Ex Parte Vandersluis

Board of Patent Appeals and Interferences

Feb 23, 2010

09900079 (B.P.A.I. Feb. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KIRSTAN ANDERSON VANDERSLUIS
____________

Appeal 2009-001088
Application 09/900,079
Technology Center 2100
____________

Decided: February 24, 2010
____________

Before HOWARD B. BLANKENSHIP, DEBRA K. STEPHENS, and
JAMES R. HUGHES, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-29, which are all the claims in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
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Invention
Appellant’s invention relates to data format conversion. The
invention relates in particular to converting data from a first hierarchical data
scheme (e.g., relational database) to a second hierarchical data scheme (e.g.,
XML (eXtensible Markup Language) file). See Spec. 1-2.

Representative Claim
1. A system for converting data in a first hierarchical data
scheme into a second hierarchical data scheme, comprising:
a template defining the second hierarchical data scheme,
wherein a hierarchical data scheme is a scheme that groups data and
its context;
a dynamic data generation module contained in the template;
and
a data source, in communication with the dynamic data
generation module, containing data in the first hierarchical data
scheme.

Prior Art
Povilus 5,740,425 Apr. 14, 1998
Krupa 2002/0156811 A1 Oct. 24, 2002
Fernandez 6,604,100 B1 Aug. 5, 2003
Prompt 6,985,905 B2 Jan. 10, 2006

Examiner’s Rejections
Claims 1-12 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
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Claims 1-3, 5-11, and 13-17 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Fernandez.
Claims 4 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fernandez and Prompt.
Claims 18-23 and 25-29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fernandez and Krupa.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fernandez, Krupa, and Povilus.

ANALYSIS -- § 101
“The four categories [of § 101] together describe the exclusive reach
of patentable subject matter. If a claim covers material not found in any of
the four statutory categories, that claim falls outside the plainly expressed
scope of § 101 even if the subject matter is otherwise new and useful.” In re
Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007).
The Examiner submits that claims 1 through 12 are directed to non-
statutory subject matter because the body of base claim 1 merely contains a
dynamic data generation module containing data in the first hierarchical data
schema, which can be a software module (or modules). The Examiner
concludes that claim 1 is directed to software per se, or a computer listing
per se, which is not within a statutory class. Ans. 3-4.
Appellant argues that claim 1 recites a data source, which is a piece of
computer hardware. In addition, according to Appellant, the claim states
that the data source is “in communication,” which means there is a
communication system. App. Br. 9.
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The Examiner responds that claims 1 through 12 claim no “definitive”
hardware components. In the Examiner’s view, the “system” is broad
enough to read on a mere software program. Ans. 13-14.
We note that the more abstract, or broader, embodiment of the
described invention refers to data source (or data store) 26 (Fig. 1) as a
source and a store of data with respect to the dynamic data generation
module 24. Spec. 6:1-21. Further, the dynamic data generation module 24
queries the data source 26 for data stored therein. Id.
The Examiner’s statement of the § 101 rejection does not address the
“data source” of claim 1. The responsive arguments in the Answer do not
directly address the “data source,” but allege there are no “definitive”
hardware components in the claims. The Answer lacks an explanation in
support of why the artisan would consider the “data source” of claim 1 as
not requiring any type of hardware component.
We conclude that the rejection has not demonstrated that at least the
“data source” in communication with the dynamic data generation module
represents no more than software per se or a computer listing per se.
Moreover, if the “data source” includes hardware elements, the “dynamic
generation module” of claim 1 must also be supported by hardware, since
the module is “in communication with” the data source.
Because the rejection fails to show that the claims are directed to no
more than a computer program in the abstract, we cannot sustain the § 101
rejection of claims 1-12 as being directed to non-statutory subject matter.

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Claim Groupings
Based on Appellant’s arguments in the Appeal Brief and claim
dependencies, we will decide the appeal with respect to the rejections over
the prior art on the basis of claims 1, 13, 18, and 26. See 37 C.F.R.
§ 41.37(c)(1)(vii).

FINDINGS OF FACT
Fernandez
Fernandez describes a method for converting relational data to XML
(Extensible Markup Language). Abstract.
The invention includes “SilkRoute,” which Fernandez describes as a
tool that serves as middleware between a relational database server
(RDBMS) 110 (Fig. 1) and an application 120, accessing data over a
distributed network. Col. 3, ll. 10-24; col. 5, l. 64 - col. 6, l. 10.
Applications typically contact SilkRoute 100 (Fig. 1) to request data.
An application 120 only sees the virtual XML view, not the underlying
relational database. An application forms a query to request data. The
query-composer module 102 produces an executable query. Col. 5, ll. 11-
25.
The executable query is passed to the translator 104 (Fig. 1), which
may partition the executable query into one or more SQL queries (“a data-
extraction part”) and an XML template (“an XML-construction part”). Col.
5, ll. 26-36.
The SQL queries may then be sent to the RDBMS server 110 (Fig. 1),
which returns one tuple stream per each query. The XML generator module
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106 merges the tuple streams with the XML template and produces the XML
document, which is returned to the application 120. Col. 5, ll. 37-44.

PRINCIPLES OF LAW -- §§ 102 and 103
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GMBH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17
(1966).

