Ex Parte Hu et al

Board of Patent Appeals and Interferences

Dec 8, 2009

10279548 (B.P.A.I. Dec. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Appeal 2009-003968
Application 10/279,548
Technology Center 2100
____________________

Ex parte JINGKUN HU and LUYIN ZHAO
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Decided: December 08, 2009
____________________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal the Examiner’s final rejection of claims 1-21 under
35 U.S.C. § 134 (2002). We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
We affirm.

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A. INVENTION
According to Appellants, the invention relates to extensible markup
language programming, and more specifically to a method and system for
reducing code within an extensible markup language program (Spec. 1, ll.
10-11).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A method for reducing code in an extensible mark-up
language program, the method comprising the steps of:

providing a first and second XML schema, where the
second XML schema is customized from the first XML
schema;

analyzing the second XML schema for a node
requirement;

identifying a portion of the first XML schema based on
the node requirement, which portion is incorporated within the
second XML schema;

modifying the second XML schema with the identified
portion of the first XML schema utilizing a uniform resource
identifier format; and

validating the second XML schema.

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C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Zorc US 2003/0167444 A1 Sep. 4, 2003

Klarlund, “DSD: A Schema Language for XML,” FMSP ’00, 101-110
(2000).

Claims 1, 3-11, and 13-21 stand rejected under 35 U.S.C. § 102(b) as
anticipated by the teachings of Klarlund;
Claims 2 and 12 stand rejected under 35 U.S.C. § 103(a) over the
teachings of Klarlund in view of Zorc.

II. ISSUES
The issues are whether Appellants have shown that the Examiner
erred in finding that Klarlund discloses:
1) “providing a first and second XML schema” (claim 1); and
2) “modifying the second XML schema with the identified portion of
the first XML schema utilizing a uniform resource identifier format” (claim
1).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.

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Klarlund
1. Klarlund discloses Document Structure Description (DSD) as a
schema language for XML (p. 101; left col.), wherein DSDs support
software practices by providing document inclusion and redefinition
(p. 107; right col.).
2. A special include processing instruction is used to create the DSD
documents (id.).
3. A URI is used to denote the document to be included (id.)
4. In DSDs, all definitions can be renewed by including a document
containing a definition of a concept and then later redefining the
concept, wherein modification and extension is done by introducing
new attribute types (id.).

IV. PRINCIPLES OF LAW
35 U.S.C. § 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) (citation omitted).
“Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346 (Fed Cir. 1999) “In other words, if granting patent protection on
the disputed claim would allow the patentee to exclude the public from
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practicing the prior art, then that claim is anticipated, regardless of whether
it also covers subject matter not in the prior art.” Id. (citations omitted).
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). "[T]he PTO gives
claims their 'broadest reasonable interpretation.'" In re Bigio, 381 F.3d
1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000)). "Moreover, limitations are not to be read into the claims from
the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
Of course, anticipation "is not an 'ipsissimis verbis' test." In re Bond,
910 F.2d 831, 832-33 (Fed. Cir. 1990) (citing Akzo N.V. v. United States Int'l
Trade Comm'n, 808 F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). "An
anticipatory reference . . . need not duplicate word for word what is in the
claims." Standard Havens Prods., Inc., v. Gencor Indus., Inc., 953 F.2d
1360, 1369 (Fed. Cir. 1991).

V. ANALYSIS
In this decision, we have considered only those arguments actually
made by Appellants. Arguments which Appellants could have made but did
not make in the Brief have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).

