Ex Parte Liu

Board of Patent Appeals and Interferences

Nov 23, 2009

10118662 (B.P.A.I. Nov. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER CHI-HSIUNG LIU
____________

Appeal 2009-004690
Application 10/118,662
Technology Center 2100
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Decided: November 23, 2009
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Before JOHN A. JEFFERY, STEPHEN C. SIU, and
DEBRA K. STEPHENS, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-4. We have jurisdiction under 35 U.S.C. § 6(b), and we
heard the appeal on November 18, 2009. We reverse.

STATEMENT OF THE CASE
Appellant invented a method for sorting data in a computer system
that takes advantage of any presort condition already existing in an input
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file. Specifically, the contents of an input file are investigated to identify
any presorted portions. The presorted portions are incorporated into a
second file by rearranging directory information such that the incorporation
does not physically transfer the presorted portions from the input file. This
technique minimizes reprocessing, re-reading, or re-writing presorted data.1
Claim 1 is illustrative with a key disputed limitation emphasized:
1. A method of processing for sorting data in a computer system, said
data being provided in an input file external to the central processing unit of
said computer system, comprising

investigating the contents of said input file in order to identify
presorted portions thereof; and

incorporating presorted portions of said input file as thus identified
into a second file external to said central processing unit, by rearranging
directory information so as to incorporate in said second file said presorted
portions of said input file without physically transferring said presorted
portions from said input file.

The Examiner relies on the following as evidence of unpatentability:
Lee US 5,613,085 Mar. 18, 1997

1. The Examiner rejected claim 3 under 35 U.S.C. § 112, ¶ 2 as being
indefinite.2 Non-Fin. Rej. 3.

1 See generally Abstract; Spec. 4.
2 Although the Examiner did not reproduce this rejection in the Grounds of
Rejection section of the Answer (see Ans. 3-4), the Examiner nonetheless
indicates in the Response to Arguments section how claim 3 could be
amended to “overcome [the rejection under] 35 U.S.C. 112, second
paragraph.” See Ans. 5; emphasis added. Moreover, Appellant indicates in
the “Grounds of Rejection to be Reviewed on Appeal” section of the Appeal
Brief that claim 3 was rejected under § 112, second paragraph (App. Br. 9-
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2. The Examiner rejected claims 1-4 under 35 U.S.C. § 102(b) as
anticipated by Lee.3 Ans. 3-4.4

THE § 112 REJECTION
Regarding claim 3, the Examiner finds that the term “the sortout file”
in claim 3 lacks antecedent basis and therefore renders the claim indefinite.
Fin. Rej. 3; emphasis added. Accord Ans. 5.
Appellant argues that the term “the sortout file” requires no additional
antecedent basis since it (1) merely provides further specificity for the
previously-recited “output file,” and (2) is inherently the only such file
referred to, namely the output of the process. App. Br. 14; Reply Br. 8.
The issue before us, then, is as follows:

ISSUE
Under § 112, has Appellant shown that the Examiner erred in finding
that “the sortout file” in claim 3 lacks antecedent basis so as to render the
claim indefinite?

10)—a status that the Examiner confirms as correct (Ans. 2). See also Reply
Br. 7-8 (addressing the Examiner’s rejection under § 112). Based on the
record before us, we therefore presume that the Examiner intended to
maintain the rejection under § 112, second paragraph on page 3 of the Non-
final Rejection mailed November 28, 2007 in this appeal.
3 The Examiner withdrew a previous anticipation rejection of claims 1-4
over another reference (Yamashita). See Ans. 5. Accordingly, that rejection
is not before us.
4 Throughout this opinion, we refer to (1) the Appeal Brief filed March 19,
2008; (2) the Examiner’s Answer mailed June 12, 2008; and (3) the Reply
Brief filed July 31, 2008.
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FINDING OF FACT
The record supports the following finding of fact (FF) by a
preponderance of the evidence:
1. Appellant’s claim 3 recites, in pertinent part, “merging the data in
said sortwork file to an output file regarded as the sortout file . . . .” App.
Br. 28; Claims App’x.

PRINCIPLES OF LAW
Claims must “particularly point[] out and distinctly claim[] the subject
matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
“The failure to provide explicit antecedent basis for terms does not
always render a claim indefinite. . . . [D]espite the absence of explicit
antecedent basis, [i]f the scope of a claim would be reasonably ascertainable
by those skilled in the art, then the claim is not indefinite. . . .” Energizer
Holdings Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370-71 (Fed. Cir.
2006). Antecedent basis can also be implied. Id. (holding that the term
“anode gel” implicitly provided antecedent basis for a “zinc anode” in the
same claim).
“Although an inventor is indeed free to define the specific terms used
to describe his or her invention, this must be done with reasonable clarity,
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deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994).

