Ex Parte SluimanDownload PDFBoard of Patent Appeals and InterferencesApr 29, 200910285990 (B.P.A.I. Apr. 29, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte HARM SLUIMAN ____________________ Appeal 2008-4204 Application 10/285,990 Technology Center 2100 ____________________ Decided:1 April 29, 2009 ____________________ Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and THU A. DANG, Administrative Patent Judges. DANG, Administrative Patent Judge. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 CFR § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Data (electronic delivery). Appeal 2008-4204 Application 10/285,990 2 DECISION ON APPEAL Appellant appeals the Examiner’s final rejection of claims 1-9 under 35 U.S.C. § 134 (2002). We have jurisdiction under 35 U.S.C. § 6(b) (2002). We affirm. I. STATEMENT OF THE CASE A. INVENTION According to Appellant: [A]n aspect of the invention is a computer readable medium containing computer executable instructions for parsing program statements which when executed by a processor, cause the processor to instantiate a root object having a list of all permissible initial tokens for a program statement and, where an initial token in the program statement is represented in the list, instantiate a subsequent object having a list of all permissible subsequent tokens which may follow the initial token. (Spec. 26, ll. 4-13.) B. ILLUSTRATIVE CLAIM Claims 1 and 9 are the only independent claims under appeal. Appellant does not provide separate arguments for claims 1 and 9 (App. Br. 5-7) or dispute the Examiner’s finding that “[c]laim 9 … recites the same limitations as those of the computer readable storage medium claim 1” (Ex. Ans. 4-5). We therefore conclude that claims 1 and 9 are argued as group by Appeal 2008-4204 Application 10/285,990 3 Appellant and select claim 1 to decide this appeal with respect to those claims. See 37 C.F.R. 41.37(c)(1)(vii). Claim 1 is reproduced below. 1. A computer readable storage medium containing computer executable instructions for parsing program statements which when executed by a processor, cause said processor to: receive a program statement in a first programming language by a parser and create a tokenized program statement having an ordered sequence of tokens; examine said tokenized program statement and associate objects with selected ones of said tokens, said selected ones of said tokens identified as root tokens and said objects embodying a subset of a complete grammar of a domain; instantiate an object having a first list of all permissible initial tokens for the program statement upon detection of a selected one of said root tokens; and where an initial token in said program statement is represented in said first list as another root token, instantiate a subsequent object having a second list of all permissible subsequent tokens which may follow said initial token where said subsequent object causes said first list to be reinitialised. C. REJECTIONS The Examiner relies upon the following prior art in rejecting the claims on appeal: Davidson US 6,083,276 Jul. 4, 2000 Osborne US 2002/0026308 A1 Feb. 28, 2002 Appeal 2008-4204 Application 10/285,990 4 Saulpaugh US 6,598,052 B1 Jul. 22, 2003 Bhatt US 6,799,184 B2 Sep. 28, 2004 Claims 1-4, 8, and 9 stand rejected under 35 U.S.C. § 102(e) as anticipated by Osborne. Claims 1-9 stand rejected under 35 U.S.C. § 102(e) as anticipated by Saulpaugh. Claim 5 stands rejected under 35 U.S .C. § 103(a) as unpatentable over Osborne in view of Bhatt. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Osborne in view of Bhatt and further in view of Davidson. II. ISSUES Has Appellant shown the Examiner erred in finding: 1) Osborne discloses the limitation of “examine said tokenized program statement and associate objects with selected ones of said tokens” (claim 1)? 2) Saulpaugh discloses the limitation of “examine said tokenized program statement and associate objects with selected ones of said tokens” (claim 1)? III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Appeal 2008-4204 Application 10/285,990 5 Osborne 1) Osborne compares the tokens of a parsed statement against the nodes of a syntax tree representing all possible syntax options (Abstract). 