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Claims 1, 3-11, and 13-21
Regarding claim 1, Appellants argue that “the noted portion of
[Klarlund] fails to disclose even providing two DSDs” (App. Br. 6).
Appellants also argue that “the reference fails to disclose the modifying of
the second XML schema” (Id. at 7). Further, Appellants contend that “the
Examiner provides no extrinsic evidence or other support” for finding that
DSDs satisfy the requirements of XML Schemas (Id. at 8).
The Examiner finds that since “Klarlund recognizes the need to create
an XML schema from an existing schema via modification and extensions . .
. . Klarlund provides a mechanism for providing a second modified schema
in addition to a first schema” (Ans. 8). The Examiner also finds that
“Klarlund discloses a second schema defining a concept, which can later be
refined based upon modification and extension,” wherein “[t]he refining of a
schema from defining an initial concept to defining a final concept includes
modifying the schema” (Id.). Further, the Examiner finds that a DSD “meets
both the definition of a schema and incorporates many of the traits of a
useful schema” and thus “a DSD is an XML schema” (Id. at 10).
Accordingly, the issues that we address on appeal are whether
Klarlund discloses 1) “providing a first and second XML schema” (claim 1);
and 2) “modifying the second XML schema with the identified portion of
the first XML schema utilizing a uniform resource identifier format” (claim
1).
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We begin our analysis by giving the claims their broadest reasonable
interpretation. See In re Bigio, 381 F.3d at 1324. Furthermore, our analysis
will not read limitations into the claims from the specification. See In re
Van Geuns, 988 F.2d at 1184.
Though Appellants contend that “the Examiner provides no extrinsic
evidence or other support” for finding that DSDs satisfy the requirements of
XML Schemas (App. Br. 8), such contention is not commensurate in scope
with the language of claim 1. That is, claim 1 simply does not place any
limitation on what a “schema” means, includes or represents, other than that
there are first and second XML schema, and that the second XML schema is
analyzed “for a node requirement” and then modified. In fact, claim 1 does
not even place any limitation on what a “node requirement” is. Therefore,
we will not confine the meaning of “schema” to the definition or
“requirements” provided in Appellants’ arguments. Rather, we interpret the
“schema” as a concept that helps organize and interpret information.
Klarlund discloses DSD as a schema language for XML, wherein
DSDs support software practices by providing document inclusion and
redefinition (FF 1). We find that an ordinarily skilled artisan would have
understood the DSDs to be concepts that help organize and interpret
information. That is, the artisan would also have understood a DSD to be a
schema for XML, as set forth in the Examiner’s finding. Thus, we agree
with the Examiner’s finding that a DSD as set forth in Klarlund “meets both
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the definition of a schema and incorporates many of the traits of a useful
schema” (Ans. 9) as required by claim 1.
Though Appellants contend that “the noted portion of [Klarlund] fails
to disclose even providing two DSDs” (App. Br. 6), Appellants appear to be
arguing that Klarlund fails to disclose providing two DSDs at the same time.
However, claim 1 does not cite any such “at the same time” limitation, and
thus, such argument is not commensurate in scope with the language of
claim 1.
Klarlund discloses DSDs, i.e., a plurality of DSDs, to support
software practices by providing document inclusion and redefinition (FF 1).
An ordinarily skilled artisan would have understood the plurality of DSDs to
be a first DSD and a second DSD. Thus, contrary to Appellants’ argument,
we find that Klarlund teaches providing two DSDs.
Though Appellants also argue that “the reference fails to disclose the
modifying of the second XML schema” (App. Br. 7), the Examiner finds
that “Klarlund discloses a second schema defining a concept, which can later
be refined based upon modification and extension,” wherein “[t]he refining
of a schema from defining an initial concept to defining a final concept
includes modifying the schema” (Ans. 8).
Klarlund discloses using a special instruction to create the DSD
documents (FF 2). Thus, we agree with the Examiner that the “node
requirement” of claim 1 used to identify the schema reads on Klarlund’s
special instruction used to identify the DSD.
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Klarlund also discloses the use of URI (FF 3), and redefining the
concept in DSDs using modification and extension (FF 4). Thus, we agree
with the Examiner that Klarlund teaches refining a concept based upon
modification and extension, wherein a URI format is used.
Appellants provide no argument to dispute that the Examiner has
correctly shown where this claimed element appears in the Klarlund. Thus,
Appellants have not shown that the Examiner erred in finding that Klarlund
teaches this claim feature.
Accordingly, we find that the Appellants have not shown that the
Examiner erred in rejecting independent claim 1 and claims 3-11, and 13-20
depending therefrom and falling therewith under 35 U.S.C. § 102(b). As to
independent claim 21, Appellants do not provide separate arguments with
respect to the rejection of claim 1. Thus, we find that the Appellants also
have not shown that the Examiner erred in rejecting independent claim 21
under 35 U.S.C. § 102(b).
Claims 2 and 12
As to claims 2 and 12, Appellants do not provide separate arguments
from the rejection of claim 1, from which they depend. As discussed above,
we find no deficiency regarding Klarlund in the rejection of independent
claim 1. Since Appellants have not provided separate arguments, we
conclude that the Appellants have not shown that the Examiner erred in
rejecting claims 2 and 12 over the teachings of Klarlund in view of Zorc
under 35 U.S.C. § 103(a).
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VI. CONCLUSIONS
(1) Appellants have not shown that the Examiner erred in finding that
claims 1, 3-11, and 13-21 are anticipated by the teachings of Klarlund.
(2) Appellants have not shown that the Examiner erred in concluding
that claims 2 and 12 are unpatentable over the teachings of Klarlund in view
of Zorc.
(3) Claims 1-21 are not patentable over the prior art of record.

VII. DECISION
We affirm the Examiner's decision rejecting claims 1, 3-11, and 13-21
under 35 U.S.C. § 102(b) and rejecting claims 2 and 12 under 35 U.S.C. §
103(a).
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

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