Timebase Pty Ltd v. Thomson Corporation, The

Filing 266

Declaration of Michael Stonebraker in Support of 265 Response in Opposition to Motion filed by Thomson Corporation, The, West Publishing Corporation, West Services. (Attachments: # 1 Exhibit(s) A-1, # 2 Exhibit(s) A-2, # 3 Exhibit(s) A-3, # 4 Exhibit(s) A-4, # 5 Exhibit(s) A-5, # 6 Exhibit(s) A-6, # 7 Exhibit(s) A-7, # 8 Exhibit(s) A-8)(Wagner, Kevin)

EXHIBIT A-8

"l

Fay is directed towards the con trol of different versions of a document.

parti cul arl y with respect 10 Jock in g Olll port ions of data and multi -u ser editing. Fay

stresses data check out , loc king and uni versal "shadow" metadata, which is in stark
contrast to the claimed invention, whi ch provides a structure 10 enable user friendly
navigation through a comp lex multidimensional data space.

- -- -

Fayprovides-a hierarchical structurein " hTch" docurrie"iat,forexample;Js di vided
w
a

into di ffe rent nodes of the hierarchical structure. Each node may contain content.
Various parts of the hierarchical ., truclure are then "locked Qut" to enable a user to edit
the content of a node. whilst preventing multiple access from other users. Other users
are. however, able to view such a " locked out" nodc. In contrast. the hierarc hical
structure of Claim 34 of the present application is directed to navigation (viewi ng) of a
muhidimensional space of a structured data space.
Fny presents an hierarchical structure in which each node, or subtree, contains

infonnation, such as the con tent of a chapter or sections within a chapter. Conversely,
Claim 34 defines a structure in which only the terminal nodes contain content. The
higher level nodes do not contain content themselves, rather the higher level nodes
contain information relating to a parent node, a position indicator indicating a position
relative to a sibling node , and an identifier. Further, the pOSition indicator in each higher
level node indicates a position of the respecti ve higher level node relati ve to a sibling
node in the hierarchical structure of the electronic publication . The information in the
higher level nodes is utili sed to organi se the teonina! nodes in accordance with the
structure of the electronic publication under consideration.
Thus, Applicantc; submit that Claim 34 is neither taught nor suggested by the
disclosure of Fay. Applicants submit that the claims that depend from Claim 34 are
novel over Fay for at least the reasons stated above in respect of Claim 34.
Further. in respect of the objection 10 dependent claim 38, Fay is concerned with
the process of modifying a given dataset. A user "locks o ut" a portion of a document,
ed its the ponio n and then stores the "modified po rtion" in place of the origina l portion in
the same node of the hierarchical 'structu re. Claim 38 uses the express ion "storing a
modified portioll " to rel ate to the capability of storing multipl e versi o ns of nominal data
wi th in

;L1l

overall struclU re of a ·published e lectronic document. Thus. two ve rsio ns of a

,,".....1<,I" -.:nl Afll:r Offirc Ac(i on

M~jkd

July 8. 2«)4

!i':fi~ ' No. 09f689.927
"Jg~ :!J ur)8

TB040946

"'
provision o f legislat ion might be slored , for example , in two different termin al nodes as
d istinct predefi ned pOrt ions. 'Publishing the elec tronic " ocument in the mann er of the
d

invention aJIows the two different versions to be stored in the hierarchical structure
defin ed, by using hi g her level nodes to determine appropri ate locations w ith in the
structure for .those te rminal nodes containing the respective versions.

_. - ---rridependenrCfrurns-yj.-aflcC74 have been amended inarnanncr simi lar to lhat- ' - -

- - -- -

proposed above in respect of Claim 34, by incorporating the features of Claims 55 and
57, and Claims 75 and??, respectively_ Applicants submit that Claims 54 and 74 and the
claims that depend therefrom are allowable over Fay for the reasons presented above in
respect of C laim 34.

9.

Claims 9, 20, and 31 were rejected under 3S U.S.C. § 103(a) a.c; being

unpa tentable ovcr U.s. Patent No. 5,963,208 (Dolan et al.).
Claim 9 depends from independent claim I, Claim 20 depends from independent
Claim 12 , and Claim 3 1 depends from independent Claim 23.
Independent Claim 1 has been amended. Support for the amendment is found in
Claims 2 and 3, the fe atures of which are now recited in the amended fonn of Claim I .
Claims 2 and 3 have becn cancelled.
Claim I is directed to providing and displaying a first point and a second point on
respective fi rst and second axes to enable nav igation of a multidimensional space
containi ng an electronic publication fonned fro m p redefined portions of text-based data.
The Applicants submit that the term "mullidimensional space" would .be readily
understood by a person skilled in ~hc art to describe a space defi ned ·by a plurality of
.intersecting axes. Clai m 1 has been amended to recite that the multidimensional space

has three or more d imensions, as suppon ed at page 10, lines 5·6 oflntemation al
Publication No. WO 98/34 179 (PCT/AU98/00050). which is incorporated into this
application by cross-reference.
The mu ltidimensional space of c laim I is defin ed by axes corresponding