ANALYSIS
We will not sustain the Examiner’s rejection of claim 3 under § 112,
second paragraph. Claim 3 recites, in pertinent part, “merging the data in
said sortwork file to an output file regarded as the sortout file . . . .” FF 1;
emphasis added.
Although the term “the sortout file” in claim 3 lacks explicit
antecedent basis since it is the first instance of the term in the claim, that fact
alone is hardly dispositive of whether the claim as a whole would be
indefinite. See Energizer Holdings, 435 F.3d at 1370-71. Rather, the
question is whether this lack of antecedent basis renders the scope of claim 3
unascertainable by ordinarily skilled artisans—which it does not.
This conclusion is apparent when interpreting the recited phrase
“merging the data in said sortwork file to an output file regarded as the
sortout file . . .” as a whole. As Appellant indicates (App. Br. 14), the term
“the sortout file” in this context merely specifies the output file. See FF 1.
That is, the output file is merely “regarded as the sortout file”: a label that
Appellant is free to use so long as it reasonably clear—which it is. See id;
see also Paulsen, 30 F.3d at 1480.
Since claim 3 merely specifies the output file in terms of the sortout
file, skilled artisans would have no trouble ascertaining the scope of claim 3
when interpreted in light of the Specification, despite the lack of explicit
antecedent basis for “the sortout file.” See Energizer Holdings, 435 F.3d at
1370-71. The claim is therefore definite under § 112, second paragraph.
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For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s rejection of claim 3 under § 112.

THE ANTICIPATION REJECTION
Regarding independent claim 1, the Examiner finds that Lee discloses
all of the claimed subject matter. Ans. 3. Specifically, the Examiner equates
Lee’s sorted strings 400b-402b to the recited “input file,” and contends that
the contents of this “input file” are “investigated” to identify “presorted
portions,” namely Lee’s string blocks. Ans. 7.
According to the Examiner, these identified “presorted portions” (i.e.,
string blocks) are incorporated into a “second file” (i.e., Lee’s temporary
storage device 505) by “rearranging directory information.” Ans. 8-9. This
“rearrangement,” the Examiner contends, corresponds to Lee’s sort/merge
application module 502’s re-storing sorted strings in the temporary storage
device 505. Id.
Appellant argues that Lee does not:
(1) investigate the contents of the input file to identify presorted
portions thereof; and
(2) incorporate the identified presorted portions into a second file by
rearranging directory information without physically transferring the
presorted portions from the input file, as claimed. App. Br. 15-18; Reply Br.
3-7.
According to Appellant, Lee does not “investigate” the contents of the
sorted string blocks to see if they contain sorted data (“presorted portions”)
since it is already known that they do. Reply Br. 4-5. Appellant adds that
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the “jumbled” input data that is sorted by Lee’s system is likewise not
“investigated” for presorted data as claimed. App. Br. 16.
Appellant also argues that while Lee reorders data via sorting and
merging, Lee does not rearrange directory information, let alone do so
without physically transferring the presorted portions from the input file, as
claimed. App. Br. 17-18; Reply Br. 5-6; emphases added.
The issue before us, then, is as follows:

ISSUE
Under § 102, has Appellant shown that the Examiner erred in
rejecting claim 1 by finding that Lee:
(1) investigates the contents of an input file to identify presorted
portions thereof; and
(2) incorporates the identified presorted portions into a second file by
rearranging directory information without physically transferring the
presorted portions from the input file, as claimed?

FINDINGS OF FACT
The record supports the following additional findings of fact (FF) by a
preponderance of the evidence:
Lee
1A. Lee discusses conventional “internal” and “external” sorting
operations that rearrange data according to one or more key values in a
sequential order. Lee, col. 2, ll. 44-51.
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2. For external sorting, the size of the data to be sorted is larger than
the main memory size. Therefore, sorting is performed in two phases: (1) a
“string generation phase,” and (2) a “merging phase.” Lee, col. 2, ll. 58-62.
3. An external sort is shown in Figures 4A through 4D. In the initial
string generation phase, a jumbled group of data (data packets) 400a-402a
are received (Fig. 4A). Each data packet is then separately rearranged to
create sorted data strings (“sortwork”) 400b-402b (Fig. 4B). This string
generation phase is shown in Figures 4A and 4B reproduced below:

The String Generation Phase of an External Sort in Lee’s Figures 4A
and 4B

4. In the output merge phase, the sorted strings 400b-402b are
combined to yield a final output 404 that has been completely sorted and
merged. Specifically, (1) the sorted strings are divided into “string blocks,”5
and (2) a series of “passes” are made by successively opening the string
blocks and comparing the contents. During this comparison, the string