ANALYSIS -- §§ 102 and 103
Claim 1
The Examiner finds claim 1 to be anticipated in the manner set out at
pages 4 and 5 of the Answer. Appellant argues that the “dynamic data
generation module” of Fernandez (XML generator 106) is not “contained in
the template” as recited in the claim.
Fernandez at column 5 (e.g., lines 26 through 44) appears to be quite
clear in describing the “XML template” as being passed to the XML
generator module (from translator 104). The generator module can then
merge the data provided by RDBMS sever 110 with the template, thus
producing the XML document that is returned to application 120.
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In view of the Examiner’s response at pages 14 and 15 of the Answer,
the finding that the XML generator 106 in Fernandez is “contained in the
template” appears to rest entirely on the depiction of SilkRoute 100 in
Figure 1 of the reference. For example, the Examiner submits that “it is easy
to see the XML Generator module 106 clearly contained within the XML
Template 100.” Ans. 15.
Fernandez, however, refers to “SilkRoute” 100 in Figure 1, rather than
“XML Template” 100. In view of the textual description of Figure 1, the
lettering “XML Template” does not refer to system (SilkRoute) 100, but
appears to refer to the template provided by translator 104 to XML generator
106. One arrow in Figure 1 represents an SQL query from translator 104 to
RDBMS 110. Another arrow represents the Tuple Stream from RDBMS
110 to XML generator 106. A third, curved arrow represents the XML
Template from translator 104 to XML generator 106, which needs both the
template and the tuple stream data to produce the XML document.
We thus agree with Appellant that Fernandez does not support the
finding that the XML generator 106 is contained in the template as recited in
claim 1. Moreover, the rejection fails to demonstrate that the artisan might
have considered the SilkRoute system itself as a “template” within the
meaning of claim 1.
We therefore cannot sustain the § 102 rejection of claim 1, nor that of
claims 2, 3, and 5 through 11, which depend from claim 1 and are rejected
on the same basis.

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Claim 13
The Examiner finds claim 13 to be anticipated by Fernandez.
Appellant argues that the reference does not describe a “dynamic template.”
Step (c) of claim 13 recites “executing” the dynamic template.
The Examiner’s response (Ans. 17) relies, perhaps, on considering
“SilkRoute” 100 to be the same as the XML template described by
Fernandez. As discussed in our review of the rejection of claim 1, the
SilkRoute tool has not been shown to be an XML template or any other sort
of template. We do not find any indication in Fernandez that the XML
template provided to XML generator 106 is executable, or contains any
executable code. Consistent with the Examiner’s indication at page 17 of
the Answer, Fernandez describes the template as being filled in (by XML
generator 106) with the results of the query (to RDBMS 110), which does
not require a dynamic template that is executed as recited in claim 13.
“[A]bsence from the reference of any claimed element negates
anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986). We are thus persuaded that the rejection fails to show
anticipation of claim 13. We cannot sustain the rejection of claim 13, nor
that of claim 14, which depends from claim 13 and is also rejected under
§ 102 over Fernandez.

Claims 18, 26
Independent claims 18 and 26 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Fernandez and Krupa.
In response to the rejection of claim 18, Appellant paraphrases
language of the claim, argues there is no suggestion that the XML
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construction part (XML template) is executable in Fernandez, and submits
that the addition of Krupa “does not solve this.” App. Br. 12. In response to
the rejection of claim 26, Appellant paraphrases language of claim 26 and
submits substantially the same argument as that in response to the rejection
of claim 18. See id. at 13.
However, neither of claim 18 or claim 26 recites or requires an
“executable” template.
We are thus not persuaded of error in the rejection of claims 18 or 26.
We refer to the Examiner’s findings in the Answer, and particularly to pages
17 through 19 of the Response to Arguments section. The Examiner cites
specific teachings in Fernandez and explains why the artisan would
recognize that the teachings with respect to “dynamic” generation and
processing of data meet the claim limitations.

Conclusion -- Prior Art Rejections
In view of the disposition of representative claims and the claim
dependencies, we do not sustain the § 102 rejection of claims 1-3, 5-11, and
13-17 over Fernandez. We sustain the applied § 103(a) rejections of claims
18-29. We do not sustain the § 103(a) rejection of claims 4 and 12, because
the claims depend from claim 1 and the § 103(a) rejection over Fernandez
and Prompt does not remedy the deficiencies in the § 102 rejection applied
against claim 1.

DECISION
The rejection of claims 1-12 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter is reversed.
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The rejection of claims 1-3, 5-11, and 13-17 under 35 U.S.C. § 102(e)
as being anticipated by Fernandez is reversed.
The rejection of claims 4 and 12 under 35 U.S.C. § 103(a) as being
unpatentable over Fernandez and Prompt is reversed.
The rejection of claims 18-23 and 25-29 under 35 U.S.C. § 103(a) as
being unpatentable over Fernandez and Krupa is affirmed.
The rejection of claim 24 under 35 U.S.C. § 103(a) as being
unpatentable over Fernandez, Krupa, and Povilus is affirmed.
Because we have sustained at least one ground of rejection against
claims 18-29, the Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED-IN-PART

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