10748505 (B.P.A.I. Mar. 31, 2010)

Ex Parte Weissman

Board of Patent Appeals and InterferencesMar 31, 2010

10748505 (B.P.A.I. Mar. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ADAM J.WEISSMAN ___________ Appeal 2009-003934 Application 10/748,505 Technology Center 2100 ____________ Decided: April 1, 2010 ____________ Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and ST. JOHN COURTENAY III, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) (2002) from the Examiner’s rejection of claims 1-35. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2009-003934 Application 10/748,505 2 STATEMENT OF THE CASE INVENTION The invention on appeal relates generally to indicies. More particularly, Appellants’ invention is directed to methods and systems for compressing indicies. (Spec. 1). ILLUSTRATIVE CLAIM 1. A method, comprising: selecting from an inverted index at least a first item entry comprising a first listing of articles that are associated with a first item and a second item entry comprising a second listing of articles that are associated with a second item, wherein the second item differs from the first item; determining whether to compress the second item entry into the first item entry; and compressing the second item entry into the first item entry based on the determination. Appeal 2009-003934 Application 10/748,505 3 PRIOR ART Spencer US 5,915,249 June 22, 1999 Pugh US 6,834,290 B1 Dec. 21, 2004 Sommer US 6,847,966 B1 Jan. 25, 2005 Chaudhuri US 2003/0088715 A1 May 8, 2003 THE REJECTIONS 1. The Examiner rejected claims 1, 9, 16-18, 26, 28-31, 33, and 34 under 35 U.S.C. § 102(e) as anticipated by Chaudhuri. 2. The Examiner rejected claims 2, 8, 10, 19, 25, and 27 under 35 U.S.C. § 103(a) as unpatentable over Chaudhuri and Pugh. 3. The Examiner rejected claims 32 and 35 under 35 U.S.C. § 103(a) as unpatentable over Chaudhuri and Sommer. 4. The Examiner rejected claims 3-7, 11-15, and 20-24 under 35 U.S.C. § 103(a) as unpatentable over Chaudhuri, Pugh, and Spencer. ISSUE Based upon our review of the administrative record, we have determined that the following issue is dispositive in this appeal: Under § 102, did the Examiner err by finding that Chaudhuri discloses or describes selection from an inverted index at least two item entries, each of which comprise a listing of articles; determining whether to compress the entries; and then compressing the entries, in the order required by the independent claims? Appeal 2009-003934 Application 10/748,505 4 PRINCIPLES OF LAW Anticipation under § 102 In rejecting claims 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) (citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed. Cir. 1992)). Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference. 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. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999) (citations omitted). FINDINGS OF FACT The Chaudhuri Reference 1. Chaudhuri’s Fig. 4 shows column IDs C1 and C2 that are a listing of articles for hash value V2. Table 133 (Fig. 4) is an uncompressed hash table in which C1 and C2 have several hash values in common. (Para. [0035]); Fig. 4). 2. Chaudhuri’s Fig. 5 illustrates the compressed hash table 134 that results from compressing the uncompressed hash table 133 that is depicted in Fig. 4. (Para. [0035]; Fig. 5) Appeal 2009-003934 Application 10/748,505 5 ANALYSIS We decide the question of whether the Examiner erred by finding that Chaudhuri discloses or describes selection from an inverted index at least two item entries, each of which comprise a listing of articles; determining whether to compress the entries; and then compressing the entries in the order recited in the independent claims. (See claim 1). Unless the steps of a method actually recite an order, the steps are not ordinarily construed to require one. Interactive Gift Express, Inc. v. CompuServe, Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001). See also Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369-71 (Fed. Cir. 2003) (district court erred in claim construction by reading a step order from the written description into the claims). Here, Appellant argues a specific order of steps is required by claim 1. Specifically, Appellant argues that according to Chaudhuri, “[b]efore compression, none of the hash values has a ‘listing of articles’ associated with them. Instead, each hash value has a single ColId [column ID] associated with it. Chaudhuri’s compression thus must occur before any selection of item entries that comprise a first listing of articles from an inverted index, as recited in claims 1 and 18.” (App. Br. 10) (underline added). We agree with Appellant that a specific order of steps is required by the express language of independent claim 1, and also by the express language of independent claims 11, 16, 18, and 28. In particular, we note that each independent claim on appeal requires selection from an inverted index of at least two item entries, each of which comprises a listing of articles. A determination is first made whether to compress the entries; the Appeal 2009-003934 Application 10/748,505 6 entries are then compressed subsequent to the recited determination step or function. As noted above, we find Chaudhuri’s Fig. 4 describes column IDs C1 and C2 that are associated with hash value V2 in different entries (second and fifth). Thus, each hash value (V1, V2 etc.) is associated with a column ID entry and not to a single entry comprising a listing of articles (plural). (FF 1). As a result of compressing Fig. 4, Fig. 5 shows that a hash value is associated with multiple column IDs (NewColId). (FF 2). Again we note that the results of Fig. 5 that include the multiple column IDs, occur after compression has taken place. Because the cited reference performs the compression before selection of the item entries comprising a listing of articles (FF 1-2), we agree with Appellant's reasoning. Therefore, we reverse the Examiner's anticipation rejection of independent claims 1, 16, 18, and 28. Because the cited additional references do not remedy the deficiencies of the primary Chaudhuri reference, we also reverse the Examiner's rejection of independent claim 11 (rejected under § 103) for the same reasons discussed supra. Because we have reversed the Examiner's rejections of each independent claim on appeal, we also reverse the Examiner's rejections of each dependent claim on appeal. Appeal 2009-003934 Application 10/748,505 7 CONCLUSION Based on the findings of facts and analysis above: The Examiner erred in rejecting claims 1, 9, 16-18, 26, 28-31, 33, and 34 under 35 U.S.C. § 102(e). The Examiner erred in rejecting claims 2-8, 10-15, 19-25, 27, 32, and 35 under 35 U.S.C. § 103(a). ORDER We reverse the Examiner’s rejection of claims 1, 9, 16-18, 26, 28-31, 33, and 34 under 35 U.S.C. § 102(e). We reverse the Examiner’s rejections of claims 2-8, 10-15, 19-25, 27, 32 and 35 under 35 U.S.C. § 103(a). REVERSED pgc FISH & RICHARDSON P.C. PO BOX 1022 MINNEAPOLIS, MN 55440-1022