UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/508,579 10/07/2014
48916 7590
Greg Goshorn, P.C.
9600 Escarpment Blvd.
Suite 745-9
AUSTIN, TX 78749
02/26/2019
FIRST NAMED INVENTOR
Kaoru Shinkawa
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
JP920080278US2 5541
EXAMINER
GOFMAN,ALEXN
ART UNIT PAPER NUMBER
2163
MAIL DATE DELIVERY MODE
02/26/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAO RU SHINKA WA and ISSEI YOSHIDA
Appeal2018-006741
Application 14/508,579 1
Technology Center 2100
Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN,
Administrative Patent Judges.
CYGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 According to Appellants, the real party in interest is International Business
Machines Corp. App. Br. 3.
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Application 14/508,579
Disclosed Invention and Exemplary Claim
The disclosed invention relates to information processing techniques
intended for databases, particularly those techniques using partitioned data
areas. Spec. ,r 2. For access to the content of information in a system,
databases have been used to enable the search of the system's contents.
Spec. ,r 3. The disclosed database includes a structured document having
values representing actual data stored in a hierarchical structure. Spec. ,r 4.
Independent claim 1 is exemplary of the disclosed invention, and
reads as follows:
1. An information processing apparatus, comprising:
a processor;
a non-transitive storage area;
a database, stored in the non-transitive storage area,
storing a plurality of stored values having a hierarchical
structure, wherein the plurality of stored values represent
actual data stored in a particular field of the database;
a partition generating unit, executed on the processor,
which generates a value partition, the value partition having a
unit subtree, the unit subtree having target data of the plurality
of stored values to be partitioned in the structured document
separated and registered according to a stored value of the
plurality of stored values of the target data, and generates a base
partition which includes a second subtree distinct from the unit
subtree and an index for uniquely identifying the unit subtree;
a parser unit, executed on the processor; which identifies
positions of a start tag and an end tag, the start tag and the end
tag defining a start value and an end value, respectively, the
start value and the end value each corresponding to different
values of the plurality of stored values in the structured
document, to generate a cutting position list corresponding to
the hierarchical structure and register the cutting position list in
a storage area;
a cutting unit, executed on the processor, which separates
the unit subtree and the index for referring to the unit subtree
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from the structured document by referring to the cutting
position list to identify the start tag position and the end tag
position of the unit subtree to be cut, the unit subtree including
the target data; and
a registration unit, executed on the processor, which
registers the unit subtree and the index for identifying the unit
subtree, separated by the cutting unit, in the value and base
partitions.
Independent claims 7, 13, and 18 recite limitations
commensurate with the above-emphasized limitations recited in claim
1. Dependent claims 2-6, 14--17, 19, and 20 each incorporate the
limitations of the independent claims from which they depend.
Examiner's Rejections
The Examiner rejects claims 1-20 on the ground of nonstatutory
double patenting as being unpatentable over claims 1-10 of U.S. Patent
8,856,183. Final Act. 3--4.
The Examiner rejects claims 1-3, 5-9, 11-14, and 16-19 under pre-
AIA 35 U.S.C. § I02(b) as being anticipated by Lal (US 6,684,204 Bl,
issued January 27, 2004) (hereinafter Lal). Id. at 5-17.
The Examiner rejects claims 4--6, 10-12, 15, and 20 under pre-AIA
35 U.S.C. § I03(a) as being obvious over the combination of Lal, Lee et al.
(US 7,287,216 Bl, issued October 23, 2007) (hereinafter Lee), and Cheng
(US 6,519,597 Bl, issued February 11, 2003) (hereinafter Cheng). Id. at
18-20.
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 2-20) in light
of Appellants' contentions that the Examiner has erred (App. Br. 10-14;
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Reply Br. 2-3). Further, we have reviewed the Examiner's response to
Appellants' contentions (Ans. 3--4). We disagree with Appellants'
arguments.
