Ex Parte Srivastava

Patent Trial and Appeal Board

Nov 14, 2012

10711791 (P.T.A.B. Nov. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte RAHUL SRIVASTAVA

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Appeal 2009-015081
Application 10/711,791
Technology Center 2100
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Before JOHN A. JEFFERY, ERIC B. CHEN, and JOHN A. EVANS,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-31, 41-45, and 47-49. Claims 32-40 and 46 have been withdrawn.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to a parser that provides portion
identifiers (e.g., Xpath(s) for XML data files) of data elements to
applications. (Abstract.)
Claims 1 and 49 are exemplary, with disputed limitations in italics:
1. A method of parsing a data file containing a plurality of
data elements according to a markup language, said method being
implemented in a parser, said method comprising:
receiving a file identifier of said data file with an instruction to
parse said data file from an application implemented external to said
parser;
retrieving a first data element from said data file, wherein said
first data element is comprised in said plurality of data elements;
determining a portion identifier of said first data element,
wherein said portion identifier indicates a relative location of said first
data element with respect to another data element in said data file
according to said markup language; and
providing in association said portion identifier and said first
data element to said application.

49. A digital processing system comprising:
an application and an event based parser, wherein said parser is
implemented external to said application such that multiple
applications can use said parser,
wherein said application is designed to instruct said event based
parser to parse a data file of interest, said data file contains a plurality
of data elements,
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in response, said parser designed to retrieve each of said
plurality of data elements from said data file,
said parser to set a corresponding portion identifier of each of
said plurality of data elements to equal a relative location of the data
element with respect to another data element in said data file
according to said markup language,
said parser to provide in association each of said plurality of
data elements and corresponding portion identifier to said application
as a corresponding one of a sequence of events without receiving a
request for next data element from said application.

Claim 49 stands rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1-9, 12-29, 41-45, and 47-49 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over Nielsen (U.S. Patent Application Publication
No. 2004/0205567 A1; Oct. 14, 2004) and Cseri (U.S. Patent Application
Publication No. 2003/0046317 A1; Mar. 6, 2003).
Claims 10, 11, 30, and 31 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Nielsen, Cseri, and Imamura (U.S. Patent Application
Publication No. 2004/0261019 A1; Dec. 23, 2004).1

§ 101 Rejection
With respect to independent claim 49, we are unpersuaded by
Appellant’s arguments (App. Br. 7-8; see also Reply Br. 2) that this claim
complies with 35 U.S.C. § 101 as statutory subject matter.

1 Appellant does not present any arguments with respect to the rejection of
claims 10, 11, 30, and 31 under 35 U.S.C. §103(a). Thus, any such
arguments are deemed to be waived.
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The Examiner found that the “instant claim language [of a digital
processing system in the preamble] does not specify that the claimed
invention includes hardware” and thus, concluded that “the language of the
claim merely describes a computer program per se.” (Ans. 3.) We agree
with the Examiner.
The preamble of claim 49 recites “[a] digital processing system”
(emphasis added) and the body of the claim recites “an event based parser”
(emphasis added). Figure 11 of Appellant’s Specification illustrates a
system 1000. Appellant’s Specification further explains that “Figure 11 is a
block diagram illustrating the details of how various aspects of the invention
may be implemented substantially in the form of software in an embodiment
of the present invention” and that the “[s]ystem 1100 may contain one or
more processors” (i.e., hardware). (¶ [0138] (emphasis added).)
Furthermore, a relevant technical definition of “parser” is “[a]n application
or device that breaks data into smaller chunks so that an application can act
on the information” (emphasis added). MICROSOFT® COMPUTER
DICTIONARY 392 (5th ed. 2002). Based on the Specification and the relevant
technical definition of “parser”, the broadest reasonable interpretation of the
claim terms “system” and “parser” encompasses both software and
hardware. Because claim 49 covers both statutory and non-statutory
embodiments, a 35 U.S.C. § 101 rejection is proper.
Appellant argues that “Bilski further expressly states, ‘The raw
materials of many information age processes, however, are electronic
signals and electronically manipulated data’” (App. Br. 8 (emphasis in
original); see also Reply Br. 2) and that “the claim is not an ‘abstract idea’
as alleged by the Examiner since it does not pre-empt the use of any
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fundamental principles” (App. Br. 8). However, the machine-or-
transformation test is directed towards process claims. See Bilski v. Kappos,
130 S.Ct. 3218, 3227 (2010) (“[T]he machine-or-transformation test is a
useful and important clue, an investigative tool, for determining whether
some claimed inventions are processes under § 101.”) Furthermore, the
Examiner’s rejection of claim 49 as based on the rationale that the claim was
directed to a computer program per se, rather an abstract idea. (Ans. 3.)
Therefore, we agree with the Examiner that claim 49 is directed to a
computer program per se.
Accordingly, we sustain the rejection of independent claim 49 under
35 U.S.C. § 101.