[Q

logical

connec tions among predefined portions of an e lec tronic .publ icat ion, and an y logical
connec tions thaI may

exis t 'b~lween

the predefi ned portions of·the ·electro ni c publ ic:"l lio.o

and predefi ned ponions of any ·further ciccu·on ic publicali on data in ,the mu lti dimensio nal
AIl I(, l\Jm,;,1l Arkr Offi ce "eliun ,.bikd Ju l{S.

2Q)J

Scri31 No. 0')J6119.9Z7

I'a!;!: 2<1 or 38

TB040947

o.
o

o

space , as supported by page 1 all ines lito 22, and page 8. line 15 to page 9, line 2.
Further s upport is found at page 9, lines 9-26

of International Publication No . WO

98/34 179 (pCf/AU98JO0050), which is incorporated into this application by croSs-

reference. Page 12 of the description of this application desc ribes a multid imensional
space containing an electronic publication that may be navigated in respect of a number
of viewing axes. The axes are orthogonal 10 one another, as described in the specification
at page 12, lines 16-17. The electronic publication is not restricted to being navigated in
a sequential manner, as is the case with conventional paper-based publications. Claim 1

provides multi-dimensional navigation through a fixed data space defined by the
predefined portions of [he electronic publication.
The first and second points and information pertaining thereto are presented in
first and second display regions 10 provide the user with the ability to navigate a
document along any number of provided axes. whilst maintaining context for the portion
oftexi currently being viewed. Importantly, the second axis is derived from the first
point, ensuring that the information displayed in the second display region relating to the
second point on the second axis is linked to the predefined porti on currently being viewed
in the first display region.
Claim 9 restricts the predefined portion to a provision of legislation.

Dulan provides a seamlessly extensible two-dimensional hierarchy allowing

access to arbitrary data. Dolan provides a portion displayed in a first display region
(Figure I , 104). A first point on a fust axis is displayed in a second display region 102 to
provide a user with context for the displayed portion. The ·hierarchical structure
presented in the second display region 102 relates to a two-dimensional space. The
structure provides a user with contex.t for a currently viewed portion by presenting
,

multiple points along a first axis. Thus. a second point may only be selected from a fixed
hierarchy relating lo a firs t axis. Dolan does not present and display a second point on a
second orthogonal axis and infomlatioll pertaining thereto

10

provide the user with

sufficient CO nlex.t for the displayed portion to enable the use r to navigate a
multidimensional space of three or more d ime ns io n5.

'\lI1c"Jrncn~

Arter Office "clio ... Ma iled Ju ly H. 20()-I
No. O'Jf689.921
Pa:;c 25 of]8
Scr;~1

T8040948

.

"

"

,.

Applicants submit that Dolall does not teach navigation of a muh idimensio nal
'space defined by ax es corresponding to lo gical connections among predefin ed portion s or"

an electroni c document. Further, Dolan fail s to leach or suggest the provi sion of first and
second displ ay reg ions and the further di splay of first and second poi nts, the second point
being deri ved from the fi rst point, to provide a user with context fo r a d isplayed

, -- - -

-

predefined portion oflhe eiectronic

document Accordingiy, Appiic;

ntssubmit that Ihe- -

.-

features of Claim I are neither taught nor suggested, or even alluded to. by Dolall and
thus Claim I an,d pending dependent claims 4 to 12, including Claim 9, arc novel and
non-obvious in light of Dolan .
Independent.c1aims 12 and 23 have bcen amended in a similar manner to the
amendments described above in relation to cl aim I, -by incorporating the features of
Claims 13 and 14, and C laims 24 and 25, respectively. Applicants submit that C laims 12
and 23 are non-obvious in light of Dolan and for at least that reason , dependent Claims
20 and 31 are also non -obvious in light of Dolall .

