Ex Parte Itani

Board of Patent Appeals and Interferences

Jun 7, 2010

09826915 (B.P.A.I. Jun. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte NORIKO ITANI
____________________

Appeal 2009-0013111
Application 09/826,915
Technology Center 2100
____________________

Decided: June 7, 2010
____________________

Before LANCE LEONARD BARRY, JEAN R. HOMERE, and
CAROLYN D. THOMAS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed April 6, 2001. The real party in interest is Fujitsu Limited. (App. Br.
1.)
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 27. Claims 28 through 39
have been canceled. (App. Br. 2.) We have jurisdiction under 35 U.S.C.
§ 6(b) (2008).
We affirm.
Appellant’s Invention
As depicted in Figure 1 of Appellant’s Drawings, Appellant invented
a method and system (110) for expediting the compression of eXtensible
Markup Language (XML) documents having a common data structure (i.e.
embedded in tags) by eliminating tag analysis therefrom. (Spec. 6, ll. 19-22,
id. at 26, ll. 10-15.) In particular, the compression system (110) includes a
tag list obtaining unit (111) that strips element contents from the common
data structure to generate a single list of start markup tags and end markup
tags (Figure 3B) in the order they appear in the documents. (Id. at. 27, ll. 25-
27, id. at 28, ll. 1-10.) The compression system (110) further includes a
compressing unit (112) that replaces all tags in the list with one or more
predetermined delimiter code. (Id. at 28, ll. 11-17, id at 33, ll. 23-27.) The
compression unit (110) also includes an outputting unit (113) outputting a
one-to-one correspondence between the list of tags and the delimiter codes
in the compressed XML documents. (Id. at 28, ll. 18-25, id. at 32, ll. 18-24.)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
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1. An apparatus for compressing a plurality of structured
documents having a common data structure, said apparatus
comprising:

a tag list obtaining unit obtaining only one tag list,
common to said plural structured documents, that lists start
markup tags and end markup tags in the order that they appear
in the structured documents, by removing element contents
from the common data structure;

a structured document compressing unit, by replacing all
tags in said plural structured documents with a single
predetermined delimiter code, generating a plurality of
compressed documents comprising element contents and
predetermined delimiter codes; and

an outputting unit outputting said single tag list, which is
obtained by said tag list obtaining unit, and also said plurality
of compressed documents, which are generated individually
from said plural structured documents by said structured
document compressing unit, in correspondence with one
another.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Goodman 5,999,929 Dec. 7, 1999
Hind US 6,635,088 B1 Oct. 21, 2003
Maruyama US 7,043,686 B1 May 9, 2006

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Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1 through 6, and 11 through 27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Hind and
Maruyama.
2. Claims 7 through 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hind, Maruyama and Goodman.

Appellant’s Contentions
Appellant contends that the combination of Hind and Maruyama does
not teach or suggest replacing all tags in single tag list with a single
predetermined delimiter code, as recited in independent claim 1. (App. Br.
18, Reply Br. 2-3.) According to Appellant, Hind discloses a plurality of tag
lists having different generated short tags that replace corresponding located
tags obtained from XML documents, whereas the claim requires using a
single predetermined delimiter to replace all tags in the single tag list. (Id.)
Examiner’s Findings
The Examiner finds that Hind’s disclosure of compressing XML
documents by generating a short tag to replace each corresponding tag in a
list of tags located in the XML documents teaches the disputed claim
limitations. (Ans. 13-15.)

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II. ISSUE
Has Appellant shown the Examiner erred in concluding that the
combination of Hind and Maruyama teaches or suggests replacing all tags in
single tag list with a single predetermined delimiter code, as recited in
independent claim 1?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellant’s Specification
1. Appellant’s Specification discloses a first embodiment wherein
tags that are embodied in an XML document are replaced with a single
delimiter2 code “,” such that all the tags in the document are replaced with
the same delimiter code. (Spec. 28, ll. 14-16, id. at 33, ll. 23-27.)
2. Appellant’s Specification discloses another embodiment
wherein tags embodied in an XML document are replaced with
corresponding delimiter codes such that the position of each tag corresponds
to a delimiter code (not necessarily the same) thereby creating a one-to-one
correspondence therebetween. (Id. at 28, ll. 11-14, id. at 29, ll. 16-21, id. at
32, ll. 18-22.)
Hind

2 See Random House Webster’s College Dictionary, 1995, pp. 358 (defining
delimiter as “a character or space indicating the beginning or end of a piece
of computer data.”)
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3. Hind discloses a system for reducing the size of XML
documents being compressed by substituting a unique short tag for each tag
located in the document to thereby create a one-to-one correspondence
between the generated short tags and the located tags. (Col. 4, ll. 21-31.)
4. As depicted in Figure 5A, Hind discloses locating multi-
character start and end markup tags within an XML document. (Col. 13, ll.
7-11.)
5. As shown in Figure 5B, Hind discloses a tag compression
process wherein each unique multi-character tag located in the XML
document is replaced with a unique single character tag (short tag) thereby
creating a one-to one correspondence between the unique multi-character
tags located in the document and the unique short tags created therefor. (Col.
13, ll. 11-16.)
6. Hind discloses storing in a table a correspondence between the
short tags and the located tags. (Col. 13, ll. 26-30.)
7. Hind discloses a display device (22) connected with memory
via a bus (14).
8. Hind discloses “/” character as being part of a tag delimiter, and
not part of a tag name. (Col. 13, ll. 45-47.)