2) The syntax tree nodes represent arguments and operations of a computer program (p. 1, ¶ 4) and are “implemented as objects” (p. 2, ¶ 25). 3) The parsed statement is validated by selecting nodes which match the tokens and provide the shortest route between the root and end nodes of the syntax tree (p. 3, ¶¶ 42-43). Saulpaugh 4) Saulpaugh compiles a series of grammatical-form tokens of an object-oriented database into intermediate-form entries of that object- oriented database (Abstract). 5) “[T]he intermediate form comprises an array of entry objects as would be found in the object-oriented database. The entry objects are intelligent: they encapsulate data with methods for manipulating that data. The methods include creating a database entry, creating a property associated with an entry, creating an attribute associated with an entry or property, querying the last entry, property, or attribute created, and finalizing entry storage.” (col. 2, ll. 53-61.) 6) “The tokens cause the compiler to recognize the grammatical form and create StaticEntry, StaticProperty, and StaticAttribute objects that together comprise the intermediate form of the database.” (col. 19, ll. 12-15.) Appeal 2008-4204 Application 10/285,990 6 7) “A StaticEntry object contains references to its parent, siblings, and children, as well as its properties (StaticProperty instances) and attributes (StaticAttribute instances).” (col. 18, ll. 30-34.) 8) “TREE” and “ENTRY” tokens of the grammatical form are each compiled into a respective “StaticEntry” object (col. 19, l. 37 – col. 20, l. 29) and define the tree root and tree sub-hierarchy of the database, respectively, such that a “TREE” token has child tokens, e.g., ENTRY child1-2 of FIG. 7, and an “ENTRY” token has grandchild tokens, e.g., ENTRY grandchild1-3 of FIG. 7 (col. 14, ll. 13-64). IV. PRINCIPLES OF LAW 35 U.S.C. § 102 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) (citation omitted). “Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (citations omitted). “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.” Id. (citations omitted). “[T]he PTO gives claims their ‘broadest reasonable interpretation.’” In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 Appeal 2008-4204 Application 10/285,990 7 F.3d 1367, 1372 (Fed. Cir. 2000)). “[L]imitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). Our reviewing court has repeatedly warned against confining the claims to specific embodiments described in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005). It is the Appellant’s burden to precisely define the invention. See In re Morris 127 F.3d 1048, 1056 (Fed. Cir. 1997). V. ANALYSIS 35 U.S.C. § 102 Claims 1-4, 8, and 9 as anticipated by Osborne In the Appeal Brief, Appellant argues that Osborne does not disclose “an examination of a tokenized program statement and associating objects with selected ones of said tokens” and that “Osborne, in contrast, teaches that nodes (i.e., junction and data nodes) are implemented as objects” (App. Br. 5-6). However, the Examiner finds, “As acknowledged above by the Appellant, Osborne at least explicitly teaches ‘nodes (i.e., junction and data nodes) are implemented as objects ... ’” and “[p]er the plain language of claim 1, lines 6-7, Osborne explicitly discloses ‘examine said tokenized program statement and associate objects with selected ones of said tokens’” (Ex. Ans. 9; Examiner’s emphasis). Accordingly, an issue we address on this Appeal is whether Osborne’s use of syntax tree nodes (FF 1) discloses Appeal 2008-4204 Application 10/285,990 8 the limitation of “examine said tokenized program statement and associate objects with selected ones of said tokens” (claim 1). We begin our analysis by giving the claims their broadest reasonable interpretation. See Bigio, 381 F.3d at 1324. Furthermore, our analysis will not read limitations into the claims from the Specification. See Van Geuns, 988 F.2d at 1184. It is the Appellant’s burden to precisely define the invention. See Morris, 127 F.3d at 1056. Claim 1 does not define “objects.” Contrary to Appellant’s contention, the plain meaning of “objects” does not exclude syntax tree nodes. Further, even assuming arguendo the recited “objects” are “object[s] of a class, where ‘object’ and ‘class’ have their ordinary meaning in the object-oriented programming parlance” (Spec. 