Nonstatutory Double Patenting
Appellants have not contended that the Examiner erred in rejecting
claims 1-20 on the ground of nonstatutory double patenting as being
unpatentable over claims 1-10 of U.S. Patent 8,856,183. App. Br. 9. 2
Accordingly, we sustain, proforma, the rejection of claims 1-20 on the
ground ofnonstatutory double patenting. See 37 C.F.R. §4I.37(c)(l)(iv);
see also Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed.
Rev. 08. 2017, Jan. 2018).
Anticipation
Appellants assign error to the Examiner's rejection of claims 1-3, 5-
9, 11-14, and 16-19 as being anticipated under pre-AIA 35 U.S.C. § 102(b)
by Lal for failing to disclose the claimed invention. The issue raised by
Appellants is whether Lal discloses a start tag and an end tag, defining start
and end values that correspond to different values of the plurality of stored
values, where the stored values represent actual data stored in a particular
field of the database, as set forth in claim 1. App. Br. 10-11; Reply Br. 2-3.
The Examiner has relied upon Lal's Figure 3 to disclose the features
at issue. The Examiner points to an "
" field in Figure 3 that
includes stored data values of the components of the address; i.e., the house
number and street, the city, the state, and the zip code. Final Act. 5-7. Each
2 Note that current USPTO procedure does not permit a nonstatutory double
patenting rejection to be held in abeyance during prosecution. MPEP
§ 804(I)(B)(l) (Rev. January 2018).
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of the components of the address are contained within start and end data
tags; for example, " San Jose ." Lal Fig. 3; see Final Act.
5-7 and App. Br. 10-11. The Examiner finds that Lal's Figure 3 shows the
start and end tags to correspond to different values because Figure 3 shows
at least one start tag associated with a value and at least one end tag
associated with a different value. Final Act. 2, 6-7. For example, the
Examiner finds Lal' s Figure 3 to show an address start tag associated with
one stored value and a street end tag associated with a different stored value.
Final Act. 3. The Examiner further finds that within a specific tag, such as
for " Richard Light," the start tag
would be associated with "Richard" and the different value "Light" would
be associated with the end tag . Ans. 3.
Appellants concede that Lal discloses start and end tags for stored
values, but that those tags do not represent data in a "particular field" of the
database. App. Br. 10-11; Reply Br. 2-3. Appellants further contend that it
would be "impossible to employ Lal's tags," referring to the start and end of
programming statements within XML code, "in a manner consistent with the
rem[ a ]inder of [Appellants'] claim elements." App. Br. 11. Appellants'
Reply Brief sets forth further alleged distinctions between Lal and the
claimed invention; i.e., that Lal's individual tags are part of a programming
language, that the tags contain within only a single value, and that the tags
could not be used to generate a cutting position list as claimed. Reply Br. 2-
3. Appellants' contentions have not persuaded us of error in the Examiner's
conclusion that Lal anticipates Appellants' claim 1.
Beginning with Appellants' contention that the tags do not represent
data in a particular field of the database, this contention hinges on a
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distinction in the claim term "field" that is not reflected in the claims or
Appellants' disclosure. Under the broadest reasonable interpretation
standard, and absent any special definitions, claim terms generally are given
their ordinary and customary meaning, as would be understood by one of
ordinary skill in the art, in the context of the entire disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Appellants
have not pointed to, nor do we discern, any description of the term "field" in
the originally filed disclosure other than its appearance in the originally filed
claims. Appellants merely contend that "the start and end tags of Lal that
are relied upon represent different fields." App. Br. 11.
Appellants' contention that Lal fails to disclose start and end tags
representing data in a particular field is not consistent with the disclosure of
Lal as interpreted by the Examiner. Lal uses the term "field" as
encompassing the "Address" element (Lal column 2 lines 9--18), and the
"Address" element includes the tagged data elements of the house number
and street, the city, the state, and the zip code (Lal Figure 3). See also Final
Act. 2, 5---6. Thus, as found by the Examiner, the term "field" as used by Lal
would be met by the entire "Address" portion as well as any of the elements
therein. See id. Appellants have thus failed to persuasively show error in
the Examiner's finding (Final Act. 2) that an address start tag associated
with one stored value and a street end tag associated with a different stored
value would meet the claimed limitation of a plurality of stored values
representing actual data stored in a particular field; i.e., the data stored
within the "Address" field and the elements therein.
