Ex Parte Murthy et al

Patent Trial and Appeal Board

Feb 19, 2014

11184301 (P.T.A.B. Feb. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte RAVI MURTHY, SIVASANKARAN CHANDRASEKAR,
ERIC SEDLAR, and NIPUN AGARWAL
__________

Appeal 2011-011097
Application 11/184,301
Technology Center 2100
__________

Before ERIC GRIMES, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
computer-implemented method for processing XML related operations on
XML data. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

1 Appellants identify the Real Party in Interest as Oracle International
Corporation (see App. Br. 2).
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Statement of the Case
Background
“Computer systems that use database servers to store XML documents
are typically implemented in a multi-tier architecture that has a database
server in the source tier (‘database tier’) and one or more outer tiers . . . .
Any outer tier is referred to herein as a client tier” (Spec. 4 ¶ 0019).
According to the Specification “XML operations in the client tier may not be
performed as efficiently as XML operations performed in the database tier
by a database server that has been enhanced to perform XML operations.
Thus, client tier execution of XML operations suffers from performance
degradation” (Spec. 5-6 ¶ 0023).
The Specification teaches that to “improve performance of performing
XML operations in the client tier on an XML document, the client tier
generates an index that indexes the nodes of the XML document” (Spec. 8 ¶
0036).
The Claims
Claims 34, 36-38, 40, 42-50, 52-54, 56, 58-65, and 70-75 are on
appeal. Claims 34 and 47 are representative and read as follows:
34. A computer-implemented method comprising:
a client computer of a server computer in a database
tier receiving a XML document from the server computer in
the database tier;
wherein the server computer maintains a database
index that indexes a collection of XML documents that
includes said XML document;
in response to receiving the XML document from the
server computer, the client computer generating, within a
volatile or non-volatile memory of the client computer, a
single-scope index that indexes one or more nodes of only
said XML document;
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wherein said single-scope index comprises one or
more index entries;
wherein each index entry of the one or more index
entries of the single-scope index corresponds to a node of
the one or more indexed nodes of the XML document; and
the client computer performing a query operation
involving said XML document using said single-scope
index.

47. A computer-implemented method comprising:
a client computer of a server computer in a database
tier receiving from the server computer in the database tier,
(a) an XML document and (b) index entry data from one or
more index entries of a database index maintained by the
server computer that indexes a collection of XML document
including the XML document;
in response to the client computer receiving the XML
document and the index entry data from the server
computer, the client computer generating, within a volatile
or nonvolatile memory of the client computer, based on said
index entry data from said database index, a single-scope
index that indexes one or more nodes of only said XML
document;
wherein said single-scope index comprises one or
more index entries;
wherein each index entry of the one or more index
entries of the single-scope index corresponds to a node of
the one or more indexed nodes of the XML document; and
the client computer performing a query operation
involving said XML document using said single-scope
index.

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The Issue
The Examiner rejected claims 34, 36-38, 40, 42-50, 52-54, 56, 58-65,
and 702-75 under 35 U.S.C. § 103(a) as obvious over Dodds3 and Stelting4
(Ans. 4-16).
The Examiner finds that Dodds teaches
[A] computer system for storing an XML document using a
relational database is provided wherein the system
comprises a converter that receives an XML document and
generates relational database tables based on the structure of
the XML document... these attributes are called encodings
that result in efficient storage, indexing and searching of
XML documents

(Ans. 4). The Examiner finds that Dodds teaches “wherein each index entry
of the one or more index entries of the single-scope index corresponds to a
node of the one or more indexed nodes of the XML document” (id. at 5).
The Examiner finds that Dodds teaches “the client computer performing a
query operation involving said XML document using said single-scope
index” (id.).
The Examiner finds that “Dodds does not explicitly disclose wherein
the server computer maintains a database index that indexes a collection of
XML documents that includes said XML document” (id.).
The Examiner finds that “Stelting teaches wherein the server
computer maintains a database index that indexes a collection of XML
documents that includes said XML document” (id. at 6). The Examiner

2 While claim 70 is not listed in the statement of the rejection, the Examiner
specifically addresses this claim in the Answer (Ans. 15). Appellants
understood the rejection to apply to claim 70 (see App. Br. 6).
3 Dodds et al., US 2002/0116371 A1, published Aug. 22, 2002.
4 Stelting et al., US 2003/0182461 A1, published Sept. 25, 2003.
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finds it obvious “to modify the method of Dodds with the teaching of
Stelting to improve[ ] indexing of XML . . . it would be advantageous to
have a method for modeling an enterprise application to be performed over
multiple tiers in a distributed computer system” (Ans. 7).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Dodds and Stelting render the claims
obvious?
Findings of Fact
1. Dodds teaches a “system and method for storing, indexing and
retrieving XML documents in a relational database” (Dodds 1 ¶ 0006).
2. Dodds teaches
[A] computer system for storing an XML document using a
relational database is provided wherein the system
comprises a converter that receives an XML document and
generates relational database tables based on the structure of
the XML document. . . . Collectively these attributes are
called encodings that result in efficient storage, indexing and
searching of XML documents without destroying the
underlying hierarchical structure of the documents.

