Ex Parte Di Blas et al

Patent Trial and Appeal Board

Mar 3, 2017

13615213 (P.T.A.B. Mar. 3, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/615,213 09/13/2012 Andrea Di Bias 50277-3952 5359
42425 7590 03/07/2017
HTPKMAN PAT F.RMO RFFTCFR RTNOTTAM/OR AFT F
EXAMINER
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2177
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREA DI BLAS and RAVI MURTHY
Appeal 2016-004497
Application 13/615,213
Technology Center 2100
Before LARRY J. HUME, CATHERINE SHIANG, and
CARL L. SILVERMAN, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—20, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
validating data objects. See generally Spec. 2.
Appeal 2016-004497
Application 13/615,213
Claim 1 is exemplary:
1. A method, said method comprising steps of:
generating metadata that is used to validate a first data
object;
determining whether said metadata satisfies one or more
reuse criteria for reusing said metadata to validate a second data
object;
wherein said reuse criteria includes at least that a first set
of distinct paths in said first data object match a second set of
distinct paths in said second database object;
in response to determining that said metadata satisfies said
one or more reuse criteria, using said metadata to validate said
second data object;
wherein the method is performed by one or more
computing devices.
References and Rejections
Claims 1 and 11 are rejected under pre-AIA 35 U.S.C. § 102(b) as
being anticipated by Hada (US 2005/0076030 Al; publ. Apr. 7, 2005)
(“Hada”).
Claims 5, 6, 7, 15, 16, and 17 are rejected under pre-AIA 35 U.S.C.
§ 102(b) as being anticipated by Murthy (US 2007/0016605 Al; publ.
Jan. 18,2007).
Claims 2 and 12 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Hada and Chand (US 2007/0078537 Al; publ.
Apr. 5, 2007).
Claims 3, 4, 13, and 14 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Hada and Murthy.
Claims 8 and 18 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Murthy and Chand.
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Appeal 2016-004497
Application 13/615,213
Claims 9, 10, 19, and 20 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
ANALYSIS1
Claims 1—4 and 11—14
Anticipation
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contention that the Examiner erred in finding Hada discloses “generating
metadata that is used to validate a first data object,” as recited in
independent claim 1 (emphasis added). See App. Br. 7—9; Reply Br. 3.
It is well established that during examination, claims are given their
broadest reasonable interpretation consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art, but without importing limitations from the
specification. See In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (internal citations omitted); SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Here, the Specification
expressly defines “[validation” as “the process of determining whether a
data object, or part thereof, conforms to a schema.” Spec. 5; see App. Br. 7;
Reply Br. 3.
1 Appellants raise additional arguments with respect to prior art rejections.
Because the identified issues are dispositive of the appeal, we do not reach
the additional arguments.
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Appeal 2016-004497
Application 13/615,213
The Examiner finds Hada’s paragraph 21 teaches “the value
expression is a simple statement granting or denying (validating) access to
the node associated with the path.” Ans. 19; see also Final Act. 5; Hada
121 (“The value expression is a simple statement granting or denying access
to the node associated with the path”). Therefore, contrary to the
Specification’s express definition of the claimed “validating” (above), the
Examiner maps the claimed “validating” to Hada’s teaching of granting or
denying access.
Because the Examiner fails to provide sufficient evidence or
explanation to support the anticipation rejection, we are constrained by the
record to reverse the Examiner’s rejection of claim 1.
Independent claim 11 recites a claim limitation that is the same as the
disputed limitation of claim 1. See claim 11. Therefore, for similar reasons,
we reverse the Examiner’s rejection of independent claim 11.
Obviousness
The Examiner cites additional references for the obviousness rejection
of dependent claims 2—A and 12—14. The Examiner relies on Hada in the
same manner discussed above in the context of claim 1, and does not rely on
the additional references in any manner that remedies the deficiencies of the
underlying anticipation rejection. See Final Act. 11—17.
Accordingly, we reverse the Examiner’s obviousness rejections of
claims 2-4 and 12—14.
Claims 5—8 and 15—18
Anticipation
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Appeal 2016-004497
Application 13/615,213
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contention that the Examiner erred in finding Murthy discloses “determining
whether said first composite path signature matches any composite path
signature of the composite path signatures of said data objects to determine
whether to reuse a set of metadata of N sets of metadata,” as recited in
independent claim 5. See App. Br. 11—12; Reply Br. 5—6.
The Examiner finds “Murthy further teaches through paragraph
[0033] and FIG. 1, the matching of the composite path signature to
determine whether to reuse metadata,” but does not persuasively explain
