapted for
accepting [a] query in a plurality of programming languages (a
predetermined query language such as SQL. The method wraps
the query according to a predetermined markup language, such
as XML, col 2, ln 26-30/ col 5, ln 63-67/ other constructs and
adaptations can be used to adapt SQL to XML, or any other
database query language to any other markup language, col 10,
and ln 20-25).
(Rejection of claim 1, Ans. 5).
We also observe that the secondary Lippert reference relied on by the
Examiner (Id.) broadly contemplates alternative embodiments that may
implement any database query language or any markup language:

1 See App. Br. 3, pointing to p. 10, ll. 1-22, p. 11, ll. 12-15, and p. 13, ll. 11-
14 as support.
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As can be appreciated by those of ordinary skill within the art,
the constructs and adaptations listed in this section are for one
particular embodiment of adapting SQL to XML. The invention
is not particularly limited to using any of these constructs or
adaptations, however. Other constructs and adaptations can be
used to adapt SQL to XML, or any other database query
language to any other markup language, for example.
(Lippert, col. 10, ll. 16-24, emphasis added).

Having exhausted our review of the intrinsic record, including the
plain language of the claims, and the supporting description in the
Specification and drawings, we look, as a last resort, to extrinsic evidence in
the form of dictionaries to provide guidance regarding how the claim term
“programming languages” would have been understood by an artisan at the
time2 of Appellants’ invention:
(1) Microsoft Press Computer Dictionary, Third Edition
(Microsoft Press, 1997, p. 385) defines “programming
language” as “[a]ny artificial language that can be used to
define a sequence of instructions that can ultimately be
processed and executed by the computer. Defining what is
or is not a programming language can be tricky, but general
usage implies that the translation process – from the source
code expressed using the programming language to the
machine code that the computer needs to work with – be
automated by means of another program, such as a compiler.
Thus, English and other natural languages are ruled out,
although some subsets of English are used and understood
by some fourth generation languages.”

(2) The Authoritative Dictionary of IEEE Standards Terms,
Seventh Edition (IEEE Press 2000, p. 876) defines
“programming language” as “[a] computer language used to
express computer programs. Contrast: design language;
query language; specification language; test language.”

2 Appellants’ effective filing date is Nov 9, 2001.
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We particularly observe that the aforementioned Microsoft definition
essentially hinges on whether a source code associated with a particular
programming language may be translated to an executable form. We also
note that the aforementioned IEEE definition expressly excludes query
languages from being considered within the meaning of a programming
language.
As mentioned above, this appeal presents a close question. However,
based upon our review of the claims and Specification, and in consideration
of the extrinsic dictionary evidence discussed above, we are of the view that
Appellants’ construction of “a plurality of programming languages” more
closely comports with the usage that an artisan at the time of the invention
would have understood, i.e., as encompassing languages that are executable,
thus excluding database query languages, such as SQL, and markup
languages, such as XML and HTML. For these reasons, we conclude that
the Examiner’s construction of “a plurality of programming languages” (as
recited in each independent claim on appeal) is overly broad and inconsistent
with Appellants’ Specification.3
On this record, we find the weight of the evidence supports the
Appellants’ position favoring a more narrow construction that would have
been understood by an artisan at the time of the invention. Therefore, we

3 During patent examination, the pending claims must be given their
broadest reasonable interpretation consistent with the specification. In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). The broadest reasonable
interpretation of the claims must also be consistent with the interpretation
that those skilled in the art would reach. In re Cortright, 165 F.3d 1353,
1358 (Fed. Cir. 1999).

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reverse the Examiner’s obviousness rejection of each independent claim on
appeal over the combination of Kirkwood and Lippert. (See rejection 1).
Moreover, given Appellants’ statement of record (reproduced below),
we are also of the view that Appellants have unequivocally disavowed a
construction of the claimed “plurality of programming languages” which
would cover database query languages, such as SQL, and markup languages
such as XML and HTML:
It is well known that programming languages are
different from and distinguishable over query languages, such
as SQL or markup languages such as HTML or XML. For
example, programming languages are used by programmers to
create executable applications. Query languages and markup
languages are not used this way. One of ordinary skill would
not be confused and could easily determine whether a language
is a programming language, a query language, or a markup
language.
(App. Br. 5, para. 2).

Regarding remaining rejections 2 and 3, we do not find, and the
Examiner has not established, that the additional cited secondary references
overcome the aforementioned deficiencies of the base combination of
Kirkwood and Lippert. Therefore, because we have reversed the Examiner’s
rejection of each independent claim on appeal, we also reverse the
Examiner’s rejections of each dependent claim on appeal.

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DECISION
The Examiner’s decision rejecting claims 1-22 under § 103(a) is
reversed.

REVERSED

Peb/pgc