Ex Parte Vincent

Patent Trial and Appeal BoardApr 29, 2016

12797584 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 121797,584 06/09/2010 Winchel Todd VINCENT III 23506 7590 05/03/2016 GARDNER GROFF GREENWALD & VILLANUEVA, PC 2018 POWERS FERRY ROAD SUITE 800 ATLANTA, GA 30339 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 3X01.l-012 lA 5088 EXAMINER ROBINSON, GRETA LEE ART UNIT PAPER NUMBER 2169 NOTIFICATION DATE DELIVERY MODE 05/03/2016 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): patent@gardnergroff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WINCHEL TODD VINCENT III Appeal2014-005691 Application 12/797,584 Technology Center 2100 Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and DENISE M. POTHIER, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1 and 3-26. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. STATEMENT OF THE CASE Appellant's invention normalizes schema so they conform to a schema framework. Spec. i-f 3. Appellant's schemas define formats for markup languages, such as eXtensible Markup Language (XML). Id. Appellant's schema framework are rules and best practices that a user follows when creating schema. Id. i-f 5. By following these rules, users can produce reusable schemas with less time and effort. Id. Claim 1 is illustrative: 1. An apparatus for normalizing markup language schema, comprising: logic configured to receive a markup language schema and to determine whether the markup language schema conforms to one or more rules of a schema framework rule set; and wherein if the logic determines that the markup language schema does not conform to the one or more rules, then the logic transforms the markup language schema into a normalized markup language schema that does conform to the one or more rules of the schema framework, wherein the markup language schema framework is embodied on a computer system. THE REJECTIONS The Examiner rejected claims 1 and 3-26 under 35 U.S.C. Â§ 101 as directed to ineligible subject matter. Final Act. 2. 1 The Examiner rejected claims 1, 14-17, and 19-23 under 35 U.S.C. Â§ 102(b) as anticipated by Schroeder (US 2002/0099735 Al; July 25, 2002). Final Act. 3-4. 1 Throughout this opinion, we refer to (1) the Final Rejection mailed May 30, 2013 ("Final Act."); (2) the Appeal Brief filed November 29, 2013 ("App. Br."); (3) the Examiner's Answer mailed February 13, 2014 ("Ans."); and (4) the Reply Brief filed April 11, 2014 ("Reply Br."). 2 The Examiner rejected claims 3 and 4 under 35 U.S.C. Â§ 103(a) as unpatentable over Schroeder and Hogg (US 2003/0105858 Al; June 5, 2003). Final Act. 4-5. The Examiner rejected claim 8 under 35 U.S.C. Â§ 103(a) as unpatentable over Schroeder and Atkinson (US 2004/0098667 Al; May 20, 2004). Final Act. 5-6. THEÂ§ 101 REJECTION Contentions The Examiner finds that claim 1 is directed to software per se, which is non-statutory. Final Act. 2. According to the Examiner, the Specification does not limit a "system" to hardware elements. Id. Appellant argues that claim 1 's "computer system" is hardware, not software. App. Br. 5. According to Appellant, the Specification discloses that repository 120 stores schema and resides on hardware. Id. Issue Has the Examiner erred in rejecting claims 1 and 3-26 by finding that the apparatus is directed to ineligible subject matter under Â§ 101? Analysis We sustain the Examiner'sÂ§ 101 rejection of claim 1. We agree with the Examiner that claim 1 encompasses solely software when interpreted in light of the Specification, and is, therefore, ineligible under Â§ 101. Final Act. 2. "Except for process claims, 'the eligible subject matter must exist in some physical or tangible form."' Allvoice Devs. US, LLC v. Microsoft 3 Corp., 612 F. App'x. 1009, 1017 (Fed. Cir. 2015) (non-precedential) (quoting Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1348 (Fed. Cir. 2014)). Regarding this physical or tangible form, Appellant argues that the recited "computer system" should be interpreted as hardware because the system includes a hardware repository. App. Br. 5. Even assuming, without deciding, that this is the case, claim 1 merely requires embodying on the computer system the "markup language schema framework" that the affirmatively-recited logic receives. The claim does not require that the affirmatively-recited logic be on the computer system, and the claim does not affirmatively recite either the markup language schema framework or the markup language schema framework rule set. In fact, claim 1 does not even provide express antecedent basis for the "markup language schema framework" (as opposed to antecedent basis for the markup language "schema framework rule set").2 In short, claim 1 does not