International Business Machines Corporation

Patent Trials and Appeals Board

Mar 2, 2021

2019005475 (P.T.A.B. Mar. 2, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/564,432 12/09/2014 David M. Koster ROC920140071US1 6384
46296 7590 03/02/2021
MARTIN & ASSOCIATES, LLC
P.O. BOX 548
CARTHAGE, MO 64836-0548
EXAMINER
SINGH, AMRESH
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
03/02/2021 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):
derekm@ideaprotect.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID M. KOSTER

Appeal 2019-005475
Application 14/564,432
Technology Center 2100
Before JAMES R. HUGHES, ERIC S. FRAHM, and
JOHNNY A. KUMAR, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1, 2, 4–10, and 21–26 are pending, stand rejected, are appealed
by Appellant, and are the subject of our decision under 35 U.S.C. § 134(a).1
See Final Act. 1–2; Appeal Br. 10, 12.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2017). Appellant identifies the real party in interest as
International Business Machines Corp. See Appeal Br. 1.
2 We refer to Appellant’s Specification (“Spec.”), filed Dec. 9, 2014;
Appeal Brief (“Appeal Br.”), filed Jan. 28, 2019; and Reply Brief (“Reply
Br.”), filed July 10, 2019. We also refer to the Examiner’s Final Office
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Application 14/564,432

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CLAIMED SUBJECT MATTER3
The claimed subject matter, according to Appellant, “generally relates
to computer data systems, and more specifically relates to intelligent XML
file fragmentation for storage of the XML file in a storage system with a
limited data block size such as a cluster coordination service.” Spec. ¶ 2.
More specifically, Appellant’s claims describe apparatuses (machines)
including a processor and memory. The memory further includes an
extensible markup language (XML) file having a parent element and a child
element (that corresponds to the parent element), an XML schema
corresponding to the XML file, and a XML fragmenting mechanism splits
the XML file based on the XML schema into multiple data blocks. The data
blocks have a pre-determined maximum size and are stored by the XML
fragmenting mechanism in a data storage system in a hierarchal structure
according to relationships determined from the XML file schema. See Spec.
¶¶ 6, 21– 23, 29, 37, 38; Abstract. Claims 1, 10, and 21 are each directed to
an apparatus, and are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An apparatus comprising:
at least one processor;
a memory coupled to the at least one processor;
an extensible markup language (XML) file with a parent
element and a child element corresponding to the parent element;

Action (“Final Act.”), mailed Aug. 27, 2018; and Answer (“Ans.”) mailed
May 10, 2019.
3 Claims 4–6, 8, and 9 are shown as being dependent on canceled claim 3.
See Appeal Br. 10–11 (Claim App.). In the event of further prosecution,
correction is required. For the purposes of this appeal, we review these
claims as if they depend from pending claim 2.
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an XML schema corresponding to the XML file; and
an XML fragmenting mechanism residing in the memory
and executed by the at least one processor that intelligently splits
the XML file based on the XML schema into a plurality of data
blocks that have a pre-determined maximum size, wherein the
XML fragmenting mechanism stores the plurality of data blocks
into a data storage system in a hierarchal structure according to
relationships from the XML file schema between the parent
element and the child element by placing a first data block
corresponding to the parent element of the XML file in a first
location of the hierarchal structure and a second data block
corresponding to the child element of the XML file in a second
location of the hierarchal structure.
Appeal Br. 10 (Claims App.) (emphasis added).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Huttunen US 2003/0069881 A1 Apr. 10, 2003
Pal et al. (“Pal”) US 2005/0091188 A1 Apr. 28, 2005

REJECTION4, 5
The Examiner rejects claims 1, 2, 4–10, and 21–26 under 35 U.S.C.
§ 103 as being unpatentable over Huttunen and Pal. See Final Act. 4–6.

