Ex Parte Vincent

Patent Trial and Appeal Board

Apr 29, 2016

12797584 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121797,584 06/09/2010 Winchel Todd VINCENT III
23506 7590 05/03/2016
GARDNER GROFF GREENWALD & VILLANUEVA, PC
2018 POWERS FERRY ROAD
SUITE 800
ATLANTA, GA 30339
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.
3X01.l-012 lA 5088
EXAMINER
ROBINSON, GRETA LEE
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
05/03/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WINCHEL TODD VINCENT III
Appeal2014-005691
Application 12/797,584
Technology Center 2100
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1 and 3-26. We have jurisdiction under 35 U.S.C.
§ 6(b ). We affirm.
STATEMENT OF THE CASE
Appellant's invention normalizes schema so they conform to a
schema framework. Spec. i-f 3. Appellant's schemas define formats for
markup languages, such as eXtensible Markup Language (XML).
Id. Appellant's schema framework are rules and best practices that a user
follows when creating schema. Id. i-f 5. By following these rules, users can
produce reusable schemas with less time and effort. Id. Claim 1 is
illustrative:
1. An apparatus for normalizing markup language
schema, comprising:
logic configured to receive a markup language schema and
to determine whether the markup language schema conforms to
one or more rules of a schema framework rule set; and
wherein if the logic determines that the markup language
schema does not conform to the one or more rules, then the logic
transforms the markup language schema into a normalized
markup language schema that does conform to the one or more
rules of the schema framework,
wherein the markup language schema framework is
embodied on a computer system.
THE REJECTIONS
The Examiner rejected claims 1 and 3-26 under 35 U.S.C. § 101 as
directed to ineligible subject matter. Final Act. 2. 1
The Examiner rejected claims 1, 14-17, and 19-23 under 35 U.S.C.
§ 102(b) as anticipated by Schroeder (US 2002/0099735 Al; July 25, 2002).
Final Act. 3-4.
1 Throughout this opinion, we refer to (1) the Final Rejection mailed May
30, 2013 ("Final Act."); (2) the Appeal Brief filed November 29, 2013
("App. Br."); (3) the Examiner's Answer mailed February 13, 2014
("Ans."); and (4) the Reply Brief filed April 11, 2014 ("Reply Br.").
2
The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Schroeder and Hogg (US 2003/0105858 Al; June 5,
2003). Final Act. 4-5.
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Schroeder and Atkinson (US 2004/0098667 Al; May 20,
2004). Final Act. 5-6.
THE§ 101 REJECTION
Contentions
The Examiner finds that claim 1 is directed to software per se, which
is non-statutory. Final Act. 2. According to the Examiner, the Specification
does not limit a "system" to hardware elements. Id.
Appellant argues that claim 1 's "computer system" is hardware, not
software. App. Br. 5. According to Appellant, the Specification discloses
that repository 120 stores schema and resides on hardware. Id.
Issue
Has the Examiner erred in rejecting claims 1 and 3-26 by finding that
the apparatus is directed to ineligible subject matter under § 101?
Analysis
We sustain the Examiner's§ 101 rejection of claim 1. We agree with
the Examiner that claim 1 encompasses solely software when interpreted in
light of the Specification, and is, therefore, ineligible under § 101.
Final Act. 2.
"Except for process claims, 'the eligible subject matter must exist in
some physical or tangible form."' Allvoice Devs. US, LLC v. Microsoft
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Corp., 612 F. App'x. 1009, 1017 (Fed. Cir. 2015) (non-precedential)
(quoting Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d
1344, 1348 (Fed. Cir. 2014)).
Regarding this physical or tangible form, Appellant argues that the
recited "computer system" should be interpreted as hardware because the
system includes a hardware repository. App. Br. 5. Even assuming, without
deciding, that this is the case, claim 1 merely requires embodying on the
computer system the "markup language schema framework" that the
affirmatively-recited logic receives. The claim does not require that the
affirmatively-recited logic be on the computer system, and the claim does
not affirmatively recite either the markup language schema framework or the
markup language schema framework rule set. In fact, claim 1 does not even
provide express antecedent basis for the "markup language schema
framework" (as opposed to antecedent basis for the markup language
"schema framework rule set").2 In short, claim 1 does not specify any
relationship between the "computer system" and the recited "apparatus" or
its logic. Accordingly, the recited computer system cannot confer the
requisite physical or tangible form to make the claimed subject matter
eligible for patent protection.
