Ex Parte Krishnamurthy

Patent Trial and Appeal Board

Jun 25, 2013

10848640 (P.T.A.B. Jun. 25, 2013)

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 06/25/2013
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
06/25/2013 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 2011-0017961
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 APPEAL

1 A related appeal, Appeal No. 2009-012202, was decided by the Board in
Application 10/848,653.
Appeal 2011-001796
Application 10/848,640

2
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-9, and 11-19. Claims 2 and 10 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse the Examiner’s written
description and enablement rejections of claims 1, 3-9, and 11-16, affirm the
Examiner’s anticipation rejection of claims 1, 3-9, and 11-19, and enter a
new ground of rejection for claims 9 and 11-19.
Exemplary Claims
Exemplary independent claims 1 and 17 under appeal, with emphasis
added, reads as follows:

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

3
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.

17. A computer-readable storage medium, comprising:

a table with a plurality of rows, each row of said plurality of
rows storing data for a node of a plurality of nodes in an
information hierarchy;

an index of said table being ordered by a plurality of hash
values as key values within said index, wherein each hash value
in the plurality of hash values is generated based on a particular
pathname in the plurality of pathnames wherein the pathnames
associated with the plurality of the nodes have an order; and

wherein said plurality of hash values reflects said order.
Examiner’s Rejections
(1) The Examiner rejected claims 1, 3-9, and 11-16 under 35 U.S.C.
§ 112, first paragraph, as failing to provide adequate written description of
the claimed invention so as to reasonably convey to one skilled in the
relevant art that the inventors had possession of the claimed invention at the
time the application was filed (Ans. 4). Specifically, the Examiner
determined that the Specification lacks support for the recitation of “the
order being character-based” recited in claim 1 (Ans. 4 and 9-10). The
Examiner determined that: (i) paragraphs [0054] and [0066] of Appellant’s
Specification support hash values being pathnames but not that the order be
character based, and (ii) pages 17-18 of the provisional application of the
instant application on appeal fails to support the presence of “character
values” or that the order be “character-based” (Ans. 10-11).
Appeal 2011-001796
Application 10/848,640

4
(2) The Examiner rejected claims 1, 3-9, and 11-16 under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the enablement requirement
based on the Examiner’s determination that paragraph [0066] of Appellant’s
Specification supports pathnames being in order, and not being character-
based as recited in claim 1 (Ans. 4-5). Specifically, the Examiner
determined that the Specification fails to enable one of ordinary skill in the
art to make and/or use the method of providing access to data recited in
claim 1, including generating a plurality of hash values reflecting a
character-based order of a plurality of pathnames (Ans. 4-5 and 10-11).
(3) The Examiner rejected claims 1, 3-9, and 11-19 under
35 U.S.C. § 102(e) as being anticipated by Dodds (US 2006/0101320 A1).
Ans. 5-9.2

Issues on Appeal
Written Description Issue
Based on Appellant’s arguments, the following written description
issue is presented:

2 Appellant has not presented any separate arguments in the Briefs with
regard to the merits of the written description and enablement rejections of
(i) claims 3-9 and 11-16, or (ii) the anticipation rejection of claims 3-9 and
11-19 over Dodds (see App. Br. 11-15). Because (i) independent claims 1
and 17 concern similar subject matter related to hash values being generated
based on pathnames having a particular order, and (ii) Appellant relies on
the arguments presented for the rejections of claim 1 to rebut the rejections
of claims 3-9 and 11-19 (App. Br. 13-14), we select claim 1 as
representative of the group of claims 1, 3-9, and 11-19 rejected for
anticipation. See 37 C.F.R. § 41.37 (c)(1)(iv).

