Ex Parte West

Board of Patent Appeals and Interferences

Mar 21, 2012

10890563 (B.P.A.I. Mar. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILLIAM JOHN WEST
____________________

Appeal 2009-012168
Application 10/890,563
Technology Center 2100
____________________

Before ERIC S. FRAHM, DAVID M. KOHUT, and ERIC B. CHEN,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/890,563

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STATEMENT OF THE CASE
Introduction1
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-26, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows, with
emphasis added:
1. A method for transforming output of a data modeler to a
repository storage form, comprising:
receiving a stream of data output from a data modeler;
receiving a control file associated with the stream of data;
transforming the stream of data into a repository storage form
comprising:
converting the control file into an internal data structure;
parsing the stream of data to determine one or more of
elements, attributes, associations, and relationships in the stream of
data by referencing the internal data structure; and
writing the parsed stream of data to the repository storage
form; and
building a relational database comprising a plurality of repository
storage forms.

1 In our decision herein, we refer to the Appellant’s Brief filed July 30, 2008
(“App. Br.”), the Examiner’s Answer mailed October 10, 2008 (“Ans.”), and
the Reply Brief filed December 10, 2008 (“Reply Br.”).
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The Examiner’s Rejection
The Examiner rejected claims 1-26 as being unpatentable under
35 U.S.C. § 102(a) over Worden (US 2003/0149934 A1, Aug. 7, 2003).
Ans. 3-6.
Appellant’s Contentions2
Appellant contends (App. Br. 11-14; Reply Br. 2-4) that the Examiner
erred in rejecting claims 1-26 under 35 U.S.C. § 102(a) for numerous
reasons, including:
(1) Worden fails to disclose, teach, or suggest “transforming the
stream of data into a repository storage form” as recited in claim 1 (App. Br.
12; Reply Br. 2);
(2) Worden discloses a “representation” of information, and “not a
‘repository storage form’ as recited in Claim 1” (App. Br. 12);
(3) regarding claim 1, Worden’s information content of the business
information model disclosed in paragraph [0296] “is not the result of the
transformation disclosed in the reference [i.e., Worden]. Rather it is ‘just
what the user inputs.’” (Reply Br. 2);
(4) because Worden’s business information model that is stored in a
relational database “‘is just what the user inputs,’” it is not the output from
a data modeler as required by claim 1 (Reply Br. 2);

2 Separate patentability is not argued for dependent claims 2-26 (App. Br.
12-13; Reply Br. 2-3). We select independent claim 1 as representative of
the group of claims consisting of claims 1, 3-13, 15-17, and 19-26, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).

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(5) Worden fails to teach, suggest, or disclose “invoking a plurality of
events for handling events in the stream of data” as recited in claims 2 and
18, or “the program of instructions further comprises a plurality of events
invoked as the parser parses the stream of data output” as recited in claim 14
(Reply Br. 3); and
(6) “[t]he mere fact that Worden may disclose the use of XML
language that includes start and end tags does not teach, suggest, or disclose
‘invoking a plurality of events for handling events in the stream of data’ or ‘
a plurality of events invoked as the parser parses the stream of data output.’”
(Reply Br. 3).
Issue on Appeal
Did the Examiner err in rejecting claims 1-26 as being anticipated
because Worden fails to teach the claim limitations at issue?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief (App. Br. 11-14) and Reply Brief (Reply Br.
2-4) that the Examiner has erred.
We disagree with Appellant’s contentions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken, as well as the Advisory Action mailed April 24,
2008, and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief (see App. Br. 3-10). We
concur with the conclusion reached by the Examiner, and highlight and
address specific findings and arguments for emphasis as follows.
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Appellant’s first two contentions, (1) and (2) supra, are not
convincing because Worden’s paragraphs [0044] and [0296] disclose
converting information “to a form reflecting the business information model
logical structures” (¶[0044]) and storing the business information model
information, such as definitions, attributes, and relations of entities, “in a
relational database” (¶ [0296]). We agree with the Examiner (Ans. 7-9) that
Appellant’s Specification describes a repository storage form as a “relational
table form” (Spec. 2:27-29), and that Worden’s “form” which reflects
“relations” of the entities and is stored in a relational database in “tables”
(see ¶¶ [0044] and [0296]) meets the limitation of “a repository storage
form” as set forth in claim 1.
Appellant’s third and fourth contentions, (3) and (4) supra, are also
unconvincing. Claim 1 is broad enough to encompass a method for
transforming output of a data modeler to a repository storage form that
transforms data into a repository storage form, where the transformed data is
output from a data modeler and is also input by a user. In other words, a
broad but reasonable interpretation of claim 1 does not preclude the received
stream of data output from a data modeler being received by or input by a
user. Therefore, claim 1 encompasses the condition where a stream of data
or information from the business information model is “just what the user
inputs” as in Worden (see ¶ [0296]).
Appellant’s fifth and sixth contentions, (5) and (6) supra, are also
unconvincing for the following reasons.
We disagree with Appellant’s fifth contention supra that Worden fails
to teach, suggest, or disclose “invoking a plurality of events for handling
events in the stream of data” as recited in claims 2 and 18, or “the program
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of instructions further comprises a plurality of events invoked as the parser
parses the stream of data output” as recited in claim 14 (Reply Br. 3).
Appellant has not addressed these findings by the Examiner, but rather
merely points out what claims 2, 14, and 18 recite and asserts that the
reference fails to teach the limitations. Such conclusions are not considered
a separate argument for patentability. See In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (stating that interpreting 37 C.F.R. § 41.37(c)(1)(vii)(2010)
to require a more substantive argument than a naked assertion that the prior
art fails to teach limitation in order to address a claim separately, is not an
unreasonable interpretation of the rule).
Where the Examiner establishes a reasonable assertion of inherency
and thereby evinces that a claimed process appears to be identical to a
process disclosed by the prior art and/or that the products claimed by the
applicant and disclosed in the prior art appear to be the same, the burden is
properly shifted to the applicant to show that they are not. See In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254-56
(CCPA 1977). In the instant case, the Examiner has reasonably established
(see Ans. 9-10) that Worden’s paragraph [0324] discloses an XML parser
that parses a stream of data as recited in claims 2 and 14, and that Worden’s
paragraphs [0607] – [0616] disclose start and end tags that serve to invoke a
plurality of events for handling events in a stream of data as recited in claims
2 and 18.
In this light, we disagree with Appellant’s sixth contention supra, that
Worden’s disclosure of XML language that includes start and end tags does
not teach, suggest, or disclose invoking a plurality of events for handling
events in the stream of data. Instead, we agree with the Examiner that
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Appellant’s description of using start and end tags to invoke events (see
Spec. 11:1-10; Fig. 9) supports the Examiner’s finding that Worden’s
paragraphs [0607] – [0612] discloses “invoking a plurality of events for
handling events in the stream of data” as recited in claims 2 and 18. See
Spada, 911 F.2d at 708; Best, 562 F.2d at 1254-56.

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1-26 as being
unpatentable under 35 U.S.C. § 102(a).
(2) Claims 1-26 are not patentable.

DECISION
The Examiner's rejection of claims 1-26 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)(1)(iv).

AFFIRMED

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