Ex Parte KrishnamurthyDownload PDFPatent Trial and Appeal BoardAug 25, 201310848640 (P.T.A.B. Aug. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/848,640 05/18/2004 Sanjay M. Krishnamurthy 50277-2255 5622 42425 7590 08/27/2013 HICKMAN PALERMO TRUONG BECKER BINGHAM WONG/ORACLE 1 Almaden Boulevard Floor 12 SAN JOSE, CA 95113 EXAMINER PHAM, KHANH B ART UNIT PAPER NUMBER 2166 MAIL DATE DELIVERY MODE 08/27/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SANJAY M. KRISHNAMURTHY ____________________ Appeal 2011-001796 Application 10/848,640 Technology Center 2100 ____________________ Before ERIC S. FRAHM, MICHAEL R. ZECHER, and ANDREW J. DILLON, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-001796 Application 10/848,640 2 This is a decision on Appellant’s Request for Rehearing filed on August 1, 2013 (hereinafter “Request”). In the Decision On Appeal mailed June 25, 2013 (hereinafter “Decision”), the Patent Trial and Appeal Board (hereinafter “Board”) affirmed the Examiner’s final rejection of claims 1, 3-9, and 11-19 as being anticipated by Dodds (US 2006/0101320 A1) under 35 U.S.C. § 102(e) (Decision 2, 6, 9-10, 14, and 15), and reversed the Examiner’s final rejection of claims 1, 3-9, and 11-16 as lacking both written description and enablement under 35 U.S.C. § 112, first paragraph (Decision 2, 6-9, 14, and 15). Because (i) Appellant only requests rehearing as to the Board’s Decision regarding the anticipation rejection of claims 1, 3-9, and 11-19; (ii) the Decision addressed claim 1 as representative of claims 1, 3-9, and 11-19 (Decision 4, fn. 2); and (iii) Appellant only presents specific arguments as to claim 1 (Request, ¶¶ 4-6, 8, 9, and 15, arguing only claim 1), we only address claim 1 herein. Further, we only reconsider the Decision with regard to the anticipation of claims 1, 3-9, and 11-19 based on the specific allegations made by Appellant in the Request, and we do not reconsider the Decision with regard to the written description and enablement rejections of claims 1, 3-9, and 11-16. The Board sustained the Examiner’s anticipation rejection of claims 1, 3-9, and 11-19 (Decision 2, 6, 9-10, 14, and 15), based on (i) answering Issue (3) (see Decision 5) in the negative, and (ii) finding Appellant’s arguments regarding claim 1 unpersuasive (see App. Br. 11-13; Reply Br. 5- 7; Decision 6 and 9-10) because the Examiner properly found that at least Dodds’ NamePath values disclose the hash values recited in claim 1 (Ans. Appeal 2011-001796 Application 10/848,640 3 11; Decision 9). The Board adopted the findings and reasons of the Examiner set forth in the Answer regarding Dodds and claim 1 (Ans. 5-6), as well as the reasons set forth by the Examiner in response to Appellant’s Appeal Brief regarding Dodds and claim 1 (Ans. 11-12). Decision 6. In finding that “Dodds discloses using a character-based order when generating hash values reflecting an order of pathnames, as recited in representative claim 1” (Decision 6), the Board relied upon the NamePath values that are based on the XMLNames disclosed in Dodds (Decision 6 citing Dodds at ¶¶ [0029]-[0034] and [0054]), noting that Dodds’ eXtensible Markup Language (XML) Name values have alphanumeric properties (i.e., can contain numbers or letters) (Decision 6 and 10 citing Dodds at ¶ [0029]). Additionally, the Board found that Dodds’ path names composed of alphanumeric characters would inherently be ordered based on character (Decision 10). The Board’s finding that character-based ordering is inherent is primarily based on responding to Appellant’s argument that “Dodds fails to disclose ‘the order being character-based’” (Decision 9 citing App. Br. 11-14 and Reply Br. 5-7), and the finding that Dodds inherently orders path names based on characters because the path names in Dodds are composed of alphanumeric characters (and alphanumeric characters inherently have an order to them, e.g., 1-10 or A-Z). At pages 2-6 of the Request, Appellant presents arguments only with regard to the anticipation rejection of representative claim 1 based on the Dodds reference. Appellant contends that the Board misinterpreted or overlooked the following four principal points in the Decision: (A) Dodds’ XMLName values are hash values generated based on character values of pathnames as in claim 1 (Request, ¶¶ 4-6), and Appeal 2011-001796 Application 10/848,640 4 Dodds discloses XMLName values, NamePath values, or OrderPath values that meet the limitation highlighted in claim 1 reprinted supra (Request, ¶ 13); (B) Dodds inherently discloses path names being ordered based on character (Request, ¶¶ 7-9), and Dodds’ NamePath values correspond to the “pathnames” composed of alphanumeric characters, as recited in claim 1 (Request, ¶ 8); (C) Neither case precedent, evidence, nor any admission by Appellant makes it inherent to order using characters (Request, ¶¶ 10-12 and 15); and (D) Dodds’ OrderPath values are breadth-wise enumerated and, thus, not order based on character (Request, ¶¶ 13 and 14). Representative claim 1 is reprinted below with emphasis on the key limitation: 1. A method for providing access to data for nodes of an information hierarchy, wherein said data for said nodes are stored in a plurality of rows