Ex Parte Hoeft et al

Patent Trial and Appeal Board

Jun 26, 2013

10704923 (P.T.A.B. Jun. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KERSTIN HOEFT and MICHAEL TSESIS
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Appeal 2011-000498
Application 10/704,923
Technology Center 2100
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Before JOHN A. JEFFERY, JASON V. MORGAN, and GREGG I.
ANDERSON, Administrative Patent Judges.

ANDERSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 57-78. Claims 1-56 were previously cancelled. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

STATEMENT OF THE CASE
Appellants’ invention is directed to a system and method related to
modifying a data dictionary. An application operating on an application
server obtains an object based on a data type from a data dictionary. The
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obtained object is copied to create a second object. One or more properties
of the second object are modified to create a modified object. The
application uses the modified object while it is operating. See generally
Spec. ¶ 6. Claim 57 is illustrative:
57. A computer-implemented method for modifying a data
dictionary, comprising:
obtaining from the data dictionary a first data type
representation of a design time object;
converting the obtained first data type representation into
a second data type representation of a runtime object;
encoding the second data type representation according
to a markup based language; and
modifying the data dictionary by transferring the
encoded second data type representation into the data
dictionary.

THE REJECTION
The Examiner rejected claims 57-78 under 35 U.S.C. § 103(a) as
being unpatentable over Deuser (US 6,816,864 B2, filed Dec. 21, 2000) and
Leong (US 2003/0078902, published Apr. 24, 2003). Ans. 3-11.1

ISSUE
Under § 103, has the Examiner erred in rejecting claim 57 by finding
that Deuser and Leong collectively would have taught or suggested a
“modifying the data dictionary by transferring the encoded second data type
representation into the data dictionary”?

1 Throughout this opinion, we refer to (1) the Appeal Brief filed May 10,
2010 (“Br.”); and (2) the Examiner’s Answer mailed July 9, 2010 (“Ans.”).
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ANALYSIS
Rejection of Claims 57-78 under 35 U.S.C. § 103(a)
The key disputed limitation of claim 57 recites, in pertinent part,
“modifying the data dictionary by transferring the encoded second data type
representation into the data dictionary.”
The Examiner finds the disputed limitation is met by Deuser. Ans. 4,
17 (citing Deuser, Fig. 1, col 7, ll. 15-28). Appellants acknowledge that
Deuser discloses that data is retrieved from the LDAP data store, which the
Examiner maps to “obtaining from the data dictionary” of claim 57. Ans.
3-4, 13, Br. 10. Further, Appellants concede Deuser teaches the data
retrieved is converted and then stored in an output XML document. Id.
Appellants allege, however, that Deuser does not teach storing the retrieved
data back to the LDAP data store, as required by the disputed limitation. Id.
We agree with Appellants. The Examiner relies on Deuser’s
description of storing data of Figure 22 to show that converted and encoded
data types are stored, i.e., transferred, to the LDAP or data dictionary as
claimed. Ans. 4, 17 (citing Deuser, col. 7, ll. 53-64). Appellants are correct
in pointing out that Figure 2 and the related description teach converting an
input XML document to text data and then storing the so-converted text data
220. Br. 11, See Deuser, col. 7, ll. 53-55.
On the other hand, retrieval, i.e., obtaining, of data from the LDAP is
taught in Deuser Figure 3 and related description at column 8, lines 18
through 27. The Examiner relies on this passage to map to the first and
second data types and the conversion of the first data type into the second

2 The Examiner cites to Deuser Figure 1. Ans. 4, 17. However, the passage
from Deuser cited relates to Figure 2.
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data type. Ans. 4, 17. As seen in Figure 3, the retrieval of data ends at the
client. At step 390, the data is received and displayed. The retrieved data is
not stored, or transferred, back to the LDAP as the Examiner asserts, let
alone after some sort of undisclosed client updating process. Ans. 17.
The distinction between Figures 2 and 3 of Deuser is key. To restate,
Figure 2 teaches storing data from an Input XML Document 200 to the
LDAP. Figure 3 teaches retrieving data from the LDAP to create an HTML
page at 390. Though both storing and retrieval of data are taught, the
Examiner has not persuasively articulated a reason why one of ordinary skill
would have combined the two separate teachings as the Examiner proposes,
apart from speculation and impermissible hindsight. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007).
In addition to the foregoing, the disputed limitation requires transfer
of “the encoded second data type representation.” The Examiner finds that
the client would “likely” edit and update returned text. Ans. 17. This
process is mapped to the encoding portion of the disputed limitation. Id.
Deuser does not teach or suggest that the text data is either edited or updated
by the client, let alone that it is later encoded and stored back in the LDAP
as the Examiner asserts. The finding is thus devoid of sufficient evidentiary
support. Rejections on obviousness grounds cannot be sustained by mere
conclusory statements. KSR, 550 U.S. at 418.
We therefore are persuaded that the Examiner erred in rejecting (1)
independent claim 57; (2) independent claim 68 which recites commensurate
limitations; and (3) the dependent claims for similar reasons.

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CONCLUSION
The Examiner erred in rejecting claims 57-78 under 35 U.S.C. § 103.

DECISION
The Examiner’s decision rejecting claims 57-78 is reversed.

REVERSED

msc