Moreover, although claim 1 's preamble recites an "apparatus," this
does not end the patent-eligibility analysis. See In re Ferguson, 558 F.3d
1359, 1364 (Fed. Cir. 2009). Claim 1 must be construed in its entirety. And
2 We leave to the Examiner to determine whether claims 1 and 3-26 should
be rejected under 35 U.S.C. § 112, second paragraph as being indefinite, or
whether the express recitation of "a schema framework rule set" provides
sufficient implied antecedent basis for the recitation of "the markup
language schema framework."
4
apart from the above-mentioned computer system, the only element in the
body of the claim is "logic."
Appellant does not point to, nor do we find, any definition of "logic"
to so limit our interpretation apart from its plain and ordinary meaning. See
App. Br. 5; Reply Br. 1-2.
To be sure, in the context of computer hardware, one plain meaning of
"digital logic" includes the digital circuits that perform Boolean algebra.
TecSec, Inc. v. Int'l Bus. Machs. Corp, 731F.3d1336, 1348 (Fed. Cir.
2013). However, in programming, one plain meaning for "logic" is "the
assertions, assumptions, and operations that define what a given program
does." MICROSOFT COMPUTER DICTIONARY 272 (4th ed. 1999). Because the
Specification does not limit the context to hardware circuits (see, e.g.,
Spec. i-f 15), a broad, but reasonable, interpretation of "logic" encompasses
both meanings.
So by the plain meaning of "logic" in the context of this claim, at least
one embodiment falling within the scope of claim l can exist solely in
software. Specifically, claim 1 does not recite that the logic is embodied on
any medium. Nor does claim 1 recite that the logic includes any structural
elements. Rather, the recited logic is a single, functionally claimed
element. 3 Therefore, the breadth of claim 1 does not preclude an
embodiment solely directed to software per se.
3 Should Appellant amend the claim, we leave to the Examiner to consider
whether such amendments comply with the enablement requirement of
35 U.S.C. § 112, first paragraph or whether the amended claim is directed to
a single means. See Manual of Patent Examining Procedure (MPEP)
§ 2164.08(a), Rev. 07.2015, 9th ed., (Nov. 2015) (providing instructions to
Examiners in the case where a means is not recited in combination with
another recited element).
5
Because the claim 1 encompasses software alone without a non-
transitory medium or other physical embodiment, claim 1 does not fall
within any statutory category under 35 U.S.C. § 101. See Allvoice, 612 F.
App'x. at 1018.
We are, therefore, not persuaded that the Examiner erred in rejecting
claim 1 under § 101, and claims 3-26 not separately argued.
THE ANTICIPATION REJECTION
Contentions
The Examiner finds that Schroeder discloses every recited element of
claim 1. Final Act. 3. According to the Examiner, Schroeder's rule engine
normalizes a markup language schema. Ans. 4 (citing Schroeder i-fi-1 46--4 7,
62-63, 66, Fig. 4). The Examiner finds that Schroeder's element tags teach
the recited schema. Ans. 5. The Examiner further cites paragraph 54
describing the outbound processing and finds that "[t]he data structure is the
schema." Id.
Appellant argues that Shroeder' s process concerns XML instances,
not markup-language schemas, as recited. App. Br. 6-7. Appellant
contends that XML schemas are used to validate XML instances. Id. at 7.
Issue
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Schroeder discloses a markup language schema, as recited?
Analysis
The key disputed limitation of claim 1 recites, in pertinent part, a
"markup language schema." To this end, we refer to the Specification for it
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is the single best guide to claim construction. Phillips v. A WH Corp., 415
F.3d 1303, 1321 (Fed. Cir. 2005) (en bane). Appellant's Specification
describes schemas in the context of Extensible Markup Language (XML)
documents. Spec. i-f 3. Applications and organizations use XML formats to
define, transmit, validate, and interpret data. Id. To accomplish this, XML
uses customized tags. Id. For example, an XML tag with named "City" for
the text "Sydney" could be represented in XML as "Sydney."
Id. i-f 60. These tags are in an XML document. Id. i-f 3.
Schemas define XML document formats. Id. For example, schemas
can provide rules for an XML document to follow. Id. i-f 110. After the
XML documents are created, the schema can then validate those documents
to ensure they conform to the defined format. See id. i-fi-1107, 110. Although
the recited schema is not limited to these specific examples, as is the case
with other terms,4 this disclosure nevertheless informs our construction of
the term.