8, ll. 13-15), Appellant does not show or even offer evidence that this technical meaning of “objects” excludes syntax tree nodes. We, therefore, find Appellant’s argument unpersuasive. In addition, we agree with the Examiner’s finding that Osborne discloses the limitation of “examine said tokenized program statement and associate objects with selected ones of said tokens” (claim 1). Osborne validates a syntactical statement by comparing the nodes, which represent arguments and operations of a computer program (FF 2), against stored tokens of the statement (FF 1). Thus, an artisan would have understood the recited “objects” as reading on Osborne’s nodes (representing such arguments and operations), and would have understood the recited “associate objects with selected … tokens” (claim 1) as reading on Appeal 2008-4204 Application 10/285,990 9 Osborne’s comparison of the nodes and tokens. Further, Osborne’s nodes are implemented as objects (FF 2). Thus, an artisan would also have understood the recited “associate objects with selected … tokens” (claim 1) as reading on the disclosed relationship between the objects and tokens, which results because Osborne’s nodes are both implemented as objects and compared against tokens. For the above reasons, Appellant fails to show that the Examiner erred in finding that Osborne discloses the limitation of “examine said tokenized program statement and associate objects with selected ones of said tokens” (claim 1). Appellant further argues that “Osborne also failed to disclose objects embodying a subset of a complete grammar of a domain. Applicant’s invention is directed to a parser which supports multiple domains” (App. Br. 6). This argument is not commensurate with the scope of claim 1. That is, claim 1 is neither directed to nor recites a “parser which supports multiple domains,” as Appellant contends.2 Rather, claim 1 is directed to computer instructions that cause a processor to “receive a program statement in a first programming language by a parser” (claim 1). We therefore find this argument unpersuasive. 2 We note that claim 9, which Appellant does not argue separately from claim 1, and which falls with claim 1, is directed to a parser. However, claim 9 does not recite a parser supporting multiple domains. Appeal 2008-4204 Application 10/285,990 10 In addition, we agree with the Examiner’s findings, which the Appeal Brief does not dispute.3 The Examiner finds that Osborne discloses “said objects embodying a subset of a complete grammar of a domain” (claim 1) by way of the subtrees of FIG. 2A, and more particularly by way of nodes “250-B-270-260- ... , or 250-E-270-260- ... , or 250-G-270-H-270-J-270- 260- ... , or 250-G-270-I-270-J-270-260- ... ” (Ex. Ans. 10). Each subtree of Osborne embodies a portion of the syntax tree, and thereby embodies a portion of all possible syntax options (FF 1). We find an artisan would have understood the recited “said objects embodying a subset of a complete grammar of a domain” (claim 1) as reading on the subtrees of Osborne’s FIG. 2A. Appellant lastly argues, “The Osborne reference also failed to disclose . . . the instantiation of a subsequent object having a second list of all permissible subsequent tokens where said subsequent object causes said first list to be reinitialised.” (App. Br. 6.) This argument merely restates the limitation of “instantiate a subsequent object having a second list of all permissible subsequent tokens which may follow said initial token where said subsequent object causes said first list [of all permissible initial tokens] 3 Appellant repeatedly fails to specify the Examiner’s error. See 37 C.F.R. § 1.111(b) (2006) (“The reply … must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action[.]”). Instead, Appellant merely summarizes Osborne (App. Br. 5-6) or Saulpaugh (App. Br. 6-7) and alleges they do not disclose particular features of the invention. Further, though several of Appellant’s arguments are addressed by the Examiner’s Answer (Ex. Ans. 8-14), Appellant did not file a Reply Brief. Appeal 2008-4204 Application 10/285,990 11 to be reinitialised” (claim 1). We, therefore, find this argument unpersuasive. In addition, we agree with the Examiner’s related findings, which the Appeal Brief does not dispute. The Examiner