11538749 (P.T.A.B. Oct. 21, 2016)

Ex Parte Al-Kofahi et al

Patent Trial and Appeal BoardOct 21, 2016

11538749 (P.T.A.B. Oct. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111538,749 10/04/2006 79804 7590 10/25/2016 Duncan Galloway Egan Greenwald, PLLC 9750 Ormsby Station Road, Suite 210 Louisville, KY 40223 FIRST NAMED INVENTOR Khalid Al-Kofahi 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. 113027.000050US1 2519 EXAMINER DWIVEDI, MARESH H ART UNIT PAPER NUMBER 2168 NOTIFICATION DATE DELIVERY MODE 10/25/2016 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): kduncan@dgeglaw.com carnold@dgeglaw.com jlindner@dgeglaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte KHALID AL-KOFAHI, MICHAEL DAHN, PA TRICK SLAVEN, THOMAS ZIELUND, QIANG LU, and CHARLES ELBERT! Appeal2015-005761 Application 11/538,749 Technology Center 2100 Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1--43. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We Affirm. THE INVENTION The claimed invention relates to "information-retrieval systems, such as those that provide legal documents or other related content." Spec. 1. Appeal2015-005761 Application 11/538,749 Representative Claim Claim 1 is representative of the subject matter on appeal: 1. A system comprising: [L 1] a server for receiving a query for legal information from a user via a client access device, the server including a processor and a memory; [L2] means for identifying a first set of documents from a database using the query; [L3] means, responsive to metadata associated with one or more of the identified first set of documents, for automatically identifYing a second set of documents; [L4] means, responsive to identification of the second set of documents, for ranking the second set of documents; and means for outputting a list of one or more of the ranked documents to the client access device. (Contested limitations lettered and emphasized.) Rejections RI. Claims 1, 3, 4, 6, 21, 31-33, 36-38, and41--43 stand rejected under 35 U.S.C. Â§ 102(e) as being anticipated by Dicker et al. (US 2003/0105682 Al, pub. June 5, 2003, "Dicker"). R2. Claims 2, 7, 13-18, 22, and 26-28 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combined teachings of Dicker and Rubenczyk et al. (US 2003/0217052 Al, pub. Nov. 20, 2003, "Rubenczyk"). R3. Claims 5, 8, and 23 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combined teachings of Dicker and Gilbertson (Gilbertson Manual entitled "Using westlaw.com," West Group, Jan. 2001). 2 Appeal2015-005761 Application 11/538,749 R4. Claims 9-12, 19, 20, 24, and 25 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combined teachings of Dicker, Rubenczyk, and Pitkow (US 2003/0128212 Al, pub. July 10, 2003). R5. Claims 29, 30, 34, 35, 39, and 40 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combined teachings of Dicker and Huang et al. (US 6,601,075 Bl, July 29, 2003, "Huang"). Claim Grouping Based on Appellants' arguments (App. Br. 6-17), we decide the appeal of Rejection R 1 of separately argued independent claims 1, 6, and 21, separately. We decide the appeal of the rejected dependent claims on the basis of the following claim groupings and associated representative claims: RI of claims 3, 4, 31-33 Representative claim 31 RI of claims 36-38 Representative claim 36 RI of claims 41--43 ~PnrP'"Pnt!lfr\TP f'l!llnl Ll.1 _.L'--""_t-'.J.""U""_I__I_'-\..4''-_I_ V"" V_I_\A-_I__I__J.__I_ I _I_ R2 of claims 2, 7, 13-18, 22, and 26-28 Representative claim 2 R3 of claims 5, 8, 23 Representative claim 5 R4 of claims 9-12, 19, 20, 24, and 25 Representative claim 9 R5 of claims 29, 30, 34, 35, 39, and 40 Representative claim 29 See 37 C.F.R. Â§ 41.37(c)(l)(iv). ANALYSIS We have considered all of Appellants' argument and any evidence presented. (App. Br. 6-22, Reply Br. 1-9). We disagree with Appellants' contentions regarding the Examiner's anticipation and obviousness 3 Appeal2015-005761 Application 11/538,749 rejections of the claims. We adopt as our own: (1) the findings and legal conclusions set forth by the Examiner in the Final Action (2-83) from which this appeal is taken, and (2), the findings, legal conclusions, and further explanations set forth in the Examiner's Answer (3-83), in response to Appellants' arguments made in the Appeal Brief ( 4--23 ). We address specific findings and arguments for emphasis as follows. Rejection RI of Independent Claim 1 Issue: Under Â§ 102 ( e ), did the Examiner err by finding Dicker disclosed contested limitations Ll-L4, within the meaning of claim 1? Regarding limitations Ll-L3, Appellants contend: Dicker is completely void of any teaching of identifying a first set of documents or of identifying a second set of documents. As stated above, Dicker plainly describes a method for identifying an item or items of interest. These items in Dicker are products for sale on a website. While a person may type in "legal information" as a query in Dicker, Dicker will not identify either a first or second set of documents in response to this query. (App. Br. 7) Appellants further contend: The "search results" are not a set of documents, they are a list of products. The viewing histories are not a set of documents, they are a list of previous products viewed by a user. (App. Br. 8) 4 Appeal2015-005761 Application 11/538,749 Appellants additionally contend: Each of these items may contain some features of a document as claimed, but these items themselves are not the set of documents. These items would have to contain or comprise the set of documents, which they do not. It is unreasonable to interpret any of these elements of the system and method of Dicker as a first set of documents or [a] second set of documents as claimed. (App. Br. 9) We are not persuaded by Appellants' contentions, because they are not commensurate with the broadest reasonable interpretation of the contested claim terms "first set of documents," "second set of documents" and "ranking." i, 2 Appellants do not point to a definition in the claims or Specification that precludes the Examiner's broader reading. 