Appeal 2011-001796
Application 10/848,640

5
Did the Examiner err in rejecting claims 1, 3-9, and 11-6 as lacking
written description support for generating a plurality of hash values
reflecting a character-based order of a plurality of pathnames, “as recited in
claims 1, 3-9, and 11-16 on the basis that the Specification as originally filed
and supported by the provisional application did not reasonably convey to
one skilled in the relevant art that the inventor had possession of the claimed
invention at the time the application was filed?
Enablement Issue
Based on Appellant’s arguments, the following enablement issue is
presented:
(2) Did the Examiner err in rejecting claims 1, 3-9, and 11-16 because
the Specification fails to enable one of ordinary skill in the art at the time of
Appellant’s invention to make and/or use the method of providing access to
data recited in claims 1, 3-9, and 11-16, including generating a plurality of
hash values reflecting a character-based order of a plurality of pathnames, as
recited in representative claim 1?
Anticipation Issue as to Dodds
Based on Appellant’s arguments, the following anticipation issue is
presented:
(3) Did the Examiner err in rejecting claims 1, 3-9, and 11-19 under
35 U.S.C. § 102(e) because Dodds fails to disclose the method of providing
access to data recited in claim 1, including generating a plurality of hash
values reflecting a character-based order of a plurality of pathnames, as
recited in representative claim 1?

Appeal 2011-001796
Application 10/848,640

6
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief and the Reply Brief that the Examiner has
erred. We agree with Appellant’s conclusions that the Examiner erred in
rejecting claims 1, 3-9, and 11-6 under 35 U.S.C. §112, first paragraph, as
failing to provide either: (i) an adequate written description of, and/or (ii)
enablement to make and/or use, the invention recited in claims 1, 3-9, and
11-16.
However, we disagree with Appellant’s conclusions with regard to the
anticipation rejection of claims 1, 3-9, and 11-19 over Dodds. As to the
anticipation rejection, we adopt as our own: (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken (Ans. 5-
9), and (2) the reasons set forth by the Examiner in the Examiner’s Answer
in response to Appellant’s Appeal Brief (Ans. 11-12).
We concur with the conclusions reached by the Examiner with regard
to Dodds. We find that Dodds teaches ordering pathnames based on
characters in paragraphs [0029] to [0034] and [0054] (and, characters
encompasses both numbers and letters), because pathnames in alphabetic
order are therefore ordered based on characters. Dodds generates an
extensible Markup Language (XML) Name property that can be
“alphanumeric” (¶[0029]), as well as an OrderPath value for each node
(¶¶ [0033] and [0034]), and automatically determines a NamePath value for
each node that is composed of the XML names (¶¶ [0031] and [0032]).
Therefore, Dodds discloses using a character-based order when generating
hash values reflecting an order of pathnames, as recited in representative
claim 1.
Appeal 2011-001796
Application 10/848,640

7
§ 112, First Paragraph, Rejections
The examiner . . . “bears the initial burden . . . of
presenting a prima facie case of unpatentability.” In re Oetiker,
977, F.2d 1443, 1445 . . . (Fed. Cir. 1992). Insofar as the
written description requirement is concerned, that burden is
discharged by “presenting evidence or reasons why persons
skilled in the art would not recognize in the disclosure a
description of the invention defined by the claims.” [In re]
Wertheim, 541 F.2d [257, 263 (CCPA 1976)]. Thus, the burden
placed on the examiner varies, depending upon what the
applicant claims. If the applicant claims embodiments of the
invention that are completely outside the scope of the
specification, then the examiner or Board need only establish
this fact to make out a prima facie case. Id. at 263-264. . . .
In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996) (parallel citations omitted).
In the instant case, the Examiner has not met this burden by merely
concluding that the Specification does not provide a support for the
recitation of independent claim 1 of “the order being character-based.”
Under 35 U.S.C. § 112, first paragraph, to satisfy the written
description requirement, “the disclosure of the application relied upon
[must] reasonably convey[] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc) (citations omitted).. See also Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563-64 (Fed. Cir. 1991) (“ [T]he applicant must . . . convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention.” Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991). In other words, the Examiner has
the initial burden of presenting evidence or reasons why persons skilled in
the art would not recognize in an applicant’s disclosure a description of the
Appeal 2011-001796
Application 10/848,640