10,

Claims 8, 10.11, 19,21-22,30, and 32-33 were rejected under 35 U.s,c. §

103(a) as being u npa tentable onr U.s. Patent No. 5,963,208 (Dolan et al.) as applied
to claim 2, a nd further in view of U.S. Patent No. 6,144,962 (Weinberg et at ).
Applicants submit that independent C laims 1; 12 and 23 nre novel and nonobvious in light of Dolan and further in view of Weinberg.
Independent C laim 1 has been amended. Support for the amendment is found in
C laims 2 and 3, the features of which are now recited in the amended fonn of Claim l.
Claims 2 and 3 have 'been cancelled.
Claim 1 ·i s directed to ,providing and di splaying a fi rst point ·and a second point on
respective first and second axes to enable navigatio n of a multidimen sional space
containing an electronic publication formed fro m predefined ]X>rtiom of text-based data.
Claim I has been amended to recite that the multidimensional space has three or more
dimen sions , as suppo rted at page 10 , lines 5-6 o f International Publication No. WO .
98/34179 (PCf/AU98 /00050). which is incorpo rated into this application by cross-

rd efe nce.

,.
. ""k.:rWmem IHlcr omc~ A Cl ion Maile.. July II, 2C~

Scnal l"o.09/U9.'l21
P~ 8c 26 of J8

T8040949

..
,

"

The multidimensional space of claim I is defined by axes corresponding 10 logical
connections among predefined portions of an electronic publication, and any logicnl
connections that may exist between the predefined portions of the electronic publication
and predefined pOI1ions of any further clcclConic publication data in the multidimensional
space, as supported by page 1 at lines 11 to 22, and-page 8, line 15 to page 9, line 2.
Further support is found at page 9, lines 9-26 of Intern ational Publication No. WO

98134179 (PCTIAU981000S0), which is incorporated into this application by crossreference. Page 12 of the description of this application describes a multidimensional
space containing an electronic publication that may be navigated in respect of a number
of viewing axes. The axes are orthogomtllo one another, as described in the speci fication
at page 12, lines 16-17 . The electronic publication is nOI restricted to being navigated in
a sequential manner, as is the case with conventional paper-based publicati ons. Claim 1

provides multi-dimen sionaJ navigation through a fixed data space defined by the
predefined portions of the electronic publication.
The first and second points and information pertaining thereto are presented in
first and second display regions to provide the user with the ability to navigate a
document along any number of provided axes, whilst maintaining context for the ponion
of text currently being viewed. Importantly , the second axis is derived from the first
point, ensuring that the informat ion displayed in the second di splay region rel ating to the
second point on the second axis is linked to the predefined portion currently being viewed '
in the first display region.
Claim 8 restri cts the second axis to time-based versions of the selected one of the
predefined portions. Thus, the second axis is a temporal axis in the multidimensional
space along which a user can navigate various versions of the selected predefined portion,
as those versions exis ted through time .
Claim 10 restricts the second a)(is to representing search criteria and results
corres pond ing to the selected predefined portion displayed in the first display region.
Thus , a user is provided with search resu lts criteria and results to provide further context
for the di splayed predefined portion.

Am\;ndmcnl After orn~'(; f\Cl ion MJilcli Ju ly 8. 2C04
Scri~l No. 091689.927

l'agc27 or 38

T8040950

.•,

'

.
Dolan provides a seamlcss ly extensible two-d imensiona l hierarchy allowing

. access 'to arbitra"fv diltn : Dolan provide's a portion displayed in a

first dj'splay regio~

(figu re I, 104). A fi rst point on a first axis is displayed in a second display region 102 to
prov ide a user with context for the displayed portio n. The hierarchical structure
presented in th e second dis pl ay region 102 rel ates to a two-dimensional space. The

- structUre-provides

- - - - _ ._. _ -- - - -

auser wi"ihcontext for "acurrentlyviewed portion by presenting

multiple points along a fIrst axis. Thus, a second point may only be selected from a fixed
hierarchy relating to a first axis. Dolan docs not present and display a second point on a
second orthogonal ax is and infonnation pertaining thereto to provide the user with
suffic ient context for the displayed portion to enable the user to navi gate a
multidimensional space of three or more dimensions.
Applicants submit that Dolcm does not teach navigatio n o f a multidimensional
space defined by axes corresponding to 10gica1 connections among predefined portions of
an electronic document. Further, Dolan fails to teach or s uggest the provi sion of first and
second display regions and the further display of first and second points, the sc,:ond poi nt
being derived from the first poim, to provide a user with context for a displayed
predefined ponion of the electronic document.

