Ex Parte Graves et al

Board of Patent Appeals and Interferences

Jan 12, 2010

10256791 (B.P.A.I. Jan. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID A. GRAVES, PARVATHI NAIR, and
MARGARET M. BERTSCH
__________

Appeal 2009-003162
Application 10/256,791
Technology Center 2100
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Decided: January 12, 2010
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Before LANCE LEONARD BARRY, JEAN R. HOMERE, and
ST. JOHN COURTENAY III, 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 final rejection of claims 1-24. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE

THE INVENTION
Appellants’ invention relates generally to computer networks.
More particularly, Appellants’ invention is directed to a validation system
and method. (Spec. 1, para. [0001]).

ILLUSTRATIVE CLAIM

1. A validation system, comprising:

a memory accessible by a processor and having an extensible
markup language (XML) data model of a computer network, the XML
data model relating at least two objects of the computer network
corresponding to a set of syntax rules and defining a physical structure
of the computer network;

a set of semantic rules accessible by the processor and having
semantic information expressed in XML format corresponding to the
XML data model; and

a validator adapted to validate the XML data model of the
computer network using the set of semantic rules by checking for
compliance of attribute and relationship requirements of
interconnected objects in the computer network with the set of
semantic rules.

PRIOR ART
Beadles US 2003/0037040 A1 Feb. 20, 2003

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THE REJECTION1
The Examiner rejected claims 1-24 under 35 U.S.C. § 102(e) as
anticipated by Beadles. See Ans. 2.

CLAIM GROUPING
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1, 11, and 19. See 37 C.F.R.
§41.37(c)(1)(vii).

APPELLANTS’ CONTENTIONS
1. Appellants contend that Beadles does not disclose at least “a
memory accessible by a processor and having an extensible markup
language (XML) data model of a computer network, the XML data model
relating at least two objects of the computer network corresponding to a set
of syntax rules and defining a physical structure of the computer network.”
(App. Br. 12, claim 1; see also similar language recited in independent
claims 11 and 19).

2. Appellants assert that likewise, Beadles does not disclose: “a
validator adapted to validate the XML data model of the computer network
using the set of semantic rules by checking for compliance of attribute and

1 The Examiner has withdrawn the Final Office Action rejections under 35
U.S.C. §§101, 112 first paragraph, 112 second paragraph, and 103. (Ans. 2-
3).
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relationship requirements of interconnected objects in the computer network
with the set of semantic rules.” (Underline in original) (App. Br. 13).

ISSUE
Have Appellants shown the Examiner erred in determining that
Beadles discloses an extensible markup language (XML) data model of a
computer network, the XML data model relating at least two objects of the
computer network corresponding to a set of syntax rules and defining a
physical structure of the computer network? (See claim 1; see also similar
language recited in independent claims 11 and 19).

PRINCIPLES OF LAW
Anticipation under § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.
Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(citations omitted).
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Appellants have 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). Therefore, we look to Appellants’ Briefs to show error in
the Examiner’s proffered prima facie case.

FINDINGS OF FACT
THE BEADLES REFERENCE
1. Beadles discloses that a user selects policies using a graphical
user interface (GUI). The policies are created in GUI format. (Para.
[0022]).
2. Beadles discloses a bulk loader that receives the XML files
identifying the user’s selected policies and network devices. (Para. [0026]).
3. Beadles discloses that the user selects a topology for the
selected intranet policy. (Para. [0065]).

ANALYSIS
We decide the question of whether Appellants have shown the
Examiner erred in finding that Beadles discloses an XML data model as
claimed in claim 1, and similarly recited in claims 11 and 19.
Based upon our review of the record before us, we find each of
Appellants’ arguments for patentability regarding the claimed “XML data
model” is predicated on nonfunctional descriptive material. We note that
functional descriptive material consists of data structures or computer
programs which impart functionality when employed as a computer
component. In contrast, non-functional descriptive material refers to data
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content that does not exhibit a functional interrelationship with the substrate
and does not affect the way the computing processes are performed. See
MPEP § 2106.01.
Here, the argued feature (XML data model) relating at least two
objects of the computer network corresponding to a set of syntax rules and
defining a physical structure of the computer network is not positively
recited as performing or affecting any computer-implemented function.
Instead, the recited XML data model is merely defined and awaits
validation. The validation function is not positively recited as actually being
performed, as the claim merely recites “a validator adapted to validate the
XML data model . . . .” (Claim 1, emphasis added, cf. “means for
validating” claim 19). Therefore, we find the functionality of the computer
is not changed or performed differently according to the particular type of
data (XML data model). The content of such nonfunctional descriptive
material is not entitled to weight in the patentability analysis. In a
precedential decision, an expanded panel recently held that elements that do
not affect the claimed process are non-functional material and are merely
descriptive. See Ex parte Nehls, 88 USPQ2d 1883, 1887-1888 (BPAI 2008)
(precedential) available at
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf.2

2 Cf. In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (“Lowry does not
claim merely the information content of a memory. . . . Nor does he seek to
patent the content of information resident in a database.”). See also Ex parte
Curry, 84 USPQ2d 1272 (BPAI 2005) (nonprecedential) (Fed. Cir. Appeal
No. 2006-1003, aff’d Rule 36 Jun. 12, 2006); Manual of Patent Examining
Procedure (MPEP) § 2106.01 (Eighth ed., Rev. 7, July 2008).
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Because Appellants’ arguments concerning the XML data model
would require us to give weight to nonfunctional descriptive material, we
find Appellants have not met their burden of showing error in the
Examiner’s specific findings of fact. Thus, we find that defining a data
model that awaits validation does not distinguish over Beadles, because we
give the particular type of data that awaits validation no patentable weight in
our analysis.
Regarding associated dependent claims 2-10, Appellants merely urge
patentability of these claims based upon their dependence from claim 1.
Therefore, claims 2-10 fall with claim 1.
Regarding independent claims 11 and 19, Appellants argue limitations
similar to those discussed supra with reference to claim 1. (App. Br. 15-20).
While claim 11 positively recites that a set of semantic rules expressed in
XML format is applied to the (XML) data model to validate the relationship
between the at least two objects, the alerting step is not positively recited as
resulting from the claimed validation, nor are the validation and alerting
steps limited to being performed as computer-implemented functions. We
conclude the claimed validation and alerting steps could be performed by a
person. Therefore, we find the (XML) data model of claim 11 is
nonfunctional descriptive material that is not positively recited as
performing or affecting any computer-implemented function.
Claim 19 suffers from a similar deficiency regarding the XML format
data, although instead of an XML data model, “a set of semantic rules
expressed in XML format” is recited. We conclude that the recited “means”
(denoting corresponding structures) are merely capable of performing
functions that are not positively recited as actually being performed.
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Therefore, we find Appellants’ arguments unpersuasive regarding each of
independent claims 11 and 19. Dependent claims 12-18 fall with
independent claim 11, and dependent claims 20-24 fall with independent
claim 19.

CONCLUSION
Based on the findings of facts and analysis above, Appellants
have not shown the Examiner erred in finding that Beadles discloses
an XML data model as claimed.

DECISION
We affirm the Examiner’s decision rejecting claims 1-24 under
35 U.S.C. § 102(e).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

pgc

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