of a table, the method comprising the steps of: generating a plurality of hash values that reflects an order of a plurality of pathnames associated with said nodes, wherein each hash value in the plurality of hash values is generated based on character values of a particular pathname in the plurality of pathnames, the order being character-based; wherein each pathname of said plurality of pathnames corresponds to a row of said plurality of rows and identifies a location within the information hierarchy of a node whose data is stored in the row; and storing, in a database, said plurality of hash values in an index that associates said plurality of hash values with said plurality of rows; Appeal 2011-001796 Application 10/848,640 5 wherein said index is ordered by said plurality of hash values as key values; wherein the method is performed by one or more computing devices. We have reconsidered the Decision in light of Appellant’s comments in the Request, and we find no errors therein. We, therefore, decline to change the Decision for at least the following reasons. The Examiner correctly found that Dodds discloses generating “hash values” as recited in representative claim 1, at least because Dodds’ NamePath values, which are based in turn on XMLName values, are hash values, under the broadest reasonable interpretation of the term “hash values” in light of Appellant’s Specification, admissions, and relevant extrinsic evidence (see Ans. 6 and 11-12). Appellant’s contention (A) supra is unpersuasive because the Board adopted the Examiner’s findings that Dodd’s NamePath corresponds to the hash values recited in claim 1 (Decision 6 citing Ans. 11), and the Board did not rely on Dodd’s XMLName values as disclosing the recited hash values. “During examination, ‘claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)); see also In re Morris, 127 F.3d 1048, 1053-54 (Fed. Cir. 1997). The United States Patent and Trademark Office is permitted to use dictionary definitions in tandem with the specification and prosecution Appeal 2011-001796 Application 10/848,640 6 history to enlighten the broadest reasonable interpretation of a claim term, and our reviewing court, the Court of Appeals for the Federal Circuit, has held that “dictionary definitions are [] pertinent.” In re Trans Tex. Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc)). A hash value is a value generated by a hash algorithm or hash function in which a variable length data value is mapped to a fixed length data value. In other words, a variable length data value, e.g., a word or path name, is mapped to a hash value, e.g. fixed length data value or number, using the hashing algorithm/function. As defined by MICROSOFT COMPUTER DICTIONARY, 5th Ed., page 247 (2002), “hash” means “[t]o be mapped to a numerical value by a transformation function known as a hashing function.” This is congruent with the intrinsic evidence of record, namely Appellant’s own Specification, which describes hash path signatures as being hash values that represent a particular path or path name and “are much smaller (in terms of storage space needed to store them) than the pathnames they represent” (Spec. ¶ [0053]). In addition, Appellant discloses that the procedure used to generate hash path signatures or hash values shown in Figure 7 of the Drawings “is based on the standards and approaches for generating hash values prescribed in Digest Values for DOM (DOM[H]ASH), by H. Maruyama, K. Tamura, N. Uramoto, IBM (April 200, RFC 2803), the contents of which are incorporated by reference” (Spec. ¶ [0066]). Appellant also discloses that the procedure of Figure 7 used to generate hash values for nodes does so “by invoking the function DOMHASH, which returns a hash value” (Spec. Appeal 2011-001796 Application 10/848,640 7 ¶ [0067]). Appellant further admits that procedures such as DOMHASH for generating hash values “are well known methods” (Spec. ¶ [0068]). In view of the foregoing, we find that the broadest reasonable interpretation of the term “hash values,” in light of Appellant’s Specification and admissions, is: values representing a path or path name that are smaller in length and/or size than the pathnames they represent, and that have been mapped or generated by a transformation function known as a hashing function. In this light, Dodds’ NamePath values in the NamePath Table (¶¶ [0031] and [0032]) are hash values because they are shorter, numerical values generated based on character values (e.g., alphanumerical values such as the numbers used for XMLName and/or NamePath, and/or such as the letters used for the Attribute Name values shown in the XMLName Table of ¶ [0029]) of a particular path name (e.g., Document Type Definition (DTD) Node value shown in the NamePath Table of ¶ [0031] that describes the path for the node and is based on the Attribute Name value describing the final destination, or the XMLName value in the XMLName Table, shown in Table 1 and described in ¶ [0029]). And the order of the path names is character-based because the DTD Node values (i.e., path names) and the NamePath values (i.e., hash values), which are based on the XMLName values, each contain letters and numbers (i.e., are alphanumeric), where the order