Ex Parte Feng - Page 10


                Appeal 2007-1505                                                                              
                Application 10/279,481                                                                        
                a computer implemented method of evolving (Su calls it transforming) one                      
                XML schema to another.  The group of transformation operations includes:                      
                Insert, Delete, and Relabel (which is similar to Appellant’s replacement).                    
                However, it is not readily apparent to us how either Su or Ripley teach or                    
                suggest the validation step as claimed.  Thus, we reverse the Examiner’s                      
                rejection of claims 2 through 5 and 8 for the reasons discussed supra with                    
                respect to claims 1 and 16.                                                                   
                      Claim 11.                                                                               
                      Claim 11 recites in the preamble “[a] computer-implemented method                       
                for determining whether a first set of XML documents contains a second set                    
                of XML documents, said first set of XML documents being the set of all                        
                valid XML documents of a first XML schema and said second set of XML                          
                documents being the set of all valid XML documents of a second XML                            
                schema.”  The claim further recites various steps that are performed on the                   
                two XML schemas, and recites “returning false if said first element list does                 
                not contain said second element list.”  As the method steps recited in the                    
                claim relate to the elements recited in the claim preamble, we consider the                   
                preamble to further limit the claim.  Thus, we find that the scope of claim 11                
                is limited to a method where two sets of documents (of different schema or                    
                format) are compared.                                                                         
                      As discussed above in our findings of fact, Su teaches a system for                     
                transforming data from one XML schema to another XML schema.   Su’s                           
                system analyses and compares the two schemas to determine the operations                      
                required to transform documents from one schema to another.  We are                           
                unable to find that Su teaches comparing documents of the schema to each                      


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