specify any relationship between the "computer system" and the recited "apparatus" or its logic. Accordingly, the recited computer system cannot confer the requisite physical or tangible form to make the claimed subject matter eligible for patent protection. Moreover, although claim 1 's preamble recites an "apparatus," this does not end the patent-eligibility analysis. See In re Ferguson, 558 F.3d 1359, 1364 (Fed. Cir. 2009). Claim 1 must be construed in its entirety. And 2 We leave to the Examiner to determine whether claims 1 and 3-26 should be rejected under 35 U.S.C. Â§ 112, second paragraph as being indefinite, or whether the express recitation of "a schema framework rule set" provides sufficient implied antecedent basis for the recitation of "the markup language schema framework." 4 apart from the above-mentioned computer system, the only element in the body of the claim is "logic." Appellant does not point to, nor do we find, any definition of "logic" to so limit our interpretation apart from its plain and ordinary meaning. See App. Br. 5; Reply Br. 1-2. To be sure, in the context of computer hardware, one plain meaning of "digital logic" includes the digital circuits that perform Boolean algebra. TecSec, Inc. v. Int'l Bus. Machs. Corp, 731F.3d1336, 1348 (Fed. Cir. 2013). However, in programming, one plain meaning for "logic" is "the assertions, assumptions, and operations that define what a given program does." MICROSOFT COMPUTER DICTIONARY 272 (4th ed. 1999). Because the Specification does not limit the context to hardware circuits (see, e.g., Spec. i-f 15), a broad, but reasonable, interpretation of "logic" encompasses both meanings. So by the plain meaning of "logic" in the context of this claim, at least one embodiment falling within the scope of claim l can exist solely in software. Specifically, claim 1 does not recite that the logic is embodied on any medium. Nor does claim 1 recite that the logic includes any structural elements. Rather, the recited logic is a single, functionally claimed element. 3 Therefore, the breadth of claim 1 does not preclude an embodiment solely directed to software per se. 3 Should Appellant amend the claim, we leave to the Examiner to consider whether such amendments comply with the enablement requirement of 35 U.S.C. Â§ 112, first paragraph or whether the amended claim is directed to a single means. See Manual of Patent Examining Procedure (MPEP) Â§ 2164.08(a), Rev. 07.2015, 9th ed., (Nov. 2015) (providing instructions to Examiners in the case where a means is not recited in combination with another recited element). 5 Because the claim 1 encompasses software alone without a non- transitory medium or other physical embodiment, claim 1 does not fall within any statutory category under 35 U.S.C. Â§ 101. See Allvoice, 612 F. App'x. at 1018. We are, therefore, not persuaded that the Examiner erred in rejecting claim 1 under Â§ 101, and claims 3-26 not separately argued. THE ANTICIPATION REJECTION Contentions The Examiner finds that Schroeder discloses every recited element of claim 1. Final Act. 3. According to the Examiner, Schroeder's rule engine normalizes a markup language schema. Ans. 4 (citing Schroeder i-fi-1 46--4 7, 62-63, 66, Fig. 4). The Examiner finds that Schroeder's element tags teach the recited schema. Ans. 5. The Examiner further cites paragraph 54 describing the outbound processing and finds that "[t]he data structure is the schema." Id. Appellant argues that Shroeder' s process concerns XML instances, not markup-language schemas, as recited. App. Br. 6-7. Appellant contends that XML schemas are used to validate XML instances. Id. at 7. Issue Under Â§ 102, has the Examiner erred in rejecting claim 1 by finding that Schroeder discloses a markup language schema, as recited? Analysis The key disputed limitation of claim 1 recites, in pertinent part, a "markup language schema." To this end, we refer to the Specification for it 6 is the single best guide to claim construction. Phillips v. A WH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en bane). Appellant's Specification describes schemas in the context of Extensible Markup Language (XML) documents. Spec. i-f 3. Applications and organizations use XML formats to define, transmit, validate, and interpret data. Id. To accomplish this, XML uses customized tags. Id. For example, an XML tag with named "City" for the text "Sydney" could be represented in XML as "Sydney." Id. i-f 60. These tags are in an XML document. Id. i-f 3. Schemas define XML document formats. Id. For example, schemas can provide rules for an XML document to follow. Id. i-f 110. After the XML documents are created, the schema can then validate those documents to ensure