8
invention defined by the claims. In re Wertheim, 541 F.2d at 265 (CCPA
1976).
Thus, the written description requirement requires us to determine
“whether the disclosure of the application as originally filed reasonably
conveys to the artisan that the inventor had possession at that time of the
later claimed subject matter, rather than the presence or absence of literal
support in the specification for the claim language.” In re Kaslow, 707 F.2d
1366, 1375 (Fed. Cir. 1983) (citations omitted) (emphasis added).
Because paragraphs [0054] and [0066]of the Specification describe
generating hash values in an order corresponding to the pathnames, and one
of ordinary skill in the art would have understoodd that pathnames are
composed of numbers and letters that are capable of having an alphanumeric
order, the originally filed Specification did reasonably convey to one of
ordinary skill in the art that Appellant had possession of the claim limitation
recited in independent claim 1 that the order of the pathnames be character-
based.
Accordingly, we do not sustain the Examiner’s written description
rejection of claims 1, 3-9, and 11-16. And, for similar reasons, in addition to
reasons that follow, we also do not sustain the Examiner’s enablement
rejection of claims 1, 3-9, and 11-16.
“[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993) (citations omitted). See also In re Vaeck, 947 F.2d 488, 496 (Fed.
Cir. 1991) (the specification must teach those of ordinary skill “how to make
and how to use the invention as broadly as it is claimed”). Based on the
Appeal 2011-001796
Application 10/848,640

9
record before us, Appellant’s Specification would reasonably convey to one
of ordinary skill in the art at the time of Appellant’s invention the ability to
understand, make, and/or use the method of providing access to data recited
in independent claim 1, including generating a plurality of hash values
reflecting a character-based order of a plurality of pathnames.
§ 102 Anticipation Rejection
Anticipation is established when a single prior art reference discloses,
expressly or under the principles of inherency, each and every limitation of
the claimed invention. Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1347
(Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994). To
establish inherency, the evidence must make clear that the missing
descriptive matter is “necessarily present” in the thing described in the
reference. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). “‘Under the
principles of inherency, if the prior art necessarily functions in accordance
with, or includes, the claimed limitations, it anticipates.’” In re Cruciferous
Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (quoting MEHL/Biophile
Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365).
The rule that anticipation requires that every element of a claim
appear in a single reference accommodates situations where the common
knowledge of “technologists” is not recorded in a reference, i.e., where
technical facts are known to those in the field of invention. Continental Can
Co., USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991).
Appellant argues that Dodds fails to disclose the “generating step” of
representative claim 1, and asserts that Dodds fails to disclose “the order
being character-based.” App. Br. 11-14; Reply Br. 5-7. However, we agree
with the Examiner (Ans. 5-9 and 11) that Dodds meets claims 1 and 17.
Appeal 2011-001796
Application 10/848,640

10
Dodds’ paragraphs [0029]-[0034] and [0054] disclose XMLName Table
with XMLName values (hash values) where each value has “a unique
XMLName property (in this example, the property is alphanumeric).”
(¶ [0029], lines 9-10.) This constitutes a character-based order as recited in
claim 1, and the simple “order” as recited in independent claim 17.
We also find that when ordering a set of pathnames composed of
alphanumeric characters as is disclosed by Dodds, it would be inherent that
the order of the pathnames would be character-based. Similarly, In re
Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (citing In re LeGrice, 301 F.2d
929, 936 (CCPA 1962)) confirms the longstanding practice that the
teachings of a reference patent may be taken in combination with knowledge
of the skilled artisan to put the artisan in possession of the claimed invention
within 35 U.S.C. § 102 even though the patent does not specifically disclose
certain features.
We sustain the Examiner’s anticipation rejection of independent and
representative claim 1, as well as claims 3-9 and 11-19 grouped therewith.

NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under
35 U.S.C. § 101 for claims 9 and 11-19.
Claims 9 and 11-19 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter (e.g., an intangible and/or transitory
computer-readable medium).
Claims 9 and 11-16 each recite “[a] computer-readable storage
medium carrying one or more sequences of instructions” (see claims 9 and
11-16). Claims 17-19 each recite “[a] computer-readable storage medium
Appeal 2011-001796
Application 10/848,640

11
(see independent claim 17) . Appellant explicitly defines the term
“computer-readable medium” and provides examples of computer-readable
media in the Specification at paragraphs [0074] and [0075], reprinted below:
[0074] The term “computer-readable medium” as used
herein refers to any medium that participates in providing
instructions to processor 804 for execution. Such a medium
may take many forms, including but not limited to, non-volatile
media, volatile media, and transmission media. Non-volatile
media includes, for example, optical or magnetic disks, such as
storage device 810. Volatile media includes dynamic memory,
such as main memory 806. Transmission media includes
coaxial cables, copper wire and fiber optics, including the wires
that comprise bus 802. Transmission media can also take the
form of acoustic or light waves, such as those generated during
radio-wave and infra-red data communications.
[0075] Common forms of computer-readable media
include, for example, a floppy disk, a flexible disk, hard disk,
magnetic tape, or any other magnetic medium, a CD-ROM
[(Compact Disc Read Only Memory)], any other optical
medium, punchcards, papertape, any other physical medium
with patterns of holes, a RAM [(Random Access Memory)], a
PROM [(Programmable Read Only Memory)], and EPROM
[Erasable Programmable Read Only Memory)], a FLASH-
EPROM, any other memory chip or cartridge, a carrier wave as
described hereinafter, or any other medium from which a
computer can read.
(Spec. ¶¶ [0074] and [0075] (emphases added)).
The Specification describes the term “computer-readable medium” as
being a carrier wave, transmission media, and/or signal (Spec. ¶¶ [0074],
[0075], and [0078]). Paragraph [0078] provides the following description
concerning the signals and carrier waves:
[0078] Network link 820 typically provides data
communication through one or more networks to other data
Appeal 2011-001796
Application 10/848,640

12
devices. For example, network link 820 may provide a
connection through local network 822 to a host computer 824
or to data equipment operated by an Internet Service Provider
(ISP) 826. ISP 826 in turn provides data communication
services through the world wide packet data communication
network now commonly referred to as the “Internet” 82. Local
network 822 and Internet 82 both use electrical,
electromagnetic or optical signals that carry digital data
streams. The signals through the various networks and the
signals on network link 820 and through communication
interface 81, which carry the digital data to and from computer
system 800, are exemplary forms of carrier waves transporting
the information.
(Spec. ¶ [0078]) (emphasis added).
Claims 9 and 11-19 are drawn to non-statutory subject matter because
the broadest reasonable interpretation, in light of the Specification (Spec. ¶¶
[0074],[0075], and [0078]), is that the computer-readable storage medium
carrying the one or more sequences of instructions could be embodied as
transmission media that are transitory and/or intangible (e.g., the
transmission media can be signals, acoustic waves, light waves, or a carrier
wave as described at Specification, paragraphs [0074], [0075], and [0078]).
See United States Patent and Trademark Office (USPTO), Subject Matter
Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010).
Under the Patent Act of 1952, subject matter patentability is a
threshold requirement. “Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.” 35 U.S.C § 101.
Our reviewing court emphasized that:
Appeal 2011-001796
Application 10/848,640