IV. PRINCIPLES OF LAW
Obviousness
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
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(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
V. CLAIM GROUPING
Appellants argue the patentability of claims 1 through 27 in
conjunction with the rejection of independent claim 1. In accordance with
37 C.F.R. § 41.37(c)(1)(vii), we will consider these claims as standing or
falling respectively with claim 1.

VI. ANALYSIS
Independent claim 1 requires, inter alia, replacing with a single
predetermined delimiter code all tags in a single tag list obtained from a
plurality of structured documents. (Br. 20, Claims App’x.)
We first consider the scope and meaning of the phrase “replacing all
tags with a single delimiter code” which must be given the broadest
reasonable interpretation consistent with Appellants’ disclosure, as
explained in In re Morris, 127 F.3d 1048 (Fed. Cir. 1997):
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.

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Id. at 1054. See also In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989) (stating that “claims must be interpreted as broadly
as their terms reasonably allow.”).

Appellant’s Specification indicates that, in a first embodiment,
the same delimiter code is used to replace all tags obtained in the tag
list to thereby create a one-to-many correspondence between the
delimiter code and the tags. (FF. 1) Further, in an alternative
embodiment, the Specification indicates that different delimiter codes
are used to replace the tags obtained in the tag list to thereby create a
one-to-one correspondence between the delimiters and the tags. (FF.
2.)

Our reviewing court further states, “the ‘ordinary meaning’ of a claim
term is its meaning to the ordinary artisan after reading the entire patent.”
Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005).
Upon reviewing Appellants’ Specification, we find the phrase
“replacing all tags with a single delimiter code” can be reasonably construed
consistent with either the first embodiment or the alternative embodiment set
forth hereinabove. However, while the cited phrase can be construed as
using the same delimiter code to replace all the tags, the claim is not so
limiting. In other words, the claim language in question can also be broadly
but reasonably interpreted, as suggested by the Examiner, as utilizing a
single or unique delimiter (not necessarily the same) to replace each unique
tag obtained in the tag list. (Ans. 14.) Thus, we find that while the cited
portions of Appellant’s Specification set forth two different embodiments,
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they are not mutually exclusive. Further, since the claim language does not
favor or preclude a particular embodiment, and since we are not at liberty to
read limitations from the Specification into the claim, we must therefore
broadly but reasonably construe the disputed claim limitation in this appeal.
We find that, to meet the disputed claim language, it suffices that the prior
art of record teaches using a single or unique delimiter code to replace each
corresponding unique tag in the single tag list.
As set forth in the Findings of Fact section, Hind discloses locating
start and end markup multi-character tags within an XML document. (FF. 4.)
We agree with the Examiner that such disclosure fairly and reasonably
teaches or suggests creating a single list of multi-character tags located in
the XML document. (Ans. 13-14.) Further, Hind discloses using a unique
single character tag to replace each unique multi-character tag encountered
in the document. (FF. 5.) Consistent with our claim interpretation above,
we find that by using a unique single character tag to replace each
corresponding unique multi-character tag in the list of multi-character tags,
Hind teaches replacing all the multi-character tags in the tag list with a
single character tag thereby creating a one-to-one correspondence between
the single character tags and the multi-character tags in the tag list.
Additionally, we find that the ordinarily skilled artisan would have readily
appreciated that Hind’s disclosure of a table in a memory (connected to a
display device) for storing the established correspondence between the short
tags and the located tags serves the purpose of being displayed to the user.
(FF. 6-7.) Last, we do not reach the questions of (1) whether Hind’s
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disclosure of a single list is common to a plurality of structured documents
and (2) whether Hind’s disclosure of a single character tag constitutes the
delimiter code, as recited in claim 1, since Appellant failed to raise such
arguments in the Briefs.3 It follows that Appellant has not shown that the
Examiner erred in concluding that the combination of Hind and Maruyama
renders independent claim 1 unpatentable. Similarly, for the foregoing
reasons, Appellant has not shown error in the Examiner’s conclusion of
unpatentability based upon the combination of Hind, Maruyama and
Goodman.

VII. CONCLUSION OF LAW
Appellant has not established that the Examiner erred in rejecting
under 35 U.S.C. § 103(a) claims 1 through 27 as set forth above.

VIII. DECISION
We affirm the Examiner's rejection of claims 1 through 27.
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) (2009).

AFFIRMED

Vsh

3 We have considered in this decision only those arguments Appellant
actually raised in the Briefs. Any other arguments which Appellant could
have made but chose not to make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).

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