they conform to the defined format. See id. i-fi-1107, 110. Although the recited schema is not limited to these specific examples, as is the case with other terms,4 this disclosure nevertheless informs our construction of the term. Consistent with these examples, one plain meaning of "schema" is "a description of the structure of an object." DICTIONARY OF COMPUTER SCIENCE, ENGINEERING, AND TECHNOLOGY 436 (Phillip A. Laplante ed. 2001 ). So a broad, but reasonable, interpretation of a markup-language schema is a description of the structure of a markup-language document, for example, by defining the markup-language format or providing rules for a document to follow (see, e.g., Spec. i-fi-13, 107, 110). Appellant argues, and we agree, that the Examiner erred in mapping Schroeder's XML data, i.e., XML tags and data, to the recited schema. App. Br. 6. We agree that the Examiner's rejection is deficient because 4 Appellant, for example, defines "'normalized' schema." Spec. i-f 54. 7 Schroeder normalizes the markup-language document, rather than a markup- language schema, as recited. Specifically, Schroeder translates data in one format to another. See generally Schroeder Abstract; i-fi-122, 28--40. To accomplish this, Schroeder uses XML as an intermediate format. See id., Fig. 4, cited in Final Act. 3. In particular, incoming data 400 in one format is transformed to two intermediate XML formats (404, 412), then to outbound data in another data format 416. Id. ff 50-54; Fig. 4. For example, Schroeder's Figure 7a shows an "Implementation Guide" document and the corresponding intermediate document containing XML tags. Id. i-fi-189-90. The Examiner has not shown that these XML tags can reasonably be interpreted as the recited markup language schema. Specifically, under the plain meaning of the term, the Examiner has not shown that XML tags describe how the XML is structured, for example, by defining an XML format or providing rules. To the contrary, Schroeder's collection of XML tags is the markup language itself. See Schroeder, Fig. 7 a. So although Schroeder's XML document could be validated by a schema to ensure the tags follow the defined format (App. Br. 7), Schroeder's XML tags themselves do not define that format. Nor has the Examiner explained that Schroeder's XML tags define any other markup-language format. The Examiner also cites Schroeder's paragraph 54 describing the outbound processing, and finds that "[t]he data structure is the schema." Ans. 5. But Schroeder's outbound data structure is the destination of the XML data. Schroeder i154. In other words, Schroeder translates the XML data into the outbound data format. Id.; see also id. Fig. 4. The Examiner, however, has not explained how this data structure describes how the XML is structured, for example, by defining the XML format. 8 Furthermore, the Examiner cites Schroeder's XML processing for the recited normalization. See Final Act. 3 (citing Schroeder i-fi-146--47, 62-63). In the cited paragraphs, Schroeder describes translating XML documents between formats. Schroeder i-fi-146--47, 62-63. Although a schema could be used to ensure the resulting XML document conforms to the format (App. Br. 7), Schroeder is silent about any schema to carry out this processing, let alone schema normalization. See id. Instead, Schroeder normalizes the XML document itself, not its schema. See Schroeder i1 54, cited in Ans. 5. We are, therefore, constrained by this record to conclude that the Examiner erred in rejecting independent claim 1, and dependent claims 14- 17 and 19-23 for similar reasons. Because this issue is dispositive regarding the Examiner's error in rejecting these claims, we need not address Appellant's other arguments. THE OBVIOUSNESS REJECTIONS The Examiner rejects claims 3 and 4 additionally citing Hogg5 for the limited purpose of showing that namespaces were known. Final Act. 4-5. Furthermore, the Examiner rejects claims 8 additionally citing Atkinson for the limited purpose of showing that publishing was known. Id. at 5-6. Because the Examiner has not shown that the additional cited references cure Schroeder's above-noted deficiencies, we also do not sustain the Examiner's obviousness rejections of claims 3, 4, and 8 (id. at 4-6) for similar reasons. 5 Although the Examiner misspells the reference as "Hog" (Fin. Act. 4-5), we nonetheless provide the correct spelling here for clarity. 9 CONCLUSION The Examiner did not err in rejecting claims 1 and 3-26 under Â§ 101, but erred in rejecting (1) claims 1, 14-17, and 19-23 under Â§ 102, and (2) claims 3, 4, and 8 underÂ§ 103. DECISION The Examiner's decision rejecting claims 1 and 3-26 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 10