§ 103 Rejection
Claims 1-4, 6-9, 12-29, 41-45, and 47-49
We are unpersuaded by Appellant’s arguments (App. Br. 13) that the
combination of Nielsen and Cseri would not have rendered obvious
independent claim 1, which includes the limitation “said method being
implemented in a parser.”
The Examiner found that a markup document of Nielsen, which is
received and read by the parser 130, corresponds to the limitation “said
method being implemented in a parser.” (Ans. 8; Nielsen, ¶ [0051].) We
agree with the Examiner.
Nielsen relates to “testing of Web services, and more particularly, to a
method and system for imbedding XML fragments in XML documents
during run-time.” (¶ [0001].) Figure 3 of Nielsen illustrates a flow chart of
the steps performed by the dynamic document modification module or
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mechanism (DDMM) 120. (¶ [0051].) Nielson explains that “a markup
document (e.g., an XML test suite file) is received and read by the parser
130” (i.e., the claimed “parser”) and “the parser 130 generates an internal
representation (e.g., a DOM representation) of the test suite file.” (Id.)
Therefore, Nielsen teaches “said method being implemented in a parser.”
Appellant argues that “[t]he Examiner ignores the boundaries of
parser 140 and attempts to map the various claimed features on operations
external to parser 130 (in particular injection mechanism 140) onto various
features of claim 1” and “one skilled in the relevant arts would not equate
the claimed parser to the combination of parser and injection mechanism 140
of Figure 2” and “would not integrate the features described in injection
mechanism 140 into parser 130.” (App. Br. 13.) However, this argument is
not commensurate in scope with claim 1, because the claim does not require
the method to be implemented exclusively in the parser.
Thus, we agree with the Examiner that the combination of Nielsen and
Cseri would have rendered obvious independent claim 1, which includes the
limitation “said method being implemented in a parser.”
We are also unpersuaded by Appellant’s arguments (App. Br. 13-14)
that the combination of Nielsen and Cseri would not have rendered obvious
independent claim 1, which includes the limitation “with an instruction to
parse said data file from an application implemented external to said parser.”
The Examiner acknowledged that Nielsen does not disclose the
limitation “with an instruction to parse said data file from an application
implemented external to said parser” and therefore, relied on Cseri for
teaching transmission of a XML document from an XML formatting
module 210 to an XML parser 310 (Ans. 5, 8-9; Cseri, ¶ [0062]). The
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Examiner concluded that “[i]t would have been obvious to one of ordinary
skill in the art at the time of the invention to apply Cseri to Nielsen.”
(Ans. 5.) We agree with the Examiner.
Cseri relates to “methods and systems for tokenizing text-based data
formats such as XML.” (¶ [0001].) Figure 2 of Cseri illustrates an XML
document 250 transmitted from a transmitting computing device 200 having
an XML formatting module 210 (i.e., the claimed “application”) to a
receiving computing device 300 having an XML parser 310 (i.e., the
claimed “parser”) (¶ [0062]), such that the XML formatting module 210 is
external to the XML parser 310 (fig. 2). “[A]t the receiving computing
device 300, a piece of code 310, the parser, parses the XML formatted
document.” (¶ [0062.) Thus, Cseri teaches “with an instruction to parse said
data file from an application implemented external to said parser.”
The combination of Cseri and Nielsen is nothing more than
incorporating the known configuration of Cseri for the XML formatting
module 210 external to the XML parser 310, with the known DDMM 120 of
Nielsen, to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007). Therefore, we agree with the Examiner (Ans. 5) that
modifying Nielsen to include the XML formatting module 210 external to
the XML parser 310, as taught by Cseri, would have been obvious.
Appellant argues that “a skilled practitioner, by reading the disclosure
of the subject application, would readily understand that each of the claimed
application and the claimed parser inherently have independent existence”
and “the Examiner would be required to show similar independent blocks in
the art of record in mapping the claimed application and claimed parser.”
(App. Br. 14.) However, as discussed previously, the Examiner cited to
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Figure 2 of Cseri (Ans. 9), which expressly illustrates that the XML
formatting module 210 (i.e., the claimed “application”) is external to the
XML parser 310 (i.e., the claimed “parser”).
Appellant also argues that “no parser of Cseri provides to an