(Dodds 1 ¶ 0010.)
3. Dodds teaches that the “computer 22 may be connected to a
remote server or other computer networks that permit the computer 22 to
network with and share the stored XML document with other computers or
to perform searches on XML stored documents on other computer systems”
(Dodds 1 ¶ 0020).
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4. Figure 3 of Dodds is reproduced below:

“FIG. 3 is a diagram illustrating an example of a Document Type Definition
(DTD) tree 60 for an XML document” (Dodds 3 ¶ 0025).
5. Dodds teaches that a
[S]earcher module 52 generates a user interface to a user,
permits the user to enter a text string type relational database
query, processes the query by communicating a query to the
relational database 54 and sends the results of the query in
its original XML form to the user so that the user may view
or print the query results.

(Dodds 3 ¶ 0024.)
6. Stelting teaches “a standardized method of modeling and
developing multi-tier software applications running on different servers and
communicating over a network such as the Internet” (Stelting 1 ¶ 0003).
7. Stelting teaches
A client tier 112 is provided in the client device 110 to
represent a number of client types and to perform client-side
presentation. For example, the client tier 112 could be a
Web browser 114 to allow enterprise applications or service
to interact with the client device 110 via dynamically
generated HTML pages and forms. . . . [T]he client device
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110 to interact more directly with the enterprise system 130
and its services by directly exchanging business data or
other data

(Stelting 3 ¶ 0026).
8. Figure 1 of Stelting is reproduced below:

“FIG. 1 illustrates a simplified distributed computer system utilizing a
multi-tier application environment to provide a [sic] client services that can
be modeled and developed” (Stelting 2 ¶ 0013).
9. Stelting teaches “data server 150 with an enterprise information
system (EIS) tier 156 is provided to allow the business logic tier to store,
access, and update data and typically includes a relational database and/or
legacy systems and other enterprise computing systems” (Stelting 3 ¶ 0027).
10. Stelting teaches that “[m]any of the network devices may be
server devices configured to maintain and then distribute software and data
over the data communications network 120” (Stelting 3 ¶ 0024).
11. Stelting teaches that “content is typically in the form of XML or
other language documents that are exchanged between the client device 110
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and the enterprise system 130 service using HTTP or other network 120
protocols” (Stelting 3 ¶ 0026).
12. Stelting teaches that “sequence diagram 600 includes some of
the same services at each tier but includes further detail for some services”
(Stelting 6 ¶ 0043).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. As noted by the Court in KSR, “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.” Id.
at 421.
Analysis
Claim 34
Appellants contend that “Stelting’s multi-tier web architecture alone
does not provide enough teaching to convert Dodds’ system into one that
performs multi-tier indexing of the same XML document as claimed in
Appellant’s Claim 34” (App. Br. 9). Appellants contend that their “indexing
limitations involve a client computer generating an index of an XML
document received from a server computer in a database tier that also
maintains an index of the XML document as a part of an index that
indexes a collection of XML documents” (id. at 9-10).
We are not persuaded. As the Examiner points out, Dodds teaches
that “computer 22 may be connected to a remote server or other computer
networks that permit the computer 22 to network with and share the stored
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XML document with other computers or to perform searches on XML stored
documents on other computer systems” (Dodds 1 ¶ 0020; FF 3; Ans. 19).
We agree with the Examiner that this section of Dodds reasonably suggests
the idea of the same XML document being present on multiple different
computers as well as the concept of searching XML documents on multiple
different computer systems to the artisan of ordinary creativity (FF 3).
We further agree with the Examiner that when Dodds is combined
with Stelting’s teaching of multi-tier software applications (FF 6) including
a client tier (FF 7) and a data server tier with a searchable relational database
(FF 9), the ordinary artisan would have found it obvious to have a capacity
to index and search XML documents in both tiers of the multi-tier
environment because Dodds teaches sharing documents with other computer
systems (FF 3) so that “it would be advantageous to have a method for
modeling an enterprise application to be performed over multiple tiers in a
distributed computer system” (Ans. 7).
Appellants also contend that the “mere fact that Dodds’ computer may
share an XML document with another computer or search for XML
documents on other systems does not suggest that multi-tier indexing
approach of Appellant’s claim 34” (App. Br. 12).
We are not persuaded. Appellants’ multi-tier indexing simply
requires the ability to index and search a database on two different tiers of a
multi-tier system. Stelting teaches the concept of “multi-tier software
applications running on different servers and communicating over a network
such as the Internet” (Stelting 1 ¶ 0003; FF 6). Stelting further teaches
performance of “some of the same services at each tier” (Stelting 6 ¶ 0043;
FF 12). This idea of multi-tier systems with redundant services at each tier,
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represents a predictable variation of a single tier system, particularly when
combined with Dodds’ express teaching to share an XML document with
other computers, including remote servers or computer networks (FF 3) and
to employ multiple computer systems for searching the XML documents
(FF 3). We therefore agree with the Examiner that the ordinary artisan
would have found it obvious to share and search such XML documents in
the multi-tier environment of Stelting, where such sharing would provide
known benefits such as allowing “the client device 110 to interact more
directly with the enterprise system 130 and its services by directly
exchanging business data or other data” (Stelting 3 ¶ 0026; FF 7).
Appellants further contend that
[T]he Examiner has taken two references each disclosing
single-tier indexing of an XML document and combined
them in the hopes that somehow the sum of the references
totals Appellant’s multi-tier indexing approaches of Claims
34 and 47. This rejection by the Examiner constitutes
nothing more than impermissible hindsight in an effort to
recreate Appellant’s invention.