of path names is based on the letters and numbers used and letters (e.g., A-Z) and numbers (e.g., 1-10) have an order. In other words, the order of the DTD Node values in the NamePath Table shown in Dodds’ paragraph [0031] is based on characters (e.g., letters); and, the order of the NamePath values (which are based on the Appeal 2011-001796 Application 10/848,640 8 XMLName values of Table 1) is based on characters (e.g., numbers as shown in the tables of ¶¶ [0029] and [0031]). The fact that non-character elements (e.g., “/”) are also used in the path names is irrelevant because claim 1 does not contain a negative limitation that excludes the use of path names containing both character and non-character elements (e.g., “library/periodical”). Applying the broadest reasonable interpretation of the term in light of the Specification, we find the ordinary meaning for “hash values” to include Dodds’ NamePath values, which are in turn based on the XMLName values (see Dodds, Table 1 and NamePath Table; ¶¶ [0029]-[0032]). Furthermore, our agreement with the Examiner’s determination that Dodds’ NamePath is a hash value (see Ans. 11) is supported by intrinsic and extrinsic evidence, such as (i) MICROSOFT COMPUTER DICTIONARY, 5th Ed., page 247 (2002) providing the definition of “hash;” (ii) Appellant’s own definition of “hash value” (Spec. ¶ [0053]); and (iii) Appellant’s admissions concerning the prior art and what is well-known as to the procedure or hash algorithm (e.g., DOMHASH) to generate hash values (Spec. ¶¶ [0066]- [0068]). In view of the foregoing extrinsic evidence demonstrating the knowledge available to the ordinarily skilled artisan in the field of data processing, storage, indexing, and retrieval using XML to access data in a hierarchical database, we cannot agree with Appellant (Request 2-6) that our determination that Dodds discloses, inherently or expressly, the salient feature of representative claim 1 of “generating a plurality of hash values that reflects an order of a plurality of pathnames associated with said nods, wherein each hash value in the plurality of hash values is generated based on Appeal 2011-001796 Application 10/848,640 9 character values of a particular pathname in the plurality of pathnames, the order being character-based,” in the Decision (Decision 2, 6, and 9-10) is in error. Appellant’s contentions (B) and (C) supra are unpersuasive (i) in light of the evidence and reasoning discussed above; (ii) because Dodds’ NamePath value (i.e., hash value) generating procedure is based on numerical NamePath values which are in turn based on alphanumeric XMLName values; (iii) Dodds’ alphabetic DTD Node values in the NamePath Table (see Dodds, ¶¶ [0031] and [0032]), and/or Dodds’ XMLName values (see Dodds ¶ [0029]) correspond to the “pathnames” recited in claim 1; (iv) the Board did not rely on Dodds’ NamePath values as corresponding to the “pathnames” recited in claim 1; and (v) values comprised of alphanumeric characters inherently have an order (e.g., 1-10 and/or A-Z), so any path name, whether it be comprised of letters and/or numbers, is inherently has an order that is character-based. Furthermore, Appellant’s contention (C) concerning the inherency of character-based ordering of pathnames is not well-taken in light of the determination of the Board that (i) one of ordinary skill in the art would understand that paragraphs [0054] and [0066] of Appellant’s Specification disclose ordering pathnames composed of numbers and letters that are capable of having an alphanumeric order (Decision 8); and (ii) therefore, that claims 1, 3-9, and 11-16 are enabled and have written description support in the Specification (Decision 8-9). Appellant cannot have it both ways (lack of inherency of character-based order, and at the same time ease of the ordinarily skilled artisan in understanding that character-based ordering of pathnames and nodes is enabled and supported with written Appeal 2011-001796 Application 10/848,640 10 description in paragraphs [0054] and [0066] of the Specification that nowhere mention the term “character”). Appellant’s contention (D) supra is unpersuasive because the Board and the Examiner rely upon Dodds’ NamePath values as corresponding to the hash values recited in claim 1 (Decision 6 citing Ans. 11) and, therefore, it is irrelevant whether or not Dodds’ OrderPath values are breadth-wise enumerated and not ordered based on character. In summary, we have carefully considered the arguments raised by Appellant in the Request, but none of these arguments is persuasive that the Decision is in error. We find that Appellant has not shown the Board misapprehended the disclosure of Dodds or overlooked any arguments made in the Appeal Brief or Reply Brief in sustaining the rejection of claim 1 as being anticipated by Dodds under 35 U.S.C. § 102(e). DECISION In view of the foregoing discussion, we grant Appellant’s Request for Rehearing to the extent of reconsidering our Decision with respect to claims 1, 3-9, and 11-19, but we deny Appellant’s request with respect to making any change thereto. 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). REQUEST FOR REHEARING DENIED llw Copy with citationCopy as parenthetical citation