4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application
has an effective filing date (Dec. 9, 2014) after the AIA’s effective date
(March 16, 2013), this decision refers to 35 U.S.C. § 103.
5 The Examiner has withdrawn the eligibility rejection under 35 U.S.C.
§ 101. See Final Act. 2–3; Ans. 3. We do not address Appellant’s
arguments with respect to the withdrawn rejection. See Appeal Br. 4–5.
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ANALYSIS
Appellant argues independent claims 1, 10, and 21, and dependent
claims 2, 4–6, 8, and 9, together as a group with respect to the § 103
rejection. See Appeal Br. 5–6. Appellant provides separate arguments with
respect to dependent claim 7. See Appeal Br. 6–8. Appellant also contends
independent claims 10 and 21, as well as dependent claims 22–26 (which
depend from claim 21) include limitations similar to claim 7. See Appeal
Br. 8–9. We select independent claim 1 as representative of Appellant’s
arguments with respect to claims 1, 2, 4–6, 8, and 9. We separately address
Appellant’s arguments with respect to claim 7, 10, and 21–26. See 37
C.F.R. § 41.37(c)(1)(iv).
Obviousness Rejection of Claims 1, 2, 4–6, 8, and 9
The Examiner rejects independent claim 1 (as well as dependent
claims 2, 4–6, 8, and 9) as being obvious over Huttunen and Pal. See Final
Act. 4–6; Ans. 3–4. Appellant contends that Huttunen and Pal do not teach
the disputed limitation of claim 1. See Appeal Br. 5–6; Reply Br. 2–4.
Specifically, Appellant contends, inter alia, that the Examiner-cited portions
of Huttunen do not teach “or suggest splitting the XML file into a plurality
of data blocks based on the XML schema in the manner claimed” because
Huttunen’s “XML document is divided using static or dynamic partitioning
based on XML Partitioning Vocabulary (XPV).” Appeal Br. 5; see Appeal
Br. 5–6; Ans. 4.
We find Appellant’s arguments with respect to Huttunen and splitting
an XML file based on an XML schema unavailing. As pointed out by the
Examiner (see Final Act. 4–5; Ans. 4), Huttunen describes an XML
document that has a corresponding Document Type Definition (DTD) or
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schema and applying the XML Partitioning Vocabulary (XPV) to the DTD
to generate a mapping file used to partition the XML document (see
Huttunen ¶ 62; Fig. 2).
Appellant contends that Huttunen’s “XML document is divided using
static or dynamic partitioning based on XML Partitioning Vocabulary
(XPV),” which is “metadata added to the XML document” and, therefore,
Huttunen “does not teach or suggest dividing the XML file into data blocks
based on the XML schema.” Appeal Br. 5–6; see Reply Br. 2–3. Appellant,
however, concedes Huttunen describes “a mapping is created with the
schema.” Reply Br. 2.
Appellant’s claim 1 recites splitting the XML file “based on the XML
schema.” Appeal Br. 10 (Claim App.) (emphasis added). The claim does
not exclude using additional information to perform partitioning or splitting.
Nor, does the claim require splitting of the XML file based on only the
schema—i.e., that the schema is the sole basis (only information used) to
split the file. We broadly, but reasonably, construe “based on the XML
schema” in this context to mean that the schema is used to split or partition
the file (as a basis or foundation for splitting the file). In Huttunen the DTD
is used with the XPV to create the mapping file that is in turn used to
partition the document/file. See Huttunen ¶¶ 61–77; Fig. 2. Thus, Huttunen
at least suggests splitting “the XML file based on an XML schema”
(emphasis added) as recited in claim 1.
In the Reply Brief, Appellant argues for the first time that the
combination of Huttunen and Pal “does not teach or suggest storing the
plurality of data blocks into a data storage system in a hierarchal structure
according to relationships from the XML file schema.” Reply Br. 3. These
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arguments were not raised in the Appeal Brief; nor has Appellant shown
good cause for raising these new arguments in the first instance in the Reply
Brief. Accordingly, these new arguments are forfeit as untimely. See 37
C.F.R. § 41.41(b)(2); 37 C.F.R. § 41.37(c)(1)(iv) (2020) (“Except as
provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not
included in the appeal brief will be refused consideration by the Board for
purposes of the present appeal.”); In re Google Tech. Holdings LLC, 980
F.3d 858, 862 (Fed. Cir. 2020) (“We interpret the Patent Office to be arguing
that Google’s failure to raise its lexicography arguments, inadvertent or not,
compels a finding of forfeiture.”); Ex parte Nakashima, 93 USPQ2d 1834,
1837 (BPAI 2010) (informative) (arguments not timely presented in the
principal Brief will not be considered absent a showing of good cause
explaining why the arguments could not have been presented in the Principal
Brief); Ex parte Borden, 93 USPQ2d 1473, 1473–74 (BPAI 2010)
(informative opinion) (absent a showing of good cause, the Board is not
required to address an argument newly presented in the reply brief that could
have been presented in the principal brief on appeal).
We find a preponderance of the evidence supports the Examiner’s
findings and conclusions that the combination of Huttunen and Pal together
teaches or at least suggests the disputed features of claim 1. Thus, Appellant
does not persuade us of error in the Examiner’s obviousness rejection of
representative claim 1. Dependent claims 2, 4–6, 8, and 9 depend from and
stand with claim 1. Therefore, we affirm the Examiner’s obviousness
rejection of representative claim 1 and claims 2, 4–6, 8, and 9 not separately
argued with particularity (supra). See 37 C.F.R. § 41.37(c)(1)(iv).
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Obviousness Rejection of Claim 76
The Examiner rejects dependent claim 7 as being obvious over
Huttunen and Pal, similar to the rationale and analysis for rejecting claim 1
(supra). See Final Act. 6; Ans. 4–5. Claim 7 recites the XML fragmenting
mechanism (of claim 1) storing “the first data block corresponding to the
parent element in a base directory and stor[ing] the second data block
corresponding to the child element in a sub-directory under the base
directory.” Appeal Br. 11 (Claim App.). Appellant contends that Huttunen
and Pal do not teach the disputed limitation of claim 1. See Appeal Br. 6–8;
Reply Br. 4–5. Specifically, Appellant contends that “Huttunen does not
teach or suggest storing data in a hierarchal manner according to the parent
and child relationships in the XML file schema to a directory structure with
a base directory and a sub-directory.” Appeal Br. 6.
Although we agree with the Examiner that Huttunen at least suggests
storing fragmented XML file data (see Final Act. 6; Ans. 4–5 (citing
Huttunen ¶¶ 11, 14, 36, 39, 54))—Huttunen describes storing statically
partitioned fragments and serving the fragments upon request (Huttunen ¶
39)—we agree with Appellant that the Examiner-cited portions of Huttunen
do not describe hierarchical data storage as required by claim 7. The
Examiner merely reiterates the claim language and cites various portions of
Huttunen without specifically mapping the cited portions of Huttunen’s
disclosure to the disputed features of Appellant’s claim. As pointed out by