application the portion identifier and the data element in association, as
claimed.” (Reply Br. 4.) In particular, Appellant argues that “the three
Figures merely show the transmission of an XML document from a
transmitting device 200 to a receiving device 300 (containing XML
parser(s)).” (Id.) As discussed previously, the Examiner found that the
XML formatting module 210, located within the transmitting device 200 of
Cseri, corresponds to the claimed “application” and the XML parser 310,
located within the receiving device 300 of Cseri, corresponds to the claimed
“parser.” (Ans. 8-9.)
Thus, we agree with the Examiner that the combination of Nielsen and
Cseri would have rendered obvious independent claim 1, which includes the
limitation “with an instruction to parse said data file from an application
implemented external to said parser.”
We are further unpersuaded by Appellant’s arguments (App. Br. 15;
see also Reply Br. 2-3) that the combination of Nielsen and Cseri would not
have rendered obvious independent claim 1, which includes the limitation
“retrieving a first data element from said data file . . . providing in
association said portion identifier and said first data element to said
application.”
The Examiner found that receiving and reading the test suite file 110
of Nielsen by the parser 130 corresponds to the limitation “retrieving a first
data element from said data file.” (Ans. 5, 9; Nielsen, ¶ [0051].) The
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Examiner further found that the XPath of Nielsen corresponds to the
limitation “providing in association said portion identifier and said first data
element to said application.” (Ans. 9-10; Nielsen, ¶ [0051].) We agree with
the Examiner.
As discussed previously, Nielson explains that “a markup document
(e.g., an XML test suite file) is received and read by the parser 130” and “the
parser 130 generates an internal representation (e.g., a DOM representation)
of the test suite file” (i.e., the claimed “first data element”). (¶ [0051].)
Because the XML test suite file 110 of Nielson is received by the parser 130
to generate a DOM representation, Nielson teaches “retrieving a first data
element from said data file.” Furthermore, Nielson explains that “[o]ne
aspect of the present invention is the use of a referencing technology, such
as Xpath for referencing a portion of the same document (i.e., a portion
internal to the document)” (¶ [0052]) and that Xpath is used to reference
nodes in the XML tree (see ¶¶ [0061]-[0062]). Therefore, Nielson teaches
“providing in association said portion identifier and said first data element to
said application.”
Appellant argues “that claim 1 requires that the first data element be
retrieved from the data file, and such a data element be provided in
association with the portion identifier to the application,” however, “the
XPATH in the two paragraphs [[0052] and [0062] of Nielsen] . . . does not
point to a data element retrieved from the data file.” (App. Br. 15
(emphasis in original).) In particular, Appellant argues that because Nielson
states “the test document is not modified by the mechanisms of the present
invention” (¶ [0069]), based on Nielson “it is clear that the data elements
relied upon by the Examiner, and for which the XPath is determined, are not
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retrieved from the XML file.” (Reply Br. 3 (emphasis in original).)
However, this argument is not commensurate in scope with claim 1, because
the claim does not expressly require the data file to contain the data
elements. The claim language “retrieving a first data element from said data
file” is broad enough to encompass the XML test suite file 110 of Nielson
that is received and read by the parser 130.
Thus, we agree with the Examiner that the combination of Nielsen and
Cseri would have rendered obvious independent claim 1, which includes the
limitation “retrieving a first data element from said data file . . . providing in
association said portion identifier and said first data element to said
application.”
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claims 2-4 and 6-9 depend from claim 1, and Appellant
has not presented any additional substantive arguments with respect to these
claims. Therefore, we sustain the rejection of claims 2-4 and 6-9 under 35
U.S.C. § 103(a), for the same reasons discussed with respect to independent
claim 1.
Independent claims 12, 21, 47, and 49 recite limitations similar to
those discussed with respect to independent claim 1, and Appellant has not
presented any additional substantive arguments with respect to these claims.
We sustain the rejection of claims 12, 21, 47, and 49, as well as dependent
claims 13-20, 22-29, 41-45, and 48, for the same reasons discussed with
respect to claim 1.

