Ex Parte LeTourneau

Patent Trial and Appeal Board

Mar 9, 2016

12830236 (P.T.A.B. Mar. 9, 2016)

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.
12/830,236 07/02/2010 Jack J. LeTourneau 151.P007D 1107
43831 7590 03/09/2016
BERKELEY LAW & TECHNOLOGY GROUP, LLP
17933 NW Evergreen Parkway, Suite 250
BEAVERTON, OR 97006
EXAMINER
PHAM, MICHAEL
ART UNIT PAPER NUMBER
2167
MAIL DATE DELIVERY MODE
03/09/2016 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 JACK J. LeTOURNEAU
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Appeal 2014-004199
Application 12/830,236
Technology Center 2100
______________

Before JOHNNY A. KUMAR, CATHERINE SHIANG, and
MELISSA A. HAAPALA, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1–7, 171, and 182–203. Claims 8–170 and 172–181 are canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Application 12/830,236

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Exemplary Claim
Claim 190 is illustrative:
190. A method comprising: tagging selected nodes of a tree
via a computing device, wherein the tags comprise a labeled
node or a labeled edge.
The Examiner’s Rejections
Claims 1–4, 6, 182–185, 187, and 190–193 are rejected under
35 U.S.C. § 102(e) as being anticipated by Stanoi (US 2005/0050016 A1,
Mar. 3, 2005). Final Act. 3–7.
Claims 5, 7, 171, 186, 188, 189, and 194–203 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Stanoi in view of LeTourneau
(US 6,055,537, Apr. 25, 2000) (hereinafter, “the ’537 patent”). Final Act.
7–17.
Appellant’s Contentions and Issues on Appeal
Arguments with respect to § 102 rejection of claims 1-4, 182-185, and
188-203
1) Did the Examiner err because Stanoi does not disclose a labeled
node or labeled edge being tagged when read in light of the specification,
and Stanoi’s tag is merely an alphanumerical label rather than a tag? App.
Br. 7–15; Reply Br. 5–8, 13–15.
Arguments with respect to claims 6, 7, 187, and 188
2) Did the Examiner err because the Examiner has interpreted
“traversing the selected nodes in an order specified by the values of said
subtrees” in an unreasonably broad manner by suggesting that generic top-
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down traversal meets the claim language in question? App. Br. 15–19;
Reply Br. 9–12.
Arguments with respect to the § 103 rejection of claims 5, 7, 171, 186,
188-189, and 194-203
3) Did the Examiner err because the applied documents do not meet
the “ordered” limitations in claims 194, 196, 198, 199, 201, and 203? App.
Br. 21–22.
4) Did the Examiner err because the applied documents do not meet
the “binary” limitations? App. Br. 22.
5) Did the Examiner err because the proposed combination is not a
proper combination as both Stanoi and the ’537 patent teach away from one
another? App. Br. 23–25.
6) Did the Examiner err because one of ordinary skill in the art would
have no motivation to combine since the problem is unrecognized? App. Br.
25–27.
7) Did the Examiner err because the Examiner appears to have used
assignee’s specification for a motivation to combine? App. Br. 27–30, 34–
35.
8) Did the Examiner err because the Examiner is using features of
Stanoi and the ’537 patent differently in combination than how those
features function separately? App. Br. 30–32.
9) Did the Examiner err because the Examiner’s combination of
documents relies on conclusory statements without support? App. Br. 32–
34.
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10) Did the Examiner err because one of ordinary skill in the art
would be unable to produce the claimed subject matter from the
combination? App. Br. 35–37.
ANALYSIS
We disagree with Appellant’s conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellant’s Appeal Brief. We concur
with the conclusion reached by the Examiner. We highlight the following
arguments for emphasis.

§ 102 rejection of claims 1-4, 182-185, and 188-203
With respect to Appellant’s 1st contention above (App Br. 7–15;
Reply Br. 5–8, 13–15), we disagree because Appellant has not provided any
specific definition within their specification that would preclude the
Examiner’s interpretation (Ans. 2–3; Stanoi Figure 1, ¶¶ 32, 35), namely, the
labels utilized in Stanoi correspond to Appellant’s claimed “tags.”
With respect to Appellant’s 2nd contention (App Br. 15–19; Reply Br.
9–12), Appellant has not provided a definition that would preclude the
Examiner’s interpretation (Ans. 14–19, 21). We also agree with the
Examiner’s findings that Stanoi traverses a branch of a1-a3-a8 and a11,
these nodes are visited via a top-down traversal, and hints are utilized that
inform which nodes are to be traversed (Ans. 13; Stanoi ¶ 35). Furthermore,
the Examiner’s recitation of Stanoi’s “hints” feature points out how the
nodes are navigated.

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§ 103 rejection of claims 5, 7, 171, 186, 188-189, and 194-203
With respect to Appellant’s 3rd contention (App. Br. 21–22), we
agree with the Examiner (Ans. 20) that the ’537 patent’s “commutative
rearrangement” (’537 patent, col. 7, lines 42–46) corresponds to “ordering”
in the context of the claims.
With respect to Appellant’s 4th contention (App. Br. 22), we agree
with Examiner’ finding (Ans. 20–21) that the ’537 patent teaches “to convert
any labeled finite tree, LT, into a binary string” which converts an edge
labeled tree into a binary edge labeled tree and thus satisfies the disputed
language.
With respect to Appellant’s 5th–10th contentions, the Examiner rebuts
each of those arguments in the Answer by a preponderance of the evidence
(Ans. 21–33). We agree with the Examiner’s findings and underlying
reasoning and adopt them as our own. (Final Act. 8–17).
Consequently, we conclude there is no reversible error in the
Examiner’s rejections of claims 1–7, 171, and 182–203.

DECISION
We AFFIRM the rejections of claims 1–7, 171, and 182–203.
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