finds that Osborne “instantiate[s] a subsequent object having a second list of all permissible subsequent tokens” by way of “instantiating a subsequent Subtree E having a second list of all permissible subsequent tokens as (275-K-280) or (275-L- 280)” (Ex. Ans. 11); and finds that “said subsequent object causes said first list [of all permissible initial tokens] to be reinitialized” (claim 1) because Osborne’s “subtree or branches relink to (reinitialize) the main tree” (Ex. Ans. 11). We similarly find an artisan would have understood the recited “first list” as reading on respective nodes of Osborne’s subtrees B, E, F, and G, the recited “second list” as reading on nodes K and L of subtree E, and the recited “instantiate a subsequent object having a second list of all permissible subsequent tokens which may follow said initial token where said subsequent object causes said first list [of all permissible initial tokens] to be reinitialised” (claim 1) as reading on selection of Osborne’s subtree E. In view of the above, Appellant fails to show that the Examiner erred in rejecting claims 1-4, 8, and 9 (claims 2-4, 8, and 9 falling with claim 1) under 35 U.S.C. § 102(e) as anticipated by Osborne. Claims 1-9 as anticipated by Saulpaugh In the Appeal Brief, Appellant argues: Appeal 2008-4204 Application 10/285,990 12 Saulpaugh failed to disclose examining a tokenized program statement and associating objects with selected ones of said tokens as in Applicant’s invention. … Saulpaugh disclosed that the textual form of [an object-oriented] database is parsed into a series of tokens which are compiled into a plurality of entries … expressed in intermediate form[,] which in one form comprises an array of entry objects as found in the object- oriented database . . . (App. Br. 7). However, the Examiner finds that Saulpaugh “associate[s] objects with selected … tokens” (claim 1) in the decoding and compiling steps 756, 758, 761, 762 of FIG. 10 (Ex. Ans. 5; citing col. 19, l. 37 – col. 20, l. 12). The Examiner also cites Saulpaugh’s “TREE” and “ENTRY” tokens (Ex. Ans. 5), which are compiled into “StaticEntry” objects (FF 8). Accordingly, an issue we address on this Appeal is whether Saulpaugh’s compiling of “StaticEntry” objects discloses the limitation of “examine said tokenized program statement and associate objects with selected ones of said tokens” (claim 1). As discussed above regarding Osborne, claim 1 does not define “objects.” Contrary to Appellant’s contention, the plain meaning of “objects” does not exclude the intermediate-form entries of Saulpaugh. Further, even assuming arguendo the term “object” is given its “ordinary meaning in the object-oriented programming parlance” (Spec. 8, ll. 13-15), this technical meaning does not exclude Saulpaugh’s “StaticEntry” objects, because they are “entry objects as would be found in the object-oriented database” and “encapsulate data with methods for manipulating that data” (FF 5). Moreover, “A StaticEntry object contains references to its parent, Appeal 2008-4204 Application 10/285,990 13 siblings, and children, as well as its properties (StaticProperty instances) and attributes (StaticAttribute instances)” (FF 7). We, therefore, find Appellant’s argument unpersuasive. In addition, we agree with the Examiner’s finding that Saulpaugh discloses the limitation of “examine said tokenized program statement and associate objects with selected ones of said tokens” (claim 1). Saulpaugh compiles a series of grammatical-form tokens into “StaticEntry” objects (FF 4, 6, and 8) having the above-noted qualities of an object (FF 5 and 7). We find an artisan would have understood the recited “objects” as reading on Saulpaugh’s “StaticEntry” objects. Further, we find an artisan would have understood that Saulpaugh, by compiling the grammatical-form tokens into “StaticEntry” objects, “examine[s a] tokenized program statement” and “associates” those “StaticEntry” objects with tokens. For the above reasons, Appellant fails to show that the Examiner erred in finding that Saulpaugh discloses the limitation of “examine said tokenized program statement and associate objects with selected ones of said tokens” (claim 1). Appeal 2008-4204 Application 10/285,990 14 Appellant further argues, “Saulpaugh also failed to disclose