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Another Bilski Decision From the BPAI

By Peter Zura

Ex Parte Nawathe et al., Appeal No. 2007-3360, February 9, 2009

The applicants claimed a system and method for representing a normalized eXtensible Markup Language (XML) data structure as fixed sets of tables in a relational database (RDB). The examiner rejected the claims under 35 U.S.C. §101 as being directed to non-statutory subject matter.

Claim 1 recited

1. A computerized method comprising:
inputting multiple extensible Markup Language (XML) documents;
creating a data representation of said multiple XML documents; and
reducing redundancy across said multiple XML documents via a fixed set of tables.

According to the BPAI,

[T]he recited method, while being computerized, is not tied to a particular machine for executing the claimed steps. We find that the computerized recitation purports to a general purpose processor (Fig. 2.), as opposed to a particular computer specifically programmed for executing the steps of the claimed method [271 Note: what's the difference?]. Next, while it can be argued that the creating step transforms the input XML documents into represented data (i.e. a different state), we find that the documents are not an article (i.e. physical entities). Rather, they are mere data that represent such entities. Similarly, while it can be argued that the redundancy reducing step transforms the XML documents into a smaller set of the documents, they are not an article being transformed.

However, a related apparatus claim recited

25. An apparatus comprising:
means for creating a graph based data structure representing multiple standard XML tree structures;
means for transforming said graph based data structure to a fixed set of tables; and
means for using said fixed set of tables.

Here, the BPAI found the language rendered statutory subject matter into the claim:

Appellants argue that the recited apparatus refers to the general purpose computer depicted in Figure 2. (App. Br. 33.) Further, Appellants submit that the different means recited in the claim correspond to the different modules in the computer for performing the recited functions. (Id. at 12.) We find that since the claim recites a physical apparatus with physical modules for transforming a data structure into a fixed set of tables, it is not a directed to an abstract idea. Therefore, Appellants have shown that the Examiner erred in finding that claim 25 is directed to an abstract idea. Thus, we will not sustain this rejection.

Apparently, the Board did not see fit to explain why a "computerized method" to a "general purpose computer" is nonstatutory, while an "apparatus" directed to the same general purpose computer is. The implication here is that, if the method claim recited the computer, the claims would be statutory. However, other BPAI precedent (Ex parte Gutta) states that this would not be enough.

Read the decision here (link)

Read the application here (link)

Full post as published by Two-Seventy-One Patent Blog on February 11, 2009 (boomark / email).