Ex Parte Guo

Patent Trial and Appeal Board

Feb 15, 2013

11532464 (P.T.A.B. Feb. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte DONGBAI GUO
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Appeal 2010-005992
Application 11/532,464
Technology Center 2100
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Before MAHSHID D. SAADAT, DAVID M. KOHUT, and
LARRY J. HUME, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005992
Application 11/532,464

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This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
rejection of claims 2-10, 14, 17-20, 27-33, 35-38, 41, 42, and 46-50.
1
We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a method, data storage device, and
apparatus for validating complex digital objects. Spec. 9-10. Claim 27 is
representative of the invention and is reproduced below:
27. Apparatus for validating a digital object with identifiable
subobjects, the digital object being subject to constraints
concerning structure and/or content of the subobjects, the
apparatus being implemented in a processor and data storage
accessible to the processor and the apparatus comprising:
a representation of the digital object in the data storage;
a validation specification in the data storage that describes
the constraints to which the object is subject;
an executable compiler in the data storage that, when
executed by the processor, produces a compiled validation
specification; and
an executable validator in the data storage that, when
executed by the processor, validates the digital object by
applying the compiled validation specification to the
representation of the digital object.

REFERENCES
Tian US 5,671,353 Sep. 23, 1997

Michael Benedikt et al., Capturing both Types and Constraints in
Data Integration, SIGMOD 2003, June 9-12, 2003.

1
Claims 1, 4, 12, 13, 15, 16, 21-26, 34, 39, 40, and 43-45 were previously
cancelled.
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Application 11/532,464

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REJECTIONS AT ISSUE
Claims 2-10, 17-20, 27, 30-33, 35-38, 46, and 48-50 are rejected
under 35 U.S.C. § 102(b) as being anticipated by Tian. Ans. 3-10.
Claims 14, 28, 29, 41, 42, and 47 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Tian and Benedikt.
Ans. 10-12.
ISSUES
Did the Examiner err in finding that Tian discloses a validation
specification, an executable compiler that produces a compiled validation
specification, or an executable validator that validates the digital object by
applying the compiled validation specification to the representation of the
digital object, as required by claim 27?
2

Did the Examiner err in finding that Tian discloses declarative
constraint language, a constraint defined in terms of other constraints, a
specification of the constraint which includes specifications of other
constraints, or an action specifier, as required by claims 2-10 and 35-38 ?

Did the Examiner err in finding that Tian discloses the limitations
found in claims 17-, 30, 31, and 48? `
Did the Examiner err in finding that the combination of Tian and
Benedikt teaches or suggests optimizing with respect to the cost of
evaluating constraints which includes the cost of applying the constraint to
the digital object, as required by claims 14, 28, 29, 41, 42, and 47?

2
Appellant selects claim 27 as representative of the group of claims
comprising Group 1 that include claims 27, 32, 33, 46, 49, and 50. App. Br.
5, 8.
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ANALYSIS
Claims 27, 32, 33, 46, 49, and 50
Appellant argues that Tian does not disclose a validation specification,
an executable compiler, a compiled validation specification, or a validator as
required by claim 27. App. Br. 8; Reply Br. 2. Appellant argues that Tian’s
validator “does not permit the separation of the description of the constraints
for which validation is necessary from the implementation of the validator”
(App. Br. 9) nor does Tian disclose any of the claimed terms as shown by
the table on page 3 of the Reply Brief. We disagree.
The elements of the claim argued by Appellant (App. Br. 8-9; Reply
Br. 2-3) perform particular functions and the Examiner’s finding of those
elements as software routines (Ans. 13-14) is not precluded by the claim.
Thus, we agree with the Examiner’s finding that a set of rule objects is the
validation specification; building a validation list using a dictionary located
in the memory to obtain a list of elements and modules is the executable
compiler; and accessing dictionary to obtain warnings, applying the rules to
the DICOM message, and generating a warning and storing the warning
when a rule is violated is the executable validator (Ans. 13-14) is reasonable
and consistent with Appellant’s Specification and claim language. Thus, we
agree with the Examiner’s finding (Ans. 13-14) and sustain the Examiner’s
rejection of claim 27 and claims 32, 33, 46, 49, and 50 that have been
grouped with claim 27.
Claims 2-10 and 35-38
Appellant argues elements of the claims that are part of the validation
process, i.e., the type of constraint language, how the constraint is defined,
etc. App. Br. 9-10. The Examiner points to parts of the reference that
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discloses each of these limitations. Ans. 5-7, 10. We agree with the
Examiner’s findings. Ans. 5-7, 10. Appellant additionally argues that Tian
only places a warning on a validation list and does not disclose an action
specifier. App. Br. 10. We do not find this additional argument to be
persuasive since the placement of a warning on a validation list is an action
that is specified and occurs as a result of the evaluation step. As such, we
sustain the Examiner’s rejection of claims 2-10 and 35-38.
Claims 17-, 30, 31, and 48
Appellant merely argues that Tian does not disclose the recited claim
limitations. App. Br. 10. Such statements are not considered to be
arguments. 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”). As such, we sustain the Examiner’s
rejection of claims 17-, 30, 31, and 48.
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Claims 14, 28, 29, 41, 42, and 47
Appellant makes the same arguments with respect to claims 14, 28,
29, 41, 42, and 47 as claim 27. App. Br. 10. For the same reasons discussed
supra with respect to claim 27, we do not find those arguments to be
persuasive. Appellant additionally argues that Benedikt does not teach or
suggest optimizing with respect to the cost of evaluating constraints which
includes the cost of applying the constraint to the digital object because
Benedikt does not teach optimizing the AIG, determining whether the
constraints have been satisfied, or determining costs for executing queries
and shipping data. App. Br. 11.
The Examiner finds that Benedikt teaches that it was known in the art
to determine costs of constraints in data integration and optimize them with
different techniques. Ans. 11. We agree with the Examiner (Ans. 11) that it
would have been obvious to use Benedikt’s cost optimization teachings with
Tian’s disclosure in order “to minimize cost and time associated with [the]
process of validating digital object[s].” Ans. 12. As such, we sustain the
Examiner’s rejection of claims 14, 28, 29, 41, 42, and 47.

CONCLUSION
The Examiner did not err in finding that Tian discloses a validation
specification, an executable compiler that produces a compiled validation
specification, or an executable validator that validates the digital object by
applying the compiled validation specification to the representation of the
digital object, as required by claim 27.
The Examiner did not err in finding that Tian discloses declarative
constraint language, a constraint defined in terms of other constraints, a
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specification of the constraint which includes specifications of other
constraints, or an action specifier, as required by claims 2-10 and 35-38.
The Examiner did not err in finding that Tian discloses the limitations
found in claims 17-, 30, 31, and 48.
The Examiner did not err in finding that the combination of Tian and
Benedikt teaches or suggests optimizing with respect to the cost of
evaluating constraints which includes the cost of applying the constraint to
the digital object, as required by claims 14, 28, 29, 41, 42, and 47.

SUMMARY
The Examiner’s decision to reject claims 2-10, 14, 17-20, 27-33, 35-
38, 41, 42, and 46-50 is affirmed.
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

ELD