Applicant’s invention where selected ones of tokens are identified as root tokens and said objects embody a subset of a complete grammar of a domain.” (App. Br. 7.) This argument merely restates the limitation of “said selected ones of said tokens identified as root tokens and said objects embodying a subset of a complete grammar of a domain” (claim 1). We therefore find this argument unpersuasive. In addition, we agree with the Examiner’s related findings, which the Appeal Brief does not dispute. The Examiner finds the recited “said selected ones of said tokens identified as root tokens” is disclosed by block 602 of FIG. 7 (Ex. Ans. 5). Further, the Examiner finds the recited “said objects embodying a subset of a complete grammar of a domain” is disclosed by Saulpaugh at col. 19, ll. 1-23 (Ex. Ans. 5). In Saulpaugh, block 602 represents the “StaticEntry” object of a compiled “TREE” token, which defines the tree root of the object-oriented database (FF 8). The cited portion of Saulpaugh (col. 19, ll. 1-23) states the “StaticEntry” objects are one three objects “that together comprise the intermediate form of the [object-oriented] database” (FF 6). We find an artisan would have understood the recited “said selected ones of said tokens identified as root tokens” (claim 1) as reading on Saulpaugh’s “TREE” tokens, and understood the recited “said objects embodying a subset of a complete grammar of a domain” (claim 1) as reading on the “StaticEntry” objects comprising part of the database’s intermediate form. Appeal 2008-4204 Application 10/285,990 15 Appellant lastly argues, “Saulpaugh also fails to show that the instantiation of a subsequent object having a second list of all permissible subsequent tokens where said subsequent object causes said first list to be reinitialised. Saulpaugh stated that developers should design a plug-in when grammar modifications are required” (App. Br. 7). The language of claim 1 does not preclude the use of a plug-in. We, therefore, find this argument unpersuasive. In addition, we agree with the Examiner’s related findings, which the Appeal Brief does not dispute. The Examiner finds the limitation of “instantiate a subsequent object having a second list of all permissible subsequent tokens” (claim 1) is disclosed by Saulpaugh’s compiling of the “ENTRY” token at step 756 (Ex. Ans. 5; citing col. 19, l. 46 – col. 20, l. 19). Further, the Examiner finds the limitation of “said subsequent object causes said first list [of all permissible initial tokens] to be reinitialized” (claim 1) is disclosed by Saulpaugh’s compiling of properties and attributes at steps 762, 763 (Ex. Ans. 6). We find an artisan would have understood the “StaticEntry” object of an “ENTRY” token as being associated with the ENTRY grandchild1-3 tokens (FF 8), and as thereby disclosing the recited “subsequent object having a second list of all permissible subsequent tokens” (claim 1). Further, an artisan would have understood the “StaticEntry” object of a “TREE” token as being associated with the corresponding ENTRY child1-2 tokens (FF 8), and as thereby disclosing the recited “object having a first list of all permissible initial tokens” (claim 1), Appeal 2008-4204 Application 10/285,990 16 where compilation of each ENTRY child1-2 token into a “subsequent object causes said first list to be reinitialised.” (claim 1). In view of the above, Appellant fails to show that the Examiner erred in rejecting claims 1-9 (claims 2-8 falling with claim 1) under 35 U.S.C. § 102(e) as anticipated by Saulpaugh. 35 U.S.C. § 103 Claim 5 as unpatentable over Osborne and Bhatt As to claim 5, Appellant argues “the combination suggested by the Examiner is not fairly suggested by the references;” “the references cannot be combined to achieve Applicant’s invention;” and “the Examiner has attempted to use hindsight reconstruction, given the Applicant’s disclosure, to supply what the references neither teach nor suggest” (App. Br. 8). However, the Examiner finds that an artisan would have been motivated to combine Osborne with Bhatt “to provide a means to process/transform/map the XML elements faster as suggested by Bhatt (e.g., column 6, lines 30-38; column 13, line 60 - column 14, lines 11)” (Ex. Ans. 6). Appellant does not specify the Examiner’s error in combining