Ex Parte Vardhan et al

Patent Trials and Appeals BoardAug 27, 2014

11535420 - (D) (P.T.A.B. Aug. 27, 2014)

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. 11/535,420 09/26/2006 Puneet Vardhan 2006P57012 US 7537 45113 7590 08/27/2014 Siemens Corporation Intellectual Property Department 170 Wood Avenue South Iselin, NJ 08830 EXAMINER BLACK, LINH ART UNIT PAPER NUMBER 2159 MAIL DATE DELIVERY MODE 08/27/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PUNEET VARDHAN and RONALD MARCHI ____________________ Appeal 2011-011171 Application 11/535,420 Technology Center 2100 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011171 Application 11/535,420 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1–8, 11–18, and 21. Claims 9, 10, 19, and 20 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. A. INVENTION Appellants’ invention is directed to parsing a schema across a system to support interoperable machine-to-machine interaction over a network (Abstract). B. ILLUSTRATIVE CLAIM 1. A method of parsing a schema across a system to support interoperable machine-to-machine interaction over a network, comprising the steps of: communicating a plurality of data in a data defining mark-up language file by a transport protocol stack; parsing said data defining mark-up language to determine at least one opaque schema element by a deep copy mechanism comprising the steps of: calling a deep copy helper to extract a plurality of opaque data corresponding to input type; filling a plurality of objects with said opaque data in a recursive manner; and returning said objects to convert to an opaque string; and translating said at least one opaque schema element to a mark-up language string element. C. REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: Bosworth US 2006/0117073 A1 Jun. 1, 2006. Smith US 2005/0246716 A1 Nov. 3, 2005. Claims 1–8, 11–18, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bosworth and Smith. Appeal 2011-011171 Application 11/535,420 3 II. ISSUE The issue before us is whether the Examiner has presented a prima facie case of obviousness in finding the combination of Bosworth and Smith teaches or would have suggested “parsing” data communicated “in a data defining mark-up language file” to “determine at least one opaque schema element by a deep copy mechanism,” wherein the “parsing” comprises the steps of “calling a deep copy helper to extract” opaque data, “filling a plurality of objects with said opaque data in a recursive manner” and “returning said objects to convert to an opaque string” (claim 1, emphases added). III. ANALYSIS Although Appellants concede “Bosworth does describe an opaque temporary XML object or document” (App. Br. 22), Appellants contend “[t]here is no teaching that any of the XML data or other mark-up language is parsed to determine an opaque schema element” (App. Br. 23). According to Appellants, the cited portions of Bosworth do not show “that any data is parsed at all, and certainly nothing teaches that any parsing determines an opaque object” (App. Br. 26). Appellants then contend Appellants are “unable to identify any teaching” in Smith and/or Bosworth “that would lead one of ordinary skill in the art to attempt to parse a data defining mark-up language to determine at least one opaque schema element by a deep copy mechanism,” as claimed (App. Br. 29). Appellants also contend Bosworth does not teach “filling a plurality of objects with said opaque data in a recursive manner” since “Bosworth doesn’t describe anything done in a recursive manner” (App. Br. 31); “returning said objects to convert to an opaque string” since “Bosworth does Appeal 2011-011171 Application 11/535,420 4 not teach anything regarding returning said objects to convert to an opaque string” (id.); or “translating said at least one opaque schema element to a mark-up language string element” since “[t]here is no opaque schema element, and certainly none translated to a markup language string element” (App. Br. 31-32). Although Appellants concede “Bosworth’s system performs data translations,” Bosworth does not disclose “the specific translation of a one opaque schema element to a mark-up language string element” as claimed (App. Br. 33). After reviewing the record on appeal, we find the preponderance of evidence supports the Appellants’ position, even though we agree with the Examiner that: (1) “Bosworth discloses web services which uses Simple Object Access Protocol (SOAP) to exchange XML messages,” wherein the server “translate[s] data from the external system into data nodes” and (2), “Bosworth does describe an opaque temporary XML object or document” and (3), Smith discloses “an XPath parser” (Ans. 11–12 and 14). However, we are unsure where in the cited portions there is a teaching or suggestion of “parsing” a data defining mark-up language “to determine at least one opaque schema element by a deep copy mechanism,” as required in claim 1. In particular, we are unsure where in Bosworth is the teaching or suggestion of an opaque schema element determined from parsing the mark-up data by a deep copy mechanism. We are also unsure where in the cited references there is a teaching or suggestion of “filling a plurality of objects with said opaque data in a recursive manner,” “returning said objects to convert to an opaque string,” or “translating said at least one opaque schema element to a mark-up language string element” as required by claim 1. That is, we are unsure where in the Appeal 2011-011171 Application 11/535,420 5 cited references there is a teaching or suggestion of filling objects in a recursive manner wherein that object is converted to an opaque string, or a teaching or suggestion of translating an opaque schema element to a string element. The PTO bears the initial burden of showing a prima facie case of obviousness. In re Sullivan, 498 F.3d 1345, 1351 (Fed. Cir. 2007). Only when a prima facie case of obviousness is established by the Examiner, does the burden then shift to the applicant to come forward with evidence and/or argument supporting patentability. In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002). However, the prima facie burden has not been met and the rejection does not adhere to the minimal requirements of 35 U.S.C. § 132 “when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). Here, we find the Examiner’s failure to clearly map the claim limitations to the cited portions of the references prevents Appellants from understanding the basis for the rejection. As Appellants argue, Appellants are “unable to identify any teaching” in Smith and/or Bosworth of the claimed language (App. Br. 29). Therefore, we find the Examiner has failed to meet the initial burden of establishing a prima facie case of obviousness by failing to set forth where all the claimed features are taught or suggested by the corresponding relevant portions of the cited references. We note in an ex parte appeal, the Board “is basically a board of review — we review . . . rejections made by patent examiners.” Ex parte Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). “The review authorized by 35 U.S.C. Section 134 is not a process whereby the examiner . . . invite[s] Appeal 2011-011171 Application 11/535,420 6 the [B]oard to examine the application and resolve patentability in the first instance.” Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). Consequently, we will not engage in the de novo examination required to map each element of Appellants’ claims to the references. We leave any further consideration of references to the Examiner. While the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. For essentially the same reasons argued by Appellants in the Briefs, on this record, we cannot affirm the Examiner’s § 103 rejection of independent claim 1. Because we have reversed the § 103 rejection for each independent claim before us on appeal, we also reverse the Examiner’s obviousness rejection of each dependent claim. IV. CONCLUSION AND DECISION The Examiner’s rejection of claims 1-11, 13-17, 19-29, and 31-36 under 35 U.S.C. § 103(a) is reversed. REVERSED lp