5 Although Lee hyphenates this term (see, e.g., col. 3, l. 6), we nonetheless
omit this hyphen for proper grammatical form.
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blocks’ highest priority data are written to the final output (Fig. 4C). Lee,
col. 3, ll. 3-12; Figs. 4C-4D.
5. String blocks are sequentially opened in multiple passes, as more
and more blocks are effectively plucked from their data strings and inserted
into the final output 404. The output merge phase is shown in Lee’s Figures
4C and 4D reproduced below:

Output Merge Phase of an External Sort in Lee’s Figures 4C and 4D

6. Figure 5 shows a hardware architecture for sorting operations
comprising:
(1) a computer system 503 with a sort/merge application module 502
that manages sorting;
(2) primary storage device 504 that stores (a) the original data to be
sorted, and (b) the final, merged output; and
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(3) temporary storage device 505 that stores intermediate data (e.g.,
sortwork) used in sorting and merging. Lee, col. 3, ll. 16-31; Fig. 5. This
configuration is shown in Lee’s Figure 5 reproduced below:

Hardware Architecture for Sorting Operations in Lee’s Figure 5

7. In the string generation phase, module 502:
(1) reads the data packets to be sorted from primary storage
device 504;
(2) sorts each data packet; and
(3) re-stores the sorted strings in the temporary storage device
505.
Lee, col. 3, ll. 32-36; Fig. 5.
8. After the string generation phase, module 502:
(1) sequentially re-reads portions of each sorted string,
(2) merges these portions to create a final sorted output; and
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(3) stores the final sorted output in the primary storage device 504.
Lee, col. 3, ll. 36-40; Fig. 5.

PRINCIPLES OF LAW
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure which is
capable of performing the recited functional limitations. RCA Corp. v. Appl.
Dig. Data Sys., Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984); W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983).

ANALYSIS
Based on the record before us, we are persuaded of error in the
Examiner’s anticipation rejection of independent claim 1.
In reaching this conclusion, however, we see no reason why Lee’s
sorted data strings (“sortwork”) 400b-402b in the string generation phase
(FF 3) cannot constitute an “input file” as claimed as the Examiner indicates
(Ans. 7). Despite Appellant’s arguments to the contrary (App. Br. 16),
nothing in the claim precludes Lee’s sorted data strings as constituting an
input file as claimed. Moreover, Appellant’s arguments regarding Lee’s
“sorted string blocks” as corresponding to the recited input file (Reply Br. 4;
emphasis added) are inapposite, for the Examiner did not rely on Lee’s
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string blocks for this feature, but rather the sorted strings themselves. See
Ans. 7.6
Nor do we see any reason why this “input file” is not “investigated”
for “presorted portions” as the Examiner indicates (Ans. 7), namely by
identifying corresponding string blocks into which the sorted strings are
divided. See FF 4. And we agree with the Examiner (Ans. 9) that these
“presorted portions” would be incorporated into a “second file” associated
with the temporary storage device 505. See FF 4-8.
Furthermore, we see no reason why the application module’s re-
storing the sorted strings in the temporary storage device 505 (FF 7) would
not “rearrange directory information” associated with that device to
accommodate this storage as the Examiner indicates (Ans. 8). The term
“directory information” is quite broad and is not limited to metadata as
Appellant argues (Reply Br. 5), let alone directory pointers or identifiers
(Reply Br. 6). In any event, the very storage of the sorted strings in the
temporary storage device 505 (FF 7) would result in at least some
rearrangement of “directory information” if, for no other reason, than to
identify and accommodate the newly-stored file.
But we fail to see how this “rearrangement” would not physically
transfer the presorted portions from the input file, as claimed. Not only has
the Examiner failed to clearly address how Lee meets this critical limitation,
we are at a loss as to how Lee’s string blocks would not be physically
transferred from the “input file” (i.e., the sorted strings).

6 Compare Ans. 7 (“The application module internally sorts a data packet to
generate a string (input file).”) with id. (“[T]he sorted data strings 400b-402b
are divided into string-blocks (portions) . . . .”) (emphases added).
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Even if the sorted strings are divided into string blocks at the
temporary storage device 505 (i.e., following storing the strings) (see FF 7),
the module 502 nonetheless sequentially re-reads the string blocks and
merges the data to create a final sorted output (FF 4, 5, and 8). This re-
reading of the string blocks (“presorted portions”) and merging process
would therefore involve physically transferring the data associated with the
string blocks to the module 502 from the “input file” (i.e., the stored strings).
See id. Accordingly, Lee does not incorporate the identified presorted
portions into a second file by rearranging directory information without
physically transferring the presorted portions from the input file, as claimed.
For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s rejection of independent claim 1. Therefore, we will not sustain
the Examiner’s rejection of that claim, and dependent claims 2-4 for similar
reasons.

CONCLUSION
Appellant has shown that the Examiner erred in rejecting (1) claim 3
under § 112, and (2) claims 1-4 under § 102.

ORDER
The Examiner’s decision rejecting claims 1-4 is reversed.

REVERSED

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pgc

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