Weinberg provides a graphical view of dynamically changing web site links. This
is in contrast to thc claimed invention, which provides a non-graphical view of a fixed

,

' ,'

pre-prepared multidimensional dataset. There does nol appear to be any disclosure o'r
suggestion in Weinberg of the presentation of time-based data as· in the prese nt
application.
Further. Dolan and Weinberg, whether considered alone o r in combination, fail to
teach or suggest the provision of time-based versions of portions, as provided by Claim 8,
or search criteria and results, as provided b y C laim 10, to provide a user with furt her
context for a dis played prede fined portion. Defining the type of the second axis provides
further context for both the second poinl that is displayed, and the in fonnation relating to
Ihe second point that is di splayed in the second d ispl ay region.
Indepe ndent cl aims 12 and 23 have - een amended '"in a si mil ar man ncr 1 the
b
0
amendmen ts described above ,in relation to claim I, by incorporati ng the fea tures of
Claims J 3 and 14, and Clnims. 24 and 25 , respectively.
"Amendm"nt Aflcr O fftCc: A"ion :O'l:Iik:... ·Ju l)' S.
St:031 No. 09(6&9.\.127
PlIgc 28 of 38

~

T8040951

.,
"

,,

Applicants submi t that fo r the above reasons , the features of Claim I urc neither
laught nor suggested, or even all uded 10, by Dolan an d Weinb erg, and thus independent
Claims 1, 12 and 23 are cons idered novel and non-obvious in ligh t of Dolan and

Weinberg. Thu s, dependent Claims 8 , J0, 11, 19, 21 , 22, 32, 3 3 are considered nonobvious _ 0_- _________ _ . _ _ _ _
_. - •__by virtue of dependence on respective independenL C laims I, 12 and 23.

11.

Claims 36, 45, 50·53, 56, 65, 70-73, 76, 85, and 90-97 were rejected under 35

U.S.C. § 103(a) as being unpalenlable over U.S. Palenl No. 5,892,513 (Fay) as
applied to claim 34, and further in view oC U.S. Patent No. 6,185,576 (McIntosh).
Independent Claim 34 has been amended. Support for the amendment is found in
Claims 35 and 37, the features of which are now recited in the amended form of Claim
34. Claims 35 and 37 have been cancelled. Claim 34 provides a method of publishing an
electronic publication through the provision of an hierarchi cal structure. The e lectronic
publication is formed from predefined portions of text-based data, which arc stored in
terminal nodes of the hierarchical structurc. Thus, the data content of the electronic
publication is contained in the teonina! nodes.
Higher level nodes are prov ided to organise the terminal nodes in accordance with
the hierarchical structure. Each higher level node contains the identity of a paren t node, a
position indicalOr for the node and an identifier. One of the hi gher level nodes is the apex
of the hierarchical structure and contains a null parent node identity. Further, the position
indicator in each higher leve l node indicates a .position of a given node relative to a
sibling -node. The attributes of the higher level node distingui sh the claimed invention
from the cited art, as it is the resulting structure that enables the data stored in the
terminal nodes to be organised in a manner to allow easy navigation through the
electronic docu ment.

Fay is di rected towards the contro l of different versions of a document ,
particularly with respect to locking out portions of data and m ulti·user edit ing . Fay
stresses data check

Ollt ,

lock ing and uni versal "s hadow" metadata, which is in sl;,\rk

contrast to the claimed invention, which provides a slmclure 10 enab le user frie ndl y
navigat.ion through a complexYlUltidimen sional data space.
Amendme nt Mter Oflic~ Action ,\ I ;likoJ July H
.Jrol
Serial No. 091689.927

Page 29 nr38

T8040952

·,
•

"

,

Fay provides a hierarchical structure in which a document. for examp le, is divided
into different nodes of the hierarchical structure . Eoch node may contain content.
Various pans of the hierarchical structure are then " locked out" to enable a user to edi t
the content of a node, whi lst prevenljng multiple access from other users. Other users
are, however, able to view such a "locked out" node. In contrast, the hierarchical
- slruclure-ofClaiin-34-oflhe presentapp licationis directed"to- navigation-(vi~wi ng) of;-' --

multidimensional space of a structured data space.
Fay presents an hierarchicaJ structure in which each node. o r subtree, contai ns .

infonnation. such as the content of a chapter or sections within a chapter. Conversely,
C laim 34 defines a structure in which only the terminal nodes con tain content. The
higher level nodes do nol contain content themselves, rather the higher level nodes
contain information relating to a parent node, a position indicator indicating a position
relative to a sibling node, and an identifier. Further, the position indicator in each higher
level node indicates a poSition of the respective higher level node relative to a sibling
node in the hierarchical structure of the electronic publication. The information in the
higher leve l nodes is utili sed to organise the terminal nodes in accordance with the
s tructure of the electronic publication under consideration.
Thus, Applicants submit that Claim 34 is neither taught nor suggested by the
d isclosure of F(IY. Applicants submit that as Claims depend from Claim 34, Applicants
submit that these claims arc novel over Fay for at least the ·rcasons stated abovc in respect
afClaim 34.
Independent claims 54 and 74 have been amended in a manner simi lar to that
proposed above in respect of Claim 34, by incorporating the features of Claims 55 and
57, and Claims 75 and77, respectively. Applicants submit that Claims 54 and 74 and the
claims that depend therefrom are allowable over Fay for thc reasons presented above in
respect of Claim 34.

