Ex Parte Salter et al

Board of Patent Appeals and Interferences

Jul 22, 2008

10313284 (B.P.A.I. Jul. 22, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CRAIG SALTER and CHRISTINA P. LAU
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Appeal 2007-4094
Application 10/313,284
Technology Center 2100
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Decided: July 22, 2008
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Before JAMES D. THOMAS, 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) from the
Examiner’s rejection of claims 1, 4-10, 13-19, 21, and 22. Claims 2, 3, 11,
12, and 20 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE. We also enter new grounds of rejection against
claims 1 and 4-9 under the provisions of 37 C.F.R. § 41.50(b).

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THE INVENTION
The disclosed invention relates generally to the conversion of files
from one format to another. More particularly, Appellants’ invention is
directed to converting markup language files from one format to another
(Spec.1).
Independent claim 1 is illustrative:
1. A method for converting a first markup file to a
second markup file, said method comprising:

inserting tags into said first markup file, wherein
said tags comprise a first tag identifying data elements to
be extracted from said first markup file and a second tag
identifying a portion of said first markup file which
requires conversion;

generating said second markup file from the data
elements extracted from said first markup file using the
first tag in said first markup file; and

generating a conversion file using the second tag in
said first markup file, said conversion file, when
processed with said second markup file, adapted to
generate a third markup file similar to said first markup
file.

THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the rejections:
Davis US 5,937,160 Aug. 10, 1999
Sohota US 2001/0056460 A1 Dec. 27, 2001

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THE REJECTION
Claims 1, 4-10, 13-19, 21, and 22 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Sohota in view of Davis.

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. Appellants have 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 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 Appellants’ Brief to show error in the proffered prima facie case.

ANALYSIS
Independent claims 1, 10, and 19
We consider the Examiner’s rejection of independent claims 1, 10,
and 19 as being unpatentable over Sohota in view of Davis.
Appellants contend that the cited combination of prior art does not
teach inserting tags into the first markup file to identify a portion of the first
markup file that requires conversion (Br. 9). Appellants also contend that
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“the cited prior art also fails to teach or suggest ‘generating a conversion
file’ using the second tag in the first markup file, wherein the second tag
identifies a portion of the first markup file which requires conversion,” as
claimed. (Br. 9).
The Examiner disagrees. The Examiner contends that the secondary
Davis reference “teaches adding commands in the form of RPM tags to a
markup language file to denote both the content to be replaced (equivalent to
the value tag as claimed in the [i]nstant [i]nvention) and a portion of the
markup file that requires conversion (equivalent to the regional tag as
claimed in the [i]nstant [i]nvention.)” (Ans. 8).
We note that claim 4 (that depends upon claim 1) recites that the
“first tag comprises a value tag and said second tag comprises a regional
tag.” Thus, the Examiner is clearly reading both the claimed “first tag
identifying data elements to be extracted from said first markup file” and the
claimed “second tag identifying a portion of said markup file which requires
conversion” on the single tag disclosed by Davis. (Col. 15, ll.
5-10). Davis discloses that “[t]he tag is the basic tag used to identify
the location of a port within the HTML source file of a Web page. The Web
server automatically replaces this tag with the Web page content changes
provided with the incoming e-mail message.” (Davis, col. 15, ll. 6-10).
When we consider the claim as a whole, we conclude that the
Examiner has erred by impermissibly mapping two distinctly claimed types
of tags (i.e., a first tag identifying data elements to be extracted from said
first markup file and a second tag identifying a portion of said first markup
file which requires conversion) to a corresponding single element in the
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secondary Davis reference, i.e., the tag, as previously discussed.
Moreover, we also find persuasive Appellants’ argument (Br. 10, ¶3) that
Davis does not disclose “identifying data elements to be extracted from the
first markup file”, as claimed. We agree with Appellants that Davis instead
discloses replacing the tag with the Web page content changes
provided with the incoming e-mail message, as previously discussed.
(Davis, col. 15, ll. 6-10). Therefore, for at least the aforementioned reasons,
we conclude that the cited combination of Sohota and Davis does not teach
nor fairly suggest the following limitations recited in each of independent
claims 1, 10, and 19:
a first tag identifying data elements to be extracted from said
first markup file and a second tag identifying a portion of said
first markup file which requires conversion;
(independent claims 1, 10, and 19).
Although the aforementioned deficiencies are sufficient to decide this
appeal, we nevertheless find additional claim limitations that are not taught
or fairly suggested by the proffered combination of Sohota and Davis.
Regarding the claim limitations of “generating a conversion file using
the second tag in said first markup file,” (independent claims 1, 10, and 19),
the Examiner contends that Sohota teaches transforming or converting a
markup language file, such as an XML file, into a displayable format using
an XLST file to define the format of the data and perform the conversion
(see Sohota, Fig. 2B, p. 6, paras. 0067-0068). (Ans. 9).
However, we note that the language of each independent claim is
expressly directed to generating a conversion file, in addition to merely
using the conversion file to generate a third markup file (independent claims
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1, 10, and 19). Thus, based upon the evidence before us, we agree with
Appellants that the cited portions of Sohota merely disclose (in reference to
transforming an XML file into an HTML web page), that “[an extensible
style sheet transformation (XSLT) application can be used to perform such a
transformation.” (Sahota, para. 0067, 4th sentence, emphasis added). After
considering the record before us, we concur with Appellants’ observation
that the cited portion of Sohota is silent regarding how the XSLT application
(i.e., conversion file) is generated. Therefore, we agree with Appellants that
the cited combination of references do not provide a teaching or suggestion
to generate the conversion file using the second tag in the first markup file,
as required by the language of each independent claim on appeal.
Because we conclude that Appellants have met their burden of
showing that the Examiner has failed to establish a prima facie case of
obviousness, we reverse the Examiner’s rejection of independent claims 1,
10, and 19, as being unpatentable over Sohota in view of Davis. Because we
have reversed the Examiner’s rejection of each independent claim on appeal,
we also reverse the Examiner’s rejection of dependent claims 4-9, 13-18, 21,
and 22 as being unpatentable over Sohota in view of Davis.