13
A transitory, propagating signal like Nuijten’s is not a
“process, machine, manufacture, or composition of matter.”
Those four categories define the explicit scope and reach of
subject matter patentable under 35 U.S.C. § 101; thus, such a
signal cannot be patentable subject matter.
In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Subsequent to the
court’s decision in Nuijten, the USPTO has issued additional guidance,
which states:
The [USPTO] is obliged to give claims their broadest
reasonable interpretation consistent with the specification
during proceedings before the USPTO. See In re Zletz, 893
F.2d 319 (Fed. Cir. 1989) (during patent examination the
pending claims must be interpreted as broadly as their terms
reasonably allow). The broadest reasonable interpretation of a
claim drawn to a computer readable medium (also called
machine readable medium and other such variations) typically
covers forms of non-transitory tangible media and transitory
propagating signals per se in view of the ordinary and
customary meaning of computer readable media, particularly
when the specification is silent. See MPEP 2111.01. When the
broadest reasonable interpretation of a claim covers a signal per
se, the claim must be rejected under 35 U.S.C. § 101 as
covering non-statutory subject matter. See In re Nuijten, 500
F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments
are not directed to statutory subject matter) and Interim
Examination Instructions for Evaluating Subject Matter
Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2.
The USPTO recognizes that applicants may have claims
directed to computer readable media that cover signals per se,
which the USPTO must reject under 35 U.S.C. § 101 as
covering both non-statutory subject matter and statutory subject
matter. In an effort to assist the patent community in
overcoming a rejection or potential rejection under 35 U.S.C.
§ 101 in this situation, the USPTO suggests the following
approach. A claim drawn to such a computer readable medium
that covers both transitory and non-transitory embodiments may
Appeal 2011-001796
Application 10/848,640

14
be amended to narrow the claim to cover only statutory
embodiments to avoid a rejection under 35 U.S.C. § 101 by
adding the limitation “non-transitory” to the claim. Cf.
Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April
21, 1987) (suggesting that applicants add the limitation “non-
human” to a claim covering a multi-cellular organism to avoid a
rejection under 35 U.S.C. § 101).
USPTO, Subject Matter Eligibility of Computer Readable Media, 1351 Off.
Gaz. Pat. Office 212 (Feb. 23, 2010).
Appellant’s Specification leaves open the possibility that the
computer-readable storage mediums recited in claims 9 and 11-19 cover
computer program products consisting of forms of transitory propagating
signals, not just storage devices like a RAM, ROM, or HDD (Hard Disk
Drive). Transitory signals or carrier waves are unpatentable under § 101.
Nuijten, 500 F.3d at 1357.
In view of the foregoing, claims 9 and 11-19 encompass non-statutory
subject matter and, therefore, are ineligible under § 101.

CONCLUSIONS
(1) The Examiner erred in rejecting claims 1, 3-9, and 11-16 as being
unpatentable under 35 U.S.C. § 112 for lack of written description support in
the Specification and for enablement to make and/or use the invention.
(2) The Examiner did not err in rejecting claims 1, 3-9, and 11-19 as
being anticipated by Dodds because Dodds discloses, inherently or
expressly, all of the limitations set forth in representative claim 1.
(3) We have entered a new ground of rejection against claims 9 and
11-19 as being directed to non-statutory subject matter under 35 U.S.C.
§ 101.
Appeal 2011-001796
Application 10/848,640

15

DECISION
(1) The Examiner’s rejections of claims 1, 3-9, and 11-16 under
35 U.S.C. § 112, first paragraph, as failing to (a) provide adequate written
description of the claimed invention, and (b) enable one of ordinary skill in
the art at the time of Appellant’s invention to make and/or use the inventions
recited in independent claim 1, are reversed.
(2) The Examiner’s rejection of claims 1, 3-9, and 11-19 under
35 U.S.C. § 102(e) as being anticipated by Dodds is affirmed.
(3) We enter a new ground of rejection for claims 9 and 11-19 as
being directed to non-statutory subject matter under 35 U.S.C. § 101.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
. . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION:
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Appeal 2011-001796
Application 10/848,640

16

AFFIRMED;
37 C.F.R. § 41.50(b)

llw