Consistent with these examples, one plain meaning of "schema" is "a
description of the structure of an object." DICTIONARY OF COMPUTER
SCIENCE, ENGINEERING, AND TECHNOLOGY 436 (Phillip A. Laplante ed.
2001 ). So a broad, but reasonable, interpretation of a markup-language
schema is a description of the structure of a markup-language document, for
example, by defining the markup-language format or providing rules for a
document to follow (see, e.g., Spec. i-fi-13, 107, 110).
Appellant argues, and we agree, that the Examiner erred in mapping
Schroeder's XML data, i.e., XML tags and data, to the recited schema.
App. Br. 6. We agree that the Examiner's rejection is deficient because
4 Appellant, for example, defines "'normalized' schema." Spec. i-f 54.
7
Schroeder normalizes the markup-language document, rather than a markup-
language schema, as recited.
Specifically, Schroeder translates data in one format to another. See
generally Schroeder Abstract; i-fi-122, 28--40. To accomplish this, Schroeder
uses XML as an intermediate format. See id., Fig. 4, cited in Final Act. 3.
In particular, incoming data 400 in one format is transformed to two
intermediate XML formats (404, 412), then to outbound data in another data
format 416. Id. ff 50-54; Fig. 4. For example, Schroeder's Figure 7a
shows an "Implementation Guide" document and the corresponding
intermediate document containing XML tags. Id. i-fi-189-90.
The Examiner has not shown that these XML tags can reasonably be
interpreted as the recited markup language schema. Specifically, under the
plain meaning of the term, the Examiner has not shown that XML tags
describe how the XML is structured, for example, by defining an XML
format or providing rules. To the contrary, Schroeder's collection of XML
tags is the markup language itself. See Schroeder, Fig. 7 a. So although
Schroeder's XML document could be validated by a schema to ensure the
tags follow the defined format (App. Br. 7), Schroeder's XML tags
themselves do not define that format. Nor has the Examiner explained that
Schroeder's XML tags define any other markup-language format.
The Examiner also cites Schroeder's paragraph 54 describing the
outbound processing, and finds that "[t]he data structure is the schema."
Ans. 5. But Schroeder's outbound data structure is the destination of the
XML data. Schroeder i154. In other words, Schroeder translates the XML
data into the outbound data format. Id.; see also id. Fig. 4. The Examiner,
however, has not explained how this data structure describes how the XML
is structured, for example, by defining the XML format.
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Furthermore, the Examiner cites Schroeder's XML processing for the
recited normalization. See Final Act. 3 (citing Schroeder i-fi-146--47, 62-63).
In the cited paragraphs, Schroeder describes translating XML documents
between formats. Schroeder i-fi-146--47, 62-63. Although a schema could be
used to ensure the resulting XML document conforms to the format
(App. Br. 7), Schroeder is silent about any schema to carry out this
processing, let alone schema normalization. See id. Instead, Schroeder
normalizes the XML document itself, not its schema. See Schroeder i1 54,
cited in Ans. 5.
We are, therefore, constrained by this record to conclude that the
Examiner erred in rejecting independent claim 1, and dependent claims 14-
17 and 19-23 for similar reasons. Because this issue is dispositive regarding
the Examiner's error in rejecting these claims, we need not address
Appellant's other arguments.
THE OBVIOUSNESS REJECTIONS
The Examiner rejects claims 3 and 4 additionally citing Hogg5 for the
limited purpose of showing that namespaces were known. Final Act. 4-5.
Furthermore, the Examiner rejects claims 8 additionally citing Atkinson for
the limited purpose of showing that publishing was known. Id. at 5-6.
Because the Examiner has not shown that the additional cited
references cure Schroeder's above-noted deficiencies, we also do not sustain
the Examiner's obviousness rejections of claims 3, 4, and 8 (id. at 4-6) for
similar reasons.
5 Although the Examiner misspells the reference as "Hog" (Fin. Act. 4-5),
we nonetheless provide the correct spelling here for clarity.
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CONCLUSION
The Examiner did not err in rejecting claims 1 and 3-26 under § 101,
but erred in rejecting (1) claims 1, 14-17, and 19-23 under § 102, and
(2) claims 3, 4, and 8 under§ 103.
DECISION
The Examiner's decision rejecting claims 1 and 3-26 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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