Mcintosh discloses time·stamping and the disclosure thereof, alone or in
combi nati on, is insufficient to anticipme or suggest the tempo ral navigation facilities of
the claimed

invent io~ .

The time· s.tamping providcd by Mcintosh does not allow for the

'Iocation of a provision within a given piece of legislation to change from ·a first version of
the prov ision to u 'Juter vers io n o f (he proviS ion. Howeve'r, such c<lp<lbil ity is prov ided ill
,'",enume'" .Af1~r o m .;c ,,,"Ii..,,,
Seri;!] No. 09/689.\ln

r.. 1 ~ik:.J

July K.

~QO.I

'Page ; 0 uf 38

T8040953

.
.

-

the claimed inventi on and all ows, for example. Chapter 2B, Section 8 1(i) of a piece of
legislation 10 become, by amendment, Chapter 3, Section 227 whil st ret aining its
t:sscntial identi ty. Further, the cl aimed inventi on provides non-terminal nod es that cannot

have an associated scope of their own.
In dependent Claim 34 provides a hierarchical structure in which predefined
portions are stored in tcnninal nodes. Different versions of a predefined portion are

slored in different tenninal nodes, with the higher le vel nodes and their respective
associated attributes organising the tenninal nodes into a navigabJe structure . The
combination of Fay and Mclntosh fails to teach or suggest the claimed arrangement of
storing predefined portions in tenninal nodes and the related organisational structure
associated therewith. Thus, Applicants submit that independent Claims 34, 54 and 74
and the claims that depend therefrom are non-obvious in light of Fay and Weinberg.

12.

Claims 39·40, 59·60, and 79·80 were rejected under 35 U.S.C. § 103(a) as

being unpatentable over U.S. Patent No. 5,892,513 (Fay) as applied to claim 34, and
further in view of U.S. Patent Application Publication No. 2002J0133484 (Chau et
al.).
Tndependent Claim 34 has been amended. Support for the amendment is found in
Claims 35 and 37, the features of which are now recited in the amendcd form of Claim
34. Claims 35 and 37 have been cancelled. Claim 34 provides a method of publishing an
electronic publication through the provi sion or an hierarchical structure. The electronic
publication is formed from -predefined portions of text-ba<;;cd data, which are stored in
terminal nodes of the ·hierarchical structure. Thus, the data content of the electronic
publication is contained in the tenninal nodes.
Higher level nodes are provided to o rganise the tenninal nodes in accordance with
the hierarchical structure. Each higher level node contains the identity of a parent node, a
posi tion indicator for the node and an identifi er. One of the higher leve l nodes is the apex
of the hierarchical structure and contain s a null paren t node identity. Further. the position
indicator in each hi gher level node indicates a position of a given node re lati ve to

<.l

sibling nodc. The iltt ri butes of the higher level ·node disti nguish the clil imed in vention
A m~n(hn..:nl

Serial No.

Afl<:r Offj~c ACl ion

~laikd

July s. 1004

09/6S9.9~7

I'Jgc3 1 orJS

T8040954

-,

,

from the cited arl, as it is the resultin g structure that enables the data sto red in the
, "tennin;lI nodes' to be orgimised"iii a olanner-to ullow ~asy 1
1uvigailon through

the '

electronic document.
Fay is d irected towards the control of diffe re nt versions of a document,

particularly with respect to locking out portions of data and multi-user editing. Fay

- -----"Strcssesdata check out, locki ngand un"versal "sh'adow"mcladat~,-;hich is ~ srark- - - - - - - "
i
contrast to the claimed invention, whi ch provides a structure to enable user fri endly
navigation through a complex multidimensional data space.
Fay provides a hierarchical structure in which a document, for example, is divided

into different nodes of the hierarchical structure. Each node may contain content.
Various parts of the hierarchical structure are then " locked out" to enable a user to edit
the content of a node, whilst preventing multipl e access from other users . Other users
are, however, abJe to view such a "loc ked out" node. In contrast, the hierarchical
structure of Claim 34 of the present application is directed to navigation (viewing) of a
multidimensional space of a st~ctured data space.
Fay presents an hierarchical structure in which each node, or subtree, contains
infonnation , such as the contcnt of a chapter or sections w ithin a chapter. Conversely,
Claim 34 defines a structure in which only the terminal nodes contain content The
higher level nodes do not contai n content themselves , rather tbe hi gher level nodes
"