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Dependent Claim 5
We are unpersuaded by Appellant’s arguments (App. Br. 16; see also
Reply Br. 5-6) that the combination of Nielsen and Cseri would not have
rendered obvious dependent claim 5, which includes the limitation “wherein
said parser is an event-based parser.”
The Examiner acknowledged that Nielsen does not disclose the
limitation “wherein said parser is an event-based parser” (Ans. 5) and
therefore, relied on Cseri for teaching a Simple API for XML transmission
(SAX) (Ans. 5-6, 10-11; Cseri, ¶ [0028]). The Examiner concluded that “[i]t
would have been obvious to one of ordinary skill in the art at the time of the
invention to apply Cseri to Nielsen.” (Ans. 6.) We agree with the
Examiner.
Cseri explains that “SAX is the Simple API for XML, an event-based
Java application programming interface implemented by many XML
parsers.” (¶ [0028].) Therefore, Cseri teaches the limitation “wherein said
parser is an event-based parser.”
Combining Nielsen and Cseri is no more than the simple substitution
of the SAX event-based Java application implemented in the XML parser of
Cseri for the parser 130 of Nielsen, to yield predictable results. See KSR,
550 U.S. at 417. Therefore, we agree with the Examiner (Ans. 5-6) that
modifying Nielsen to include the SAX event-based Java application
implemented in the XML parser, as taught by Cseri, would have been
obvious.
Appellant argues that “the modification proposed by the Examiner
(based on Cseri) would render the embodiments of Nielsen inoperative.”
(App. Br. 16.) Similarly, Appellant argues “that replacing the DOM parser
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of Nielsen with a SAX parser would require at least a substantial amount of
reengineering for several reasons.” (Reply Br. 5-6.) However, Appellants
has not provided any persuasive evidence to support the argument that the
combination of Nielsen and Cseri would render Nielsen inoperable or
require substantial reengineering. Arguments of counsel cannot take the
place of factually supported objective evidence. See, e.g., In re Huang, 100
F.3d 135, 139-40 (Fed. Cir. 1996).
Thus, we agree with the Examiner that the combination of Nielsen and
Cseri would have rendered obvious dependent claim 5, which includes the
limitation “wherein said parser is an event-based parser.”
Accordingly, we sustain the rejection of dependent claim 5 under 35
U.S.C. § 103(a).

DECISION
The Examiner’s decision to reject claim 49 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s decision to reject claims 1-31, 41-45, and 47-49
under 35 U.S.C. § 103(a) 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

ELD