10326187 (B.P.A.I. Apr. 23, 2008)

Ex Parte Pulaski

Board of Patent Appeals and InterferencesApr 23, 2008

10326187 (B.P.A.I. Apr. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte DAVID A. PULASKI __________ Appeal 2008-0017 Application 10/326,187 Technology Center 2100 __________ Decided: April 23, 2008 __________ Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and STEPHEN SIU, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2008-0017 Application 10/326,187 2 THE INVENTION The disclosed invention relates generally to the management of hierarchical structure data items in a database by assigning unique values to each data node in the hierarchy (Spec. 1-2). More particularly, each data node’s unique value is based on a sibling value and a unique value assigned to the node’s parent. The unique value can be used to identify all relatives (e.g., children, grandchildren, parent, grandparent, siblings, etc.) of a data node based on logical relationships existing amongst the unique values. As a result, hierarchical data nodes can be processed in an efficient and non- recursive fashion (Spec. 2). Independent claim 1 is illustrative: 1. A method of managing hierarchical structure data items in a database comprising: providing a relational database having hierarchically related data items; assigning a unique value to each data item, wherein each unique value is a single, non-delimited string of alphabetic characters that includes a sibling value; and identifying all child data items of a selected data item using a single non-recursive operation, wherein the child data items are identified by determining a logical relationship between the unique value assigned to the selected data item and a unique value assigned to each child data item. Appeal 2008-0017 Application 10/326,187 3 THE REFERENCES The Examiner relies upon the following reference as evidence in support of the rejection: Chandler US 6,480,857 B1 Nov. 12, 2002 The Examiner refers to the following references as extrinsic evidence in support of the Examiner’s taking of Official Notice (see Ans. 13): Hargrove US 5,787,417 July 28, 1998 Loehr US 6,901,350 B2 May 31, 2005 THE REJECTIONS Claims 1-20 stand rejected under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description requirement. Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chandler in view of “Official Notice.” PRINCIPLES OF LAW “What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1742 (2007). To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” Id. at 1740. Appellant has the burden on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an Appeal 2008-0017 Application 10/326,187 4 applicant can overcome a rejection [under § 103] by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Therefore, we look to Appellant’s Brief to show error in the proffered prima facie case. Analysis 35 U.S.C. § 112, first paragraph At the outset, we reverse the Examiner’s 35 U.S.C. § 112, first paragraph rejection. We note that the Court of Appeals for the Federal Circuit has held that “[t]o fulfill the written description requirement, the patent specification must describe an invention in sufficient detail that one skilled in the art can clearly conclude that the inventor invented what is claimed.” Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1364 (Fed. Cir. 2003) (citations omitted). Here, contrary to the Examiner’s contentions, we find clear support for the claimed “non-delimited string of alphabetic characters” (claims 1, 11, 15, and 18) in Appellant’s Figures 2 and 3. In particular, we find the claimed “non-delimited string of alphabetic characters” (claims 1, 11, 15, and 18) is clearly shown within each node of Figures 2 and 3 (e.g., “A”, “AA”, “AB”, “AAA”, etc.). We note that the drawings are part of the written description. “[T]he proper test is whether the drawings conveyed with reasonable clarity to those of ordinary skill that . . . [the inventor] . . . invented . . . [the invention] … recited in those claims.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1566 (Fed. Cir. 1991). Appeal 2008-0017 Application 10/326,187 5 Because we find clear support for the claimed subject matter in Appellant’s drawings, we conclude that Appellant has shown the Examiner’s 35 U.S.C. § 112, first paragraph rejection is in error. Obviousness under 35 U.S.C. § 103 Claims 1-20 We consider the Examiner’s rejection of claims 1-20 as being unpatentable over Chandler in view of “Official Notice.” Since Appellant’s arguments with respect to this rejection have treated these claims as a single group which stand or fall together, we select independent claim 1 as the representative claim for this rejection. See 37 C.F.R. § 41.37(c)(1)(vii). We begin our analysis by noting that the Examiner has relied on the Chandler reference for its teaching of all that is claimed except the recited limitations of “wherein each unique value is a single, non-delimited string of alphabetic characters” (see independent claims 1, 15, and 18; see also the equivalent limitations recited in independent claim 11) (See Ans. 5). The Examiner has taken “Official Notice” that it would have been obvious for a person of ordinary skill in the art to have modified Chandler by replacing Chandler’s delimited strings (e.g., “1.0.0”, “1.1.0” as shown in Fig. 4) with a non-delimited string of alphabetic characters, as claimed (see Ans. 5). As evidence in support of this contention, the Examiner points to Appellant’s own disclosure that expressly states: “It is understood that any number and/or type of values can be used to uniquely identify data items.” Appeal 2008-0017 Application 10/326,187 6 (Spec. 9, ll. 2-3). The Examiner also proffers extrinsic evidence to support the taking of “Official Notice.” (see e.g., Hargrove, Fig. 3). Regarding the Examiner’s taking of “Official Notice,” Appellant contends that the Office’s factual assertion is not based upon common knowledge, and further, that “assigning a unique value that is a single, non- delimited string of alphabetic characters to a data item is not obvious to one skilled in the art as asserted by the Office.” (Br. 7). After considering the evidence before us, it is our view that Appellant has not sustained the requisite burden on appeal in providing arguments or evidence persuasive of error in the Examiner’s rejection. Appellant’s mere assertions that the Examiner’s findings are not based on common knowledge and are therefore not obvious fall well short of the mark (see Br. 7). Appellant has merely stated a conclusion without providing any evidence or reasoned explanation as support. In contrast, we find the Examiner’s taking of “Official Notice” is strongly supported by Appellant’s own admission in the Specification that “any number and/or type of values can be used to uniquely identify data items.” (Spec. 9, ll. 2-3). Moreover, we find that Fig. 3 of the extrinsic Hargrove reference bears a striking similarity to Appellant’s Fig. 2 and clearly supports the Examiner’s contention that Appellant’s claimed assignment of a “unique value [that] is a single, non-delimited string of alphabetic characters” (claim 1) was well within the scope of common knowledge in the art at the time of the invention. Appeal 2008-0017 Application 10/326,187 7 Because Appellant has not shown error in the Examiner’s rejection, we sustain the Examiner’s rejection of representative claim 1 (and claims 2- 20 that fall therewith) as being unpatentable over Chandler in view of “Official Notice.” CONCLUSION OF LAW Based on the findings of facts and analysis above, we conclude that Appellant has shown the Examiner erred in rejecting claims 1-20 under 35 U.S.C. § 112, first paragraph. However, we conclude that Appellant has not shown the Examiner erred in rejecting claims 1-20 under 35 U.S.C. § 103(a) for obviousness. DECISION Because we have sustained at least one rejection for each claim on appeal, we affirm the Examiner’s decision rejecting claims 1-20. Appeal 2008-0017 Application 10/326,187 8 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 rwk HOFFMAN WARNICK & D'ALESSANDRO, LLC 75 STATE STREET 14TH FLOOR ALBANY NY 12207