Ex Parte Marcus

Board of Patent Appeals and Interferences

Mar 22, 2010

10716840 (B.P.A.I. Mar. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MATTHEW MARCUS
___________

Appeal 2009-003816
Application 10/716,840
Technology Center 2100
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Decided: March 22, 2010
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Before JEAN R. HOMERE, ST. JOHN COURTENAY III,
and STEPHEN C. SIU, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 1-34 and 37-40. Claims 35 and 36 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

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STATEMENT OF THE CASE
INVENTION
The invention on appeal relates to testing a node to determine a match
with one or more particular criteria in an instance of an XML document.
(Spec. 2, ll. 25-28).

ILLUSTRATIVE CLAIM
1. A method for searching for one or more logical elements in a
hierarchical tree structure of an extensible markup language (XML)
document conforming to a schema used for XML, comprising:
providing a representation of an XML document instance containing
two or more logical elements, wherein at least one logical element is a
parent node and at least one logical element is a child node in a hierarchical
tree structure describing the representation;
receiving a query for logical elements satisfying an XPath expression;
searching in the hierarchical tree structure only nodes that potentially
have child nodes satisfying the XPath expression; and
providing the logical elements satisfying the XPath expression.

PRIOR ART
The Examiner relies upon the following reference as evidence:
Chau US 2002/0156772 A1 Oct. 24, 2002

THE REJECTION
The Examiner rejected claims 1-34 and 37-40 under 35 U.S.C.
§ 102(b) as being anticipated by Chau.

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ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal:

Under § 102, did the Examiner err by finding that Chau discloses or
describes “searching in the hierarchical tree structure only nodes that
potentially have child nodes satisfying the XPath expression?” (Claim 1).

PRINCIPLES OF LAW
Anticipation under § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.

Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(citations omitted).

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by the record:
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The Chau Reference
1. Chau discloses creating document access definition (DAD)
files. A DAD file is a tree structured XML document. (Para. 0127).
2. Chau discloses that XML document data is stored in an
application table, and particular elements are stored in side tables.
(Para. 0211).
3. Chau discloses that the elements stored in the side tables are
used to create indices on the side tables. (Para. 0214).
4. Chau discloses that a document object model (DOM) tree is
generated from the DAD. The XML system traverses the DOM tree to
generate SQL queries. (Para. 0732).

ANALYSIS
We decide the question of whether the Examiner erred by finding that
Chau discloses or describes “searching in the hierarchical tree structure only
nodes that potentially have child nodes satisfying the XPath expression.”
Appellant contends that the techniques disclosed in Chau: 1) traverse
the entire tree structure; and 2) the traversal is not to satisfy the XPath
expression. (Reply Br. 2-3) (emphasis added).
The Examiner contends that Chau teaches the limitation in question in
paragraphs [0335 and 0336]. (Ans. 12-13). In particular, the Examiner
contends that Chau discloses a DAD tree structured XML document which
is created from extracting XML elements from a document and storing the
elements in side tables. The Examiner further contends that every node in
the tree structure has potential child nodes. (Ans. 13)
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Based on the record before us, we agree with Appellant’s arguments
for the reasons discussed infra.
We find that Chau discloses a document access definition (DAD)
which is a tree structured XML document. (FF 1). Chau further discloses
that XML document data is stored in an application table and particular
elements and attributes are stored in side tables. (FF 2). This is to allow
application programmers to create indices on the side tables. (FF 3). The
document object model (DOM) tree described in Chau, comprises relational
database nodes. However, Chau expressly states that the DOM tree is
traversed to generate SQL queries. (FF 4).
Therefore, while we agree with the Examiner that all nodes potentially
have child nodes, the child nodes in question have to satisfy an XPath
expression in order to anticipate claim 1. We agree with Appellant that the
system in Chau does not disclose or describe searching the hierarchical tree
structure for “only nodes that potentially have child nodes satisfying the
XPath expression,” as recited in independent claims 1 and 20.
Based on the record before us, we find Chau does not disclose or
describe “searching in the hierarchical tree structure only nodes that
potentially have child nodes satisfying the XPath expression,” as recited in
independent claims 1 and 20. We note that “absence from the reference of
any claimed element negates anticipation.” Kloster Speedsteel AB v.
Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986). Accordingly, we
reverse the Examiner’s anticipation rejection of independent claims 1 and
20, and associated dependent claims 2-19, 21- 34, and 37-40 which fall
therewith.

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CONCLUSION
Based on the findings of facts and analysis above:
The Examiner erred in determining that Chau discloses or describes
“searching in the hierarchical tree structure only nodes that potentially have
child nodes satisfying the XPath expression.”

ORDER
We reverse the Examiner’s rejection of claims 1-34 and 37-40 under
35 U.S.C. § 102(b).

REVERSED

pgc

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