why. Ans. 21; see also Final Act. 7. We have reviewed Murthy’s paragraph
33 and Figure 1, and they do not discuss “determining whether said first
composite path signature matches any composite path signature of the
composite path signatures of said data objects to determine whether to reuse
a set of metadata of N sets of metadata.” Nor do Murthy’s paragraphs 34,
47, 49, and Figure 2—additionally cited by the Examiner in the Answer—
discuss the disputed claim limitation. Absent further explanation from the
Examiner, we do not see how the cited Murthy portions disclose the disputed
claim limitation.
Because the Examiner fails to provide sufficient evidence or
explanation to support the anticipation rejection, we are constrained by the
record to reverse the Examiner’s rejection of claim 5.
Independent claim 15 recites a claim limitation that is the same as the
disputed limitation of claim 1. See claim 15. Therefore, for similar reasons,
we reverse the Examiner’s rejection of independent claim 15.
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Appeal 2016-004497
Application 13/615,213
We also reverse the anticipation rejection of corresponding dependent
claims 6, 7, 16, and 17.
Obviousness
The Examiner cites an additional reference for the obviousness
rejection of dependent claims 8 and 18. The Examiner relies on Murthy in
the same manner discussed above in the context of claim 5, and does not rely
on the additional reference in any manner that remedies the deficiencies of
the underlying anticipation rejection. See Final Act. 17—18.
Accordingly, we reverse the Examiner’s obviousness rejection of
claims 8 and 18.
Claims 9, 10, 19, and 202
Written Description Requirement
The Examiner finds:
Claims 9 and 19 and depending claims 10 and 20 were rejected
as failing to comply with the written description requirement of
paragraph one of35USC§ 112. Claims 5 and 15 state “using the
reusable metadata to validate the first data object.” Claims 9 and
19 call for “remapping an in-memory representation of said first
data object to structures within said reusable metadata.” Thus,
the claims are remapping the first data object, which is the same
data object already mapped in the independent claims, within the
reusable metadata. Paragraph [0074] of the specification teaches
“remapping” as “reusing] object-specific metadata for another
in-memory data object, the other in-memory data object must be
mapped to the appropriate set of TQP-specific metadata
structure.” The “first data object” as claimed in claims 9 and 19
is not “another in-memory data object.” Accordingly, the
2 The Examiner does not reject claims 9, 10, 19, and 20 as being
unpatentable over prior art.
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Appeal 2016-004497
Application 13/615,213
specification does not teach remapping the “first data object”
after it has already been mapped.
Ans. 28—29; see also Final Act. 4.
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellants possessed the claimed
invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc). Specifically, the
description must “clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed” and
the test requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill in
the art. Based on that inquiry, the specification must describe an
invention understandable to that skilled artisan and show that the
inventor actually invented the invention claimed.
Id. (internal quotations and citations omitted).
We agree with Appellants that the Examiner’s rejection is
unclear. See App. Br. 16; Reply Br. 8. In particular, the Examiner
finds “the claims [9 and 19] are remapping the first data object, which
is the same data object already mapped in the independent claims,
within the reusable metadata.” Ans. 28—29. However, the Examiner
does not explain why the independent claims require “mapping” of a
data object, as the Examiner merely cites “using the reusable metadata
to validate the first data object” of the independent claims (emphasis
added). Further, the Examiner has not explained why the finding that
“[t]he ‘first data object’ as claimed in claims 9 and 19 is not ‘another
in-memory data object[]’” (Ans. 29)—regardless of whether that
finding is correct—supports the stated rejection.
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Appeal 2016-004497
Application 13/615,213
In any event, Appellants argue that paragraphs 74 and 75 of the
Specification provide support for claims 9 and 19. See App. Br. 17.
The Examiner ignores that argument, and does not explain why that
argument is incorrect. Further, Appellants argue that except for a
minor amendment (the deletion of “base”), claims 9 and 19 were filed
as parts of the original Specification, and the original filed claims 9
and 19 also provide support for the present pending claims 9 an 19.
See App. Br. 17; Spec. 25, 29. Again, the Examiner ignores that
argument, and does not explain why that argument is incorrect.
Because the Examiner has not shown sufficient basis for the
rejection, we reverse the Examiner’s rejection of claims 9 and 19
under 35U.S.C. § 112, first paragraph.
We also reverse the Examiner’s rejection of claims 10 and 20,
which depend from claims 9 and 19, respectively, under 35 U.S.C.
§112, first paragraph.
DECISION
We reverse the Examiner’s decision rejecting claims 1—20.
REVERSED
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