With respect to Appellants' next contention that it would be
"impossible to employ Lal' s tags in a manner consistent with the
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rem[a]inder of [Appellants'] claim elements" (App. Br. 11), Appellants have
not provided persuasive explanation as to why Appellants consider such to
be an impossibility. Appellants set forth the example of a start tag of "701
Curtner Avenue" and an end tag of "702 Curtner Avenue" as exemplifying
their claimed invention. App. Br. 11. The Examiner has previously noted
during prosecution that the claims require different values but do not require
a numerically sequential range of values in a field. Non-Final Act. 3
(August 22, 2016). To the extent that Appellants contend error in the
Examiner's rejection for lack of a numerically sequential range of values,
such a contention is unpersuasive as failing to be commensurate in scope
with the language of independent claim 1. See In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998) ("[The] proffered facts ... are not
commensurate with the claim scope and are therefore unpersuasive."); In re
Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the
claims cannot be relied upon for patentability). We therefore find
Appellants' contentions to this end unpersuasive.
We tum to Appellants' contentions in the Reply Brief. With respect
to Lal's tags being "part of a programming language" (Reply Br. 2),
Appellants have not persuasively explained why such would preclude Lal's
disclosed invention from anticipating the invention of claim 1, where both
are directed to parsing XML documents. See, e.g., Spec. ,r,r 65-129; Lal
Abstract. Appellants further contend that Lal's tags "could not be used to
generate a 'cutting position list' since the each set of tags only designates the
beginning and ending of a single element within the programming code."
Reply Br. 3. However, Appellants have merely advanced that bare
allegation without providing sufficient explanation such that we are
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persuaded of error in the Examiner's reasoning to the contrary (Final Act. 6-
7).
With respect to Appellants' contention that each tag surrounds a
single value, such as "Richard Light," Appellants have not sufficiently
explained how the claims reflect this alleged distinction so as to exclude the
Examiner's interpretation that pairs of tags may surround text having
different values; e.g., a start value of "Richard" and an end value of "Light."
Ans. 3. Furthermore, we have agreed with the Examiner's alternate
explanation of how Lal discloses a plurality of stored values in the
"Address" field, supra, and Appellants do not dispute that different data tag
elements (e.g., "street" and "city") correspond to different values. See Final
Act. 2; App. Br. 10. Accordingly, we do not find persuasive Appellants'
contention that the claimed invention is not disclosed by Lal due to
Appellants' proffered interpretation of "value."
For the above-described reasons, we are not persuaded by Appellants'
contention that Lal fails to disclose Appellants' claimed start tag and an end
tag, which define start and end values that correspond to different values of
the plurality of stored values, where the stored values represent actual data
stored in a particular field of the database. Accordingly, we sustain the
Examiner's rejection of claim 1. Appellants do not present separate
patentability arguments for independent claims 7, 13, and 18, or for
dependent claims 2---6, 14--17, 19, and 20, each of which recites limitations
commensurate with the above-emphasized limitations recited in claim 1.
App. Br. 12. Accordingly, we sustain the Examiner's anticipation rejection
of claims 1-3, 5-9, 11-14, and 16-19. See 37 C.F.R. §4I.37(c)(l)(iv).
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Obviousness
Appellants assign error to the Examiner's rejection of claims 4---6, 10-
12, 15, and 20 under pre-AIA 35 U.S.C. § 103(a) as being obvious over the
combination of Lal, Lee, and Cheng for failing to teach or suggest the
claimed invention. 3 The issue raised by Appellants is whether Cheng
teaches or suggests an "occurrence counter in which the order of description
of the unit subtree in the structures document is registered," as set forth in
claims 4, 10, 15, and 20. App. Br. 13; Reply Br. 3.