Osborne and Bhatt. We, therefore, find these arguments unpersuasive. Further, Appellant provides no argument that the added limitation of claim 5 is not disclosed by Osborne and Bhatt. Rather, Appellant merely repeats its arguments against the rejection of claim 1, as anticipated by Osborne, stating that “[t]he combination of Osborne and Bhatt fails to disclose Applicant’s invention which, examines a tokenized program Appeal 2008-4204 Application 10/285,990 17 statement and associates objects with selected ones of the tokens where selected ones of said tokens are identified as root tokens and said objects embodying a subset of a complete grammar of a domain;” and stating that “[t]he combination of Osborne and Bhatt is incapable of supporting multiple domains as disclosed in Applicant’s invention” (App. Br. 8). Like the arguments addressed with respect to claim 1, these arguments are incommensurate with the scope of the claimed invention and/or pertain to limitations disclosed by Osborne. We, therefore, find these arguments unpersuasive. In view of the above, Appellant fails to show the Examiner erred in rejecting claim 5 under 35 U.S.C. § 103(a) over Osborne in view of Bhatt. Claims 6 and 7 as unpatentable over Osborne, Bhatt, and Davidson As to claims 6 and 7, Appellant argues “the combination suggested by the Examiner is not fairly suggested by the references;” “the references cannot be combined to achieve Applicant’s invention;” and “the Examiner has attempted to use hindsight reconstruction, given the Applicant’s disclosure, to supply what the references neither teach nor suggest (App. Br. 9). However, the Examiner finds it would have been obvious “to combine the teaching of Davidson (a class data structure with a list of classes, element mapper, and mapping information) into that of Osborne and Bhatt (list of unique identifiers associated with tokens) by having each class associated with one unique identifier;” and further finds an artisan “would have been motivated to do so to provide a means to process/transforrn/map Appeal 2008-4204 Application 10/285,990 18 the XML elements faster as suggested by Bhatt (e.g., column 6, lines 30-38; column 13, line 60 – column 14, lines 11).” Appellant does not specify the Examiner’s error in combining Osborne, Bhatt, and Davidson. We, therefore, find these arguments unpersuasive. Further, Appellant provides no argument that the added limitations of claims 6 and 7 are not disclosed by Osborne, Bhatt, and Davidson. Rather, Appellant merely repeats the arguments against the rejection of claim 1, as anticipated by Osborne, stating the references do not disclose “examining a tokenized program statement and associating objects with selected ones of the tokens where selected ones of said tokens are identified as root tokens and said objects embodying a subset of a complete grammar of a domain” (App. Br. 9); and stating the combination “is incapable of supporting multiple domains as disclosed in Applicant's invention” (App. Br. 10). Like the arguments addressed with respect to claim 1, these arguments are incommensurate with the scope of the claimed invention and/or pertain to limitations disclosed by Osborne. We, therefore, find these arguments unpersuasive. In view of the above, Appellant fails to show that the Examiner erred in rejecting claims 6 and 7 under 35 U.S.C. § 103(a). CONCLUSIONS OF LAW (1) Appellant has not shown that the Examiner erred in finding that claims 1-4, 8, and 9 are anticipated by Osborne. Appeal 2008-4204 Application 10/285,990 19 (2) Appellant has not shown that the Examiner erred in finding that claims 1-9 are anticipated by Saulpaugh. (3) Appellant has not shown that the Examiner erred in finding that claim 5 is unpatentable over Osborne and Bhatt. (4) Appellant has not shown that the Examiner erred in finding that claims 6 and 7 are unpatentable over Osborne, Bhatt, and Davidson. (5) Claims 1-9 are not patentable. DECISION We affirm the Examiner’s decision rejecting claims 1-9 under 35 U.S.C. § 102(e) and the Examiner’s decision rejection claims 5-7 under 35 U.S.C. § 103(a). 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 erc IBM Corporation Intellectual Property Law Department 11400 Burnet Road Austin, TX 78758 Copy with citationCopy as parenthetical citation