(Reply Br. 3.)
While we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 36 (1966), we are also mindful that the Supreme Court has
clearly stated that “if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.” KSR, 550 U.S. at 417. In this
case, we agree with the Examiner that Dodds’ express teaching to search
XML documents on a relational database (FF 2) and to search and share
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XML documents on multiple, networked computers (FF 3) along with
Stelting’s teaching of a multi-tier environment (FF 6-8, 10, 11) which
encompasses access to relational databases (FF 9) renders it obvious to
permit indexing and querying of databases in both a client and server
computer tier as required by claim 34.
Claim 47
Appellants contend that
[C]laim 47 recites features not recited by claim 34 that
independently render claim 47 patentable over Dodds and
Stelting. For example, claim 47 features the client computer
receiving from the server computer “index entry data from
one or more index entries of a database index that indexes a
collection of XML document including the XML
document.”

(App. Br. 13-14.)
The Examiner finds that
Dobbs [sic Dodds] teaches “index entry data from one or
more index entries of a database index that indexes a
collection of XML document including the XML document”
can be interpreted as (i.e., as shown in FIG. 3 is a diagram
illustrating a database index that indexes a collection of
XML document including the XML document).
Furthermore, most of the limitations of this claim have been
addressed in point (B) above.

(Ans. 20.)
We find that Appellants have the better position. The Examiner does
not specifically address claim 47 in the rejection itself (see Ans. 11). The
Examiner’s response to Appellants’ argument relies upon Figure 3 of Dodds
and no other teaching within either Dodds or Stelting for a “client computer
of a server computer in a database tier receiving . . . index entry data from
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one or more index entries of a database index” as required by claim 47
(Ans. 20). While Figure 3 of Dodds may show indexing (FF 4), the
Examiner does not establish that either Dodds or Stelting teaches or suggests
sending index entry data from a server to a client computer as required by
claim 47. Further, the Examiner does not establish any teaching or reason
why the ordinary artisan would have found it obvious to send such index
entry data from a server to a client computer. We are therefore constrained
to reverse the rejection of claim 47.
Additional Claims
We note that Appellants grouped claims 50, 52-54, 56, and 58-65 with
the rejection of claim 47. As we review these claims, the central limitation
at issue in claim 47 is the step of “receiving . . . index entry data from one or
more index entries of a database” (see, e.g., App. Br. 14). This limitation is
not found in claims 50, 52-54, 56, and 58-62, so we group these claims with
claim 34, and affirm for the same reasons. This limitation is found in claims
63-65, so these claims are properly grouped with claim 47, and reversed for
the same reasons.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Dodds and Stelting render claim 34 obvious.
The evidence of record does not support the Examiner’s conclusion
that Dodds and Stelting render claim 47 obvious.

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SUMMARY
In summary, we affirm the rejection of claim 34 under 35 U.S.C. §
103(a) as obvious over Dodds and Stelting.  Pursuant to 37 C.F.R. §
41.37(c)(1), we also affirm the rejection of claims 36-38, 40, 42-46, 50, 52-
54, 56, 58-62, and 70-75 as these claims were not argued separately.
We reverse the rejection of claims 47-49 and 63-65 under 35 U.S.C. §
103(a) as obvious over Dodds and Stelting.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

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