contain infonnati on relating to a parent node, a position indicator indicating a position
relative to a sibling node, and an ide ntifier. 'Furt her, the position indicator in eac h highe r
level node indicates a pos ition of the respective higher level node relative to a sibling
node in the hier.trchical structure of the electronic publication. The information in the
'higher level nodes is utili sed to organise the teITIllna l nodes in accordance with the
structure of the electronic publication under considerati on.
Thus. Applic.mt s submit that C laim 34 is neither taught nor suggested by the
disclosure of Fay. Applicants submit that the claims that depend from Claim 34 are
novel over Fay for at leas t the reasons slated above in respect of Claim 34.
Independent claims 54 and 74 have bee n amended in a manner similar to that
proposed above in rc!' pcct o r Claim 34, by incorporating the features of Cla ims 55 and
51, and CI ~·im s 75 and77, n:spcctive:) y. Applicants submit th:lt C laims 54 and 74 and Lhe

.'
AIDL.,,(j rrw:nc Arlc:r 0m~c Acrion ~bj k..-d 'July 3. 2004

Serial No. 0')(689.927
' P~gc

32 of 38

T8040955

",,

claims that depend therefrom are allowable over Fay for the reasons presented above in
respect of Claim 34.

Chau describes a technique for storing XML data in a relat ional database and

retrieving such stored data. The claimed inventi on is equally applicable to documents
stored in relational database s or other nat file s using methods distinct from those

provided in Chau. The parent node of the hierarchical MALT structure cannot contain
substantive data of its own. This is a distinguishing feature of the claimed invention that
is neither taught nOf suggested by either Fay or Chau. Further. as described above, only

tenninal nodes can contain predefined portions of text-based data, and it is the higher
level nodes and their respective attributes that organise the tenninal nodes that facilitate
navigation of the electronic document. Providing an apex node, higher level nodes
containing attributes to define a hierarchical structure, but no content, and terminal nodes
containi~g

content. as provided in each of independent claims 34, 54 and 74, is neither,

taught, suggested or even alluded to by Fay or Chau, either together or in combination.
Thus. Applicants submit that each of Claims 34, 54 and 74, and each of the claims that
depends therefrom, is non-obvious in light of the combination of Fay and Chau.

13.

Claims 41-42, 48-49, 61·62, 68-69, 81-82, and 88-89 were rejected under 35

U.S.C. § 103(a) as being unpatentable over U.S. Patcnt No. 5,892,513 (Fay) as
applied to claim 34, and further in view of U.S. Patent Application Publication No.
2002J0133484 (Chau et al.) as applied to claims 40 and 43, and further in view of
U.S. Patent No. 5,963,208 (Dolan et al.).
Independent Claim 34 has been amended . Support for the amendment is found in
Claims 35 and 37, the features of which are now recited in the amended form of Claim
34. Claims 35 and 37 have been cancelled. Claim 34 provides a method of publishing an
electronic publication through the provision of an hierarchical structure. The electronic
publication is fonned from predefined portions of text-based data, whic h are sto red.in
terminal nodes of the hierarchi cal structure. Thus, the data content of the electronic
publication is contained in the terminal nodes.
.

. :.,

Amendment After Office Action Maikd July 11. 2004
Serial No. 09/689.921
I\Ige)) .. f 38

T8040956

Higher level nodes arc provided to organise the terminal nodes in accordance with
the hierarcliical structure. Each highe r level node con tains the identity of a parent node, a
position indicator for the node and an identifier. One of the hi gher level nodes is the apex
of the hierarchical structure and contains a null parent node identity. FUrlhcr, the position
indicator in each higher level node indicates a position of a given node relative to a
. - sit;ling

node. The- attributes ofthehigher levelnode diSt;;'guish- rh; cl;ir;;ed-i;~e-nti~~

..

from the cited art, as it is the resulting structure that enables the data stored in the
terminal nodes to be organised in a manner to allow easy navigation through the

