Ex Parte Matsa et al

Patent Trial and Appeal Board

Nov 21, 2013

12130285 (P.T.A.B. Nov. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MOSHE E. MATSA and ERIC PERKINS1
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Appeal 2011-012813
Application 12/130,285
Technology Center 2100
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Before DEMETRA J. MILLS, LORA M. GREEN, and TINA E. HULSE,
Administrative Patent Judges.

HULSE, Administrative Patent Judge

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims related to
parsing a document in an Extensible Markup Language (XML) format. The
Examiner has rejected the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 Appellants identify the Real Party in Interest as International Business
Machines Corporation. (App. Br. 1.)
Appeal 2011-012813
Application 12/130,285

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STATEMENT OF THE CASE
Claims 1-15 are on appeal. (App. Br. 3.)
Claim 1 is illustrative and reproduced below:
1. A method for parsing a document, the document being
in an Extensible Markup Language (XML) format, the method
comprising:
parsing the XML document via a parser;
validating the XML document via a validation engine
operating on a computer, the validation engine driving a
tokenizer to produce one token at a time from the XML
document, the driving being based on a recursive-decent and
code driven method, and the validating being an integral part of
the parsing.

The claims stand rejected under 35 U.S.C. § 103(a) as follows:
 Claims 1-4, 6-9, and 11-14 based on Chiu2 and Medi3 (Ans. 5);
 Claims 5, 10, and 15 based on Chiu, Medi, and Srivastava4 (id.
at 6).
ISSUE
Does the preponderance of the evidence of record show that the
Examiner presented a prima facie case that the claims are obvious?

DISCUSSION
The Examiner rejected each of the claims as obvious over Medi and at
least one other reference. Appellants assert that Medi does not disclose “the

2 Kenneth Chiu & Wei Lu, A Compiler-Based Approach to Schema
-Specific XML Parsing, 1-11 (2004).
3 Medi et al., US 2007/0250766 A1, published October 25, 2007.
4 Srivastava, US 2006/0074838 A1, published April 6, 2006.
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Application 12/130,285

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validation engine driving a tokenizer to produce one token at a time from the
XML document, the driving being based on a recursive-decent [sic, descent]
and code driven method,” which is found in independent claims 1, 6, and 11.
(App. Br. 10-12; Reply Br. 2-4.) Because the Examiner has not established
a prima facie case of obviousness, at least with respect to the “code driven
method” limitation of the claims, we reverse.
The Examiner found that Medi discloses the claimed “code driven
method,” relying on disclosures from both the Appellants’ Specification and
Medi. (Ans. 8.) Specifically, the Examiner stated that “the appellant’s
specification states that ‘code-driven refers to the design style that is
common in some hand crafted programs (Specification: paragraph 0020).’
Further, ‘a generated code is preferred, which is generated from the DTD or
other grammar information of the XML dialect (Specification: paragraph
0020).’” (Id.) The Examiner also found that “Medi discloses validation of
the XML elements against an XML schema (paragraph 0033-0034).” The
Examiner then concluded that because “[a]n XML schema is a grammar that
defines the structure and contents of the document type,” Medi discloses a
validator that is “code driven.” (Id.)
We find insufficient evidence of record to support the Examiner’s
prima facie case. The Examiner appears to interpret a “code driven method”
as including validation of XML elements against an XML schema. (Id.) In
doing so, the Examiner relies on the statement from the Appellants’
Specification that “a generated code is preferred, which is generated from
the DTD or other grammar information for the XML dialect.” (Id.) But the
Specification then states that “[f]rom the generated code an XML parser that
is code-driven or table-driven may be generated.” (Spec. ¶ [0020])
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Application 12/130,285

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(emphasis added). Thus, the Specification suggests that a “code driven”
XML parser is generated from—and therefore different than—the code
generated from the DTD.
Although claims should be given their broadest reasonable
interpretation, that interpretation must be consistent with the specification.
In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000) (“[D]uring examination
proceedings, claims are given their broadest reasonable interpretation
consistent with the specification.”). Because the Examiner failed to explain
how his interpretation of “code driven” comports with the Specification, we
find that the Examiner did not satisfy the prima facie burden of showing how
Medi discloses a “code driven method,” as required by the claims.
Accordingly, we reverse the rejection of the claims as obvious.

CONCLUSION OF LAW
We conclude that the preponderance of the evidence of record does
not show that the Examiner satisfied the burden of establishing a prima facie
case of obviousness of independent claims 1, 6, and 11 over Chiu and Medi.
We therefore reverse the rejections of claims 1-15 under 35 U.S.C.
§ 103(a).

REVERSED

cdc