Ex Parte Laux et al

Board of Patent Appeals and Interferences

Sep 26, 2008

10025497 (B.P.A.I. Sep. 26, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THORSTEN O. LAUX and BERND EILERS
____________

Appeal 2008-0576
Application 10/025,497
Technology Center 2100
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Decided: September 26, 2008
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Before HOWARD B. BLANKENSHIP, JAY P. LUCAS, and
CAROLYN D. THOMAS, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-45, which are all the claims in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part, but designate the affirmed rejection as a new
ground of rejection as permitted by 37 C.F.R. § 41.50(b).
Appeal 2008-0576
Application 10/025,497

Appellants’ invention relates to a tree data structure. Claims 1 and 38
are illustrative.
1. A data processing system in a client and server system, the server
providing the client with an instruction data set in a specified instruction
format in response to a content data request from the client, the system
comprising:

a server computer comprising:

a memory including a server program that provides one or more
content data request properties of the content data request made by the
client, that prepares the instruction data set having the specified instruction
format and including a plurality of instruction element data sets each
representing a specified instruction element of the instruction format and
generated by at least one instruction element generating application in an
instruction format set up sequence, that includes an instruction format
configuration file containing a tree data structure including a plurality of
instruction format nodes, each of the instruction format nodes indicating a
particular combination of instruction elements having the specified
instruction format and having associated with it a node selection criterion,
that searches said tree data structure with said determined content data
request properties and selects an instruction format node whose associated
node selection condition matches said determined content data request
properties, and that prepares the instruction data set to be sent to the client
by executing the instruction element generating application of the selected
instruction format node; and

a processor that runs said server program.

38. A computer-readable memory device encoded with a tree data
structure having entries which are accessed by a program that provides at
least one client by a serve in a client and server system, with an instruction
data set in a specified instruction format in response to a content data
request, wherein the program in encoded in the memory device and is run by
a processor, the entries comprising:
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Appeal 2008-0576
Application 10/025,497

a plurality of instruction format nodes, each instruction format node
indicating a specified combination of instruction elements including a
particular instruction format and having associated with it a node selection
criterion.

The Examiner relies on the following references as evidence of
unpatentability.
Gu US 6,892,230 B1 May 10, 2005
Brandow US 6,938,041 B1 Aug. 30, 2005
Claims 1-45 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brandow and Gu.

The Rejection
Because Appellants’ arguments rely on the information content of the
claimed “data structure,” we sustain the rejection of claims 1-42, 44, and 45.
Instant claim 1, for example, recites a server computer memory that
includes a tree data structure. Instant claim 18, as another example, recites a
method that includes searching a tree data structure. Instant claim 38, as a
further example, recites a computer-readable memory device encoded with a
tree data structure.
However, the particular information content that the tree nodes are
deemed to represent does not necessarily change the underlying machine,
process, or product set forth in the respective claim. Data that does not
modify the underlying substrate or process is known as nonfunctional
descriptive material. The content of nonfunctional descriptive material
carries no weight in the analysis of patentability over the prior art. Cf. In re
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Application 10/025,497

Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely
the information content of a memory. . . . [N]or does he seek to patent the
content of information resident in a database.”). See also Ex parte Nehls,
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf; Ex parte
Curry, 84 USPQ2d 1272 (BPAI 2005) (nonprecedential) (Fed. Cir. Appeal
No. 2006-1003, aff’d Rule 36 Jun. 12, 2006); Manual of Patent Examining
Procedure § 2106.01 (8th ed., Rev. 7, Jul. 2008).
What the tree nodes might be deemed to represent in memory or when
manipulated in process steps does not change the essential characteristics of
the memory or the steps.
Instant claim 1, for example, recites a “tree data structure including a
plurality of instruction format nodes.” The recitation, thus far, requires at
most a tree data structure having a plurality of nodes. Claim 1 goes on to
recite “each of the instruction format nodes indicating a particular
combination of instruction elements having the specified instruction format.”
What the nodes might “indicate,” thus far, carries no weight in the
patentability analysis. Claim 1 further recites each of the nodes “having
associated with it a node selection criterion.” A “selection criterion”
suggests some kind of function, but we need not determine whether it would
represent functional descriptive material if it were to form part of the node.
The criterion is no more than “associated” with the node. Each node in any
tree data search has selection criteria associated with that node; those criteria
determine whether the node is selected or not selected in a search.

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Appeal 2008-0576
Application 10/025,497

Appellants acknowledge that Brandow teaches at least two tree data
structures, including one that is searched to find data (see, e.g., Reply Br. 7.)
Gu also indicates that tree data searches were well known in the art (e.g.,
col. 16, ll. 60-67).
Appellants’ arguments based on differences between the content of
the instant tree data structure vis-à-vis the prior art data structures do not
persuade us that the claims are rejected in error.
We sustain the § 103(a) rejection of claims 1-42, 44, and 45. We
designate the affirmance a new ground of rejection (37 C.F.R. § 41.50(b)).
We agree with Appellants, however, that the applied references do not
demonstrate the obviousness of the subject matter of claim 43. Contrary to
the rejection, we do not find that Brandow teaches, at least, inserting content
data in the places indicated in an instruction format template by at least one
instruction element generating application. Such a step is not taught by the
“Normalizer” 263 described at column 7, lines 42 through 49 of the
reference. Accordingly, we do not sustain the rejection of claim 43.

CONCLUSION
We affirm the rejection of claims 1-42, 44, and 45 under 35 U.S.C.
§ 103(a) as being unpatentable over Brandow and Gu, in what we designate
a new ground of rejection. We reverse the § 103(a) rejection of claim 43.
With respect to the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1)
provides that “Appellant may file a single request for rehearing within two
months from the date of the original decision of the Board.”
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Application 10/025,497

In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground 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 pursuant to this paragraph 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. . . .

Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
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Application 10/025,497

case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART -- 37 C.F.R. § 41.50(b)

pgc

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