6 We do not address Appellant’s arguments (see Appeal Br. 7–8) made in
response the Examiner’s statements made in the Advisory Action and
Interview Summary (mailed Nov. 9, 2018) that were not reiterated in the
Examiner’s Answer.
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Appellant “Huttunen . . . does not teach or suggest anything about
directory/subdirectory relationships.” Reply Br. 5. The Examiner has not
sufficiently explained how Huttunen would have suggested the recited
directory and subdirectory. Further, the Examiner does not sufficiently
explain how storing statically partitioned fragments (see Huttunen ¶ 39;
Abstract) somehow teaches “logically stored fragments based on document
hierarchy, i.e.[,] a directory/sub-director or a folder/subfolder GUI
visualization storage.” Ans. 5.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding that the combination of Huttunen and Pal
renders obvious Appellant’s claim 7. Therefore, we do not sustain the
Examiner’s obviousness rejection of claim 7.
Obviousness Rejection of Claims 10 and 21–26
The Examiner uses the same rationale and analysis for rejecting
independent claims 10 and 21, and dependent claims 22–26 as claim 7
(supra). See Final Act. 6; Ans. 5. Claims 10 and 21 both include limitations
for storing data in directories and subdirectories similar to claim 7. See
Appeal Br. 12–13 (Claim App.). As previously discussed, the Examiner has
not sufficiently explained how Huttunen (in combination with Pal) at least
suggests this feature. Consequently, we are constrained by the record before
us to find that the Examiner erred in finding that the combination of
Huttunen and Pal renders obvious Appellant’s claims 10 and 21–26.
Therefore, we do not sustain the Examiner’s obviousness rejection of claims
10 and 21–26.
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CONCLUSION
Appellant has not shown that the Examiner erred in rejecting claims 1,
2, 4–6, 8, and 9 under 35 U.S.C. § 103. Appellant has shown that the
Examiner erred in rejecting claims 7, 10, and 21–26 under 35 U.S.C. § 103.
We, therefore, sustain the Examiner’s rejection of claims 1, 2, 4–6, 8, and 9,
but do not sustain the Examiner’s rejection of claims 7, 10, and 21–26.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–10,
21–26
103 Huttunen and Pal 1, 2, 4–6, 8, 9 7, 10, 21–26
Overall
Outcome
1, 2, 4–6, 8, 9 7, 10, 21–26

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). See
37 C.F.R. § 41.50(f).
AFFIRMED IN PART