-'

electronic document.
Fay is directed towards the control of different versions of a document,

particuJarly with respect to locking out portions of data and multi-user editing. Fay
stresses data check out, locking and universal "shadow" metadata, which is in stark
contrast to the claimed invention, which provides a struct ure to enable user friendly
navigation through a complex multidimensional data space.
Fay provides a hierarchical structure in which a document, for example, is divided

into different nodes of the hierarchical structure. Each node may contain content.
Various pans of the hierarchical structure are then "locked out" to enable a user to edit
the content of a node, whilst preventing multiple access from other users. Other users
are, however, able to view such a "locked out" node. In contrast, the hierarchical
structure of Claim 34 of the present application is directed to navigation (viewing) of a
multidimensional space of a structured data space.
Fay presents an hierarchical structure in which each node, or subtree, contains

infonnation, such as the content of a chapter or sections within a chapler. Conversely,
Claim 34 defines a structure in which only the terminal nodes contain content. The
higher level nodes do not contain content themselves, rather the hi gher level nodes
contain information relating to a parent node, a position indicator indicating a position
relative to a sibling node, and an identifier. Further, the position indicator in each higher
level node indicates a position of the respective higher level node relative to a sibling
node in the hierarchical structure of the clcctronic publication. The information in the
higher Icvel nodes is utilised to organi se the terminal nodes in accordance with the
slnicture of the elec troni c pllbJic>ttioll under consideration .
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Thu s, Applicants submit that Claim 34 is neither taug ht no r suggested by the
d isclosure of Fay. Applicants submits that the claims that depend from ClaiJll 34 are
novel over Fay for at least the reasons stated above in respect of Claim 34.
Independent claims 54 and 74 have been amended in a manner similar 1 that
0
proposed above in respect o f Claim 34, by incorporating the features of Claims 55 and
- - .-

~- - 57, and- Claims 75 and77, respecuveJy .~ ·Applicants submit thatCiaims 5~i and 7 4 and the

claims that depend therefrom are allowable over Fay for the reasons presente d above in
respect of Claim 34.

Chou describes a technique for stori ng XML data in a relational database and
retrieving s uch stored data. The claimed invention is equally applicable to documents
stored in relational databases or other flat files using methods distinct from those
provided in Clum. The parent nocle of the hierarchical MALT structure cannot contain
substantive data of its own. This is a distinguishing feature of the claimed invention that
is neither taught nor suggested by either Fay or Chou . Further, a~ described above, only
terminal nodes can contain predefined portions of tex t~based data, and it is thc higher
level nodes and their respective attributes that organise the tennina1 nodes that facilitate
navigation of the electronic document. Providing an apex node , higher level nodes
containing attributes to define a hierarchical structure, but no come nt, and tenninal nodes
containing content, as provided in each of independent claims 34, 54 and 74, is neither,
taught, s uggested or even alluded to by Fay or Clzau, either together or in combi nation.
Thus,

Applican L~

submit that each of C laims 34, 54 and 74, and e ach of the claims that

depends therefrom , is

non~ob v ious

in light of the combination of Fay and Chou.

Examiner contends that Dolan discloses a tenninal node including a label of a
publication associated with a higher node (Fig. 7 of Dolan). Claim 34 provides that the
predefined portion s of text-based data of an electronic publication are stored in the
tennina1 nodes. Thus, the label of the publication referred 10 in Claims 41.42. 48, 49, 6 1,
62,68 , 69,81,82,88,89 , e ach of which depends from Claim 34, does not refer to a label
of a publication from a hi gher node, as the higher nodes do not con tain any content. said
hi ghcr level nodes existing to organi se the

c ontcnt ~carry ing

lenninal nodes. Applicants

submit that the structu re claimed in C laim 34 is nei ther taught nor suggested by Fay,

AmCIK. ncm ~n.".- Offi ce: ,\!;l ion
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T8040958

ellau or Dolall , alone or in combinati on, and thus Claim 34, and the claims that depend

therefrom, are non-obvious in light of these citations.

14.

Claim'" 46, 66, and 86 were rejected under 3S U.S.C. § 103(a) as ~eing

unpatentable oyer U.S. Patent No. 5,892,513 (Fay) as applied to claim 34, and

further in view of U.S. Patent No. 6,185,576 (Mcintosh) as applied to claim 36, and
further in view of U.S. Patent No .6,144,962. (Weinberg).
Independent Claim 34 has been amended . Support for the amendment is found in
Claims 35 and 37, the features of which are now recited in the amended form of Claim
34 . Claims 35 and 37 have been cancelled. Claim 34 provides a method of publishing an
electronic publication through the provision of an hierarchical structure. The electronic
publication is fonned from predefined portions of text-based data, which are stored in
tenninalnodes of the hierarchical structure. Thus, the data content of the electronic
publication is contained in the terminal nodes.
Higher level nodes arc provided to organise the tcnninal nodes in accordance with
the hierarchical structure . Each higher level node contains' the identity of a parent node, a
position indicator for the node and an identi fi er. One of the higher level nodes is the apex
of the hierarchical structure and contains a null parent node identity. Further. the position
indicator in each highcr level node indicates a pmit ion of a given node relative to a
sibling node. The attributes of the higher level node distinguish the claimed invention
from the cited art, as it is the resul ting structure that enables the data stored in the
terminal nodes to be organised in a manner to allow easy navigation through the
electronic document.