The Examiner's rejection relies upon the combined teachings or
suggestions of Lal and Cheng. The Examiner relies upon Lal for the
teaching or suggestion of a generation of a subtree data list including a
range-defining pair in which a start position and an end position of the unit
subtree are associated with each other. Final Act. 18. The Examiner states
that although the occurrence counter feature is not taught by Lal, Cheng
teaches or suggests such a feature in combination with the teachings or
suggestions of Lal. Id. The Examiner finds that Cheng teaches or suggests
this through Cheng's "tag counting system ... [having] a counter for the
number of exist[ing] tags." Id. at 19. The Examiner finds that Cheng stores
a counter of tags for each element of an XML document structure tree. Id.
The Examiner finds the combination of Cheng and Lal would be combined
3 As noted by Appellants (App. Br. 13), the Examiner does not rely on Lee
for any teachings. Final Act. 18-20. Appellants do not allege any error
thereby, however, and a rejection may be sustained based on the teachings of
less than all named references where, as in the present case, the thrust of the
rejection is unchanged. In re Kronig, 539 F.2d 1300, 1302---03 (CCPA
1976).
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to teach or suggest the claimed invention because it would produce a more
useful positioning information. Id.
Appellants contend that Cheng "is counting a 'start count' and an 'end
count,"' and does not teach or suggest counting unit subtrees. App. Br. 13.
Appellants further state, "although Ch[ e ]ng may store counters in
conjunction with positioning information, the counters of Ch[ e ]ng are not
necessarily 'identifying the unit subtree ... and the index in the value and
base partitions."' Reply Br. 3.
Appellants' contentions are unpersuasive. The Examiner has applied
the teachings or suggestions of Chang of a counter to store the order of
description in an index, where the index stores positions of elements
including subtrees. Ans. 4. The Examiner cites Lal, not Cheng, for the
teaching or suggestion of generating and identifying unit subtree structures,
including "identifying the ... unit subtree and the index in the value and
base partitions." Final Act. 8-9. This "identifying" limitation is present in
claims 3, 9, 14, and 19, which were rejected by the Examiner as being
anticipated by Lal. Ans. 8-9, 14, 15-17. Appellants do not contest the
Examiner's finding that Lal discloses that limitation. App. Br. 12. For
claims 4---6, 10-12, 15, and 20, the Examiner's rejection is based upon what
the combination of Lal and Cheng would teach or suggest to one having
ordinary skill in the art. One cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co.,
800 F.2d 1091 (Fed. Cir. 1986). Appellants have failed to present
persuasive reasoning to show error in the Examiner's finding that the
combination of Lal and Cheng teaches or suggests the claim limitations at
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issue. Accordingly, we sustain the Examiner's obviousness rejection of
claims 4--6, 10-12, 15, and 20.
CONCLUSIONS
(1) We conclude that Appellants have not shown that the Examiner
has erred in rejecting claims 1-20 on the ground of nonstatutory double
patenting as being unpatentable over claims 1-10 of U.S. Patent 8,856,183.
(2) We conclude that Appellants have not shown that the Examiner
has erred in rejecting claims 1-3, 5-9, 11-14, and 16-19 under pre-AIA
35 U.S.C. § 102(b) as being anticipated by Lal.
(3) We conclude that Appellants have not shown that the Examiner
has erred in rejecting claims 4--6, 10-12, 15, and 20 under pre-AIA
35 U.S.C. § 103(a) as being obvious over the combination of Lal, Lee, and
Cheng.
DECISION
We AFFIRM the Examiner's rejections of claims 1-20 on the ground
of nonstatutory double patenting. We AFFIRM the Examiner's rejections of
claims 1-3, 5-9, 11-14, and 16-19 under pre-AIA 35 U.S.C. § 102(b). We
AFFIRM the Examiner's rejections of claims 4--6, 10-12, 15, and 20 under
pre-AIA 35 U.S.C. § 103(a). Accordingly, the rejection of claims 1-20 is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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