CONCLUSION OF LAW
We conclude that Appellants have met their burden of showing that
the Examiner erred in rejecting claims 1, 4-10, 13-19, 21, and 22 under 35
U.S.C. § 103(a) for obviousness.

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NEW GROUND OF REJECTION
35 U.S.C. § 101
Using our authority under 37 C.F.R. § 41.50(b), we reject claims 1
and 4-9 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.
We conclude that claims 1 and 4-9 are not directed to eligible subject
matter under 35 U.S.C. § 101 in view of In re Comiskey, 499 F.3d 1365
(Fed. Cir. 2007). In particular, we conclude that Appellants’ claimed
“method for converting a first markup file to a second markup file” (claim 1)
does not require integrating a machine (e.g., a computer), or constitute a
process of manufacture, or altering a composition of matter. We conclude
that the steps recited in claim 1 may be embodied in software alone or could
alternately be performed as mental steps where the claimed file is merely
data. Therefore, the nature of the subject matter claimed may be reasonably
construed as a mental process since the language of claims 1 and 4-9 broadly
encompasses non-tangible embodiments. Accordingly, we conclude that
these claims are directed to abstract ideas1 and/or data structures per se.
In contrast, independent claim 10 recites in pertinent part: “[a]
computer readable media product storing data and instructions, said data and
instructions, when processed by a computer system . . . .” (claim 10,
preamble). When we broadly but reasonably construe the claimed “computer

1 The Supreme Court has specifically identified three categories of
unpatentable subject matter: “laws of nature, natural phenomena, and
abstract ideas.” See Diamond v. Diehr, 450 U.S. 175, 185 (1981).

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readable media product” in a manner consistent with Appellants’
Specification, we conclude that the scope of the claimed media is limited to
tangible media embodiments such as the disclosed “floppy disk drives, tape
drives, CD-ROM drives, DVD-RW drives,” and the like. (See Spec. 9, ll. 9-
10). See also Appellants’ Specification, page 10, lines 7-9: “Although
removable media 212 is illustrated as a conventional diskette[,] other
removable devices such as Zip™ drives, flash cards, CD-ROMs, static
memory devices and the like may also be employed.” Therefore, we
conclude that independent claim 10, and associated dependent claims 13-18
are each directed to statutory subject matter.
Likewise, we conclude that independent claim 19 and associated
dependent claims 21 and 22 are each directed to statutory subject matter
because we find clear structural support for the claimed “means” in the
computer system shown in Appellants’ Figure 1 and described in the
Specification on page 9, lines 3-8, in addition to the associated algorithms
depicted in Figures 4 and 5.2

2 For a computer-implemented means-plus-function claim limitation that
invokes 35 U.S.C. 112, sixth paragraph, the corresponding structure is
required to be more than simply a general purpose computer or
microprocessor. See Aristocrat Technologies, Inc. v. International Game
Technology, 521 F.3d 1328, 1333 (Fed. Cir. 2008). The corresponding
structure for a computer-implemented function is the algorithm. See WMS
Gaming, Inc. v. International Game Technology, 184 F.3d 1339 (Fed. Cir.
1999). The written description of the Specification must at least disclose
the algorithm that transforms the general purpose microprocessor to a
special purpose computer programmed to perform the disclosed algorithm
that performs the claimed function. See Aristocrat, 521 F.3d at 1338.
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DECISION
We reverse the Examiner’s decision rejecting claims 1, 4-10, 13-19,
21, and 22.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

Applicant may express the algorithm in any understandable terms including
as a mathematical formula, in prose, in a flow chart, or in any other manner
that provides sufficient structure. See Finisar Corp. v. The DIRECTV Group
Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008).
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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).

REVERSED
37 C.F.R. § 41.50(b)

pgc

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