Fay is dirccted towards the control of different version s of a document,
particularly with respect to locking out portions of data and multi-user editing. Fay
stresses data check out. locking and universal "shadow" metadata, which is in stark
contrast to the clai med invention, which provides a struc ture to enabJe user friendly
navigation through a complex multidimensional data space.
Fay provides a hierarch ica l struct ure in which a document, for example, is divided

into d ifferent nodes of'lhe hierarch ica l structurc. Each node may conl.iin cont ent.
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Various parts of the hi erarchical structure are then " locked out" to enable a user to edit
the con tcnt of a node, wh ilst preventi ng muhiple access from othe r users. Other users
are, however. able to vicw such a " locked out" node. In contrast, the hierarchical
structure of Claim 34 of the present application is directed to navigation (viewing) of a
multidimensional space of a structured data space.

- Fay-presems an hierarchical slruCiu~ i;;-which e;~h node, ;; ~~btree~ contain;information, such as (he content of a chapter or sections within a chapter. Conversely,
Claim 34 defines a structure in which only the terminal nodes contain content. The
higher level nodes do not contain content themselves, rather the higher level nodes
contain infonnation relating to a parent node, a position indicator indicating a position
relative to a sibling node, and an identi fier. Further, the position indicator in each higher
level nod e indicates a position ofthc respective higher level node relative to a sibling
node in the hierarchical structure of the electronic publi cation. The information in the
higher level nodes is utilised to organise the tenninal nodes in accordance with the
structure of the electronic publication under consideration .
Thus, Applicants submit that Claim 34 is neither taught nor suggested by the
di sclo.sure of Fay. Applican ts submit that the claims that depend from Claim 34 are
novel over Fay for at least the reasons stated abovc in respect of Claim 34.
Independent claims 54 and 74 have been amended in a manner simi lar to that
proposed above in respect of Claim 34, by incorporating the features of Claims 55 and
57, and Claims 75 and77, respectively. Applicants submit that Claims 54 and 74 and the
claims that depend .therefrom are allowable over Fay for the reasons presented above in
respect of Claim 34.
Mcintosh discloses time-stamping and the disclosure thereof. alone or in

combination, is insu fficient to anticipate or suggest the temporal navigation facilities of
the claimed invention. The time-stamping provided by Mclntosh does not allow for the
location of a provision within a given piece of legislation to change from a first version of
the provision to a later version of the provi sion. However. such capability is provided in
the claimed invention and allows, for example, Chapter 28, Secti on 8 1(i) of a piece of
leg islation to become, ·by mnendmcnt, Chapler 3. Section 227 whilst retaining its

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TB040960

essential identity. Further. the claimed invention provides non -terminal nodes Ihal cannot
- have an associated'scope of their own . . .

Weinberg provides a graphical view of dynamically changing web site links. Thi s
is in contrast to the claimed invention. which provides a non-graphical view of a fixed
pre-prepared multidimensional dataset.

.- - - Applicantss uomii' th-af Faj;McfiiiO'sii and-Wetnberg':aloneorTn combination, faU-

-

.- -

-

to teach or suggest the hierarchical structure defined by independent claims 34. 54 and
94. Accordingly, Applicants submit that independent claims 34, 54 and 94. and the
claims that depend therefrom , are non-obvious in light of the cited documents.

Independent claims I. II. 12. 22.23.33.34.54.74. and 94 are believed to be
atlowable over the applied references. Reconsideration and withdrawal of the 35 U.S.C.

§ 102 (b) and 35 U.S.c. § 103 (a) rejection of claims I. 11. 12.22. 23. 33. 34.54. 74. and
94 are respectfully requested .
The other rejected claims in the application are each dependent from the

independent claims discussed above and are therefore believed to be allowable for at least
lhe same reasons. Because each dependent claim is deemed to define an additional
aspect of the present invention, however, the individual consideration of each on its own
medts lsrespectfully requested.
In view of the foregoing amendment and remarks. the entire application is
believed to be in condition for 'allowance and such action is respectfully requested at the
Examiner's earliest convenience.
Respectfully submitted,

By:

~ 'VLd-<AJ ~

Cliff~ rowning

.

Reg. No. 32.20 I
Woodard. Emhardt et a1. LLP
III Mo nument Circle. Suite 3700
Indianapolis. TN 46224 -5 137
Telephone: [phone]
.E-mail: browning @wo rldip.com

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T8040961