3 Although 1 We give the contested claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Cf Spec. i-f 51 ("The embodiments described above are intended only to illustrate and teach one or more ways of practicing or implementing the present invention, not to restrict its breadth or scope. The actual scope of the invention, which embraces all ways of practicing or implementing the teachings of the invention, is defined only by the following claims and their equivalents."). 2 Anticipation "is not an 'ipsissimis verbis' test." In re Bond, 910 F .2d 831, 832-33 (Fed. Cir. 1990) (citing Akzo N. V. v. United States Int'! Trade Comm'n, 808 F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). "An anticipatory reference ... need not duplicate word for word what is in the claims." Standard Havens Prods., Inc., v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991). 3 Because "applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). 5 Appeal2015-005761 Application 11/538,749 Appellants point to paragraphs 8 and 32 of the Specification for examples of legal documents, we find the description in the Specification (id.) merely consists of non-limiting, exemplary language - not definitions, per se. 4 (App. Br. 8). Turning to contested limitation L 1 of claim 1, we note Appellants could have claimed the "server" recited in the body of claim 1 as a "means" consistent with the remaining "means" recited in the body of claim 1, but Appellants chose not to do so. To the extent the informational content of various queries received by the "server" may differ, we find such received data would not change or affect the physical structure of the server (i.e., a machine executing software instructions). Thus, we apply the broadest reasonable interpretation consistent with the Specification (e.g., Fig. 1, Server 120), and conclude the claimed "server" is a structure (machine) with software executing thereon (and is therefore not interpreted as a means-plus- function limitation under pre-AIA Â§ 112, sixth paragraph). The Examiner finds contested limitation L2 ("first set of documents") is disclosed by Dicker's search results page. (Ans. 4). We agree with the Examiner's finding, because a user's query (see Dicker's Fig 12, showing Amazon.com product search fields) may be for any book, including legal books, and therefore we find the associated Amazon web server would have 4 See Spec. (US 2008/0033929 Al, i-f 8) ("One exemplary system receives a user query for legal opinions and runs the query against a legal opinion database and on or more other non-legal opinion databases, such as a metadata store.") (Emphasis added). See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346-47 (Fed. Cir. 2015) ("This court has repeatedly 'cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification."') (quoting Teleflex, Inc. v. Ficos a N. Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002)). 6 Appeal2015-005761 Application 11/538,749 been capable of serving webpages (i.e., electronic documents) which include queried "legal information" (e.g., titles and abstracts of legal books and/or documents). (See Final Act. 4). Appellants appear to agree: "At best, Dicker can execute a query that may contain terms that are legal in nature .... " 5 (App. Br. 13-14). Therefore, we conclude the scope of claim term "query for legal information" (limitation LI) covers Dicker's Amazon bookstore (Fig. 12), and associated webpage server which receives user queries for books covering all published subject areas, including law or law-related books. Given the evidence cited by the Examiner (Final Act. 4), we find the structure (hardware and software) of the Amazon server would have been capable of accepting queries for any book, including legal books, and therefore anticipates the structure of the "server" recited in claim 1. We also agree with the Examiner's finding that Dicker's automatic display of recommendations (Fig. 12) discloses contested limitation L3: "automatically identifying a second set of documents." (Ans. 7, citing Fig. 12, documents 500). We agree with the Examiner's finding, because we find the set of automatic recommendations (500) in Dicker (Fig. 12) are webpages that contain additional information for the user, and, are, 5 "A statement by an applicant in the specification or made during prosecution identifying the work of another as 'prior art' is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102." MPEP Â§2129(1.), citing Riverwood Int'! Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988). 7 Appeal2015-005761 Application 11/538,749 therefore, an automatically identified "second set of [ webpage] documents" falling within the scope of claim 1. Regarding contested limitation L4 of claim 1, Appellants contend "Dicker is simply ranking a portion of an original set of items. Dicker does not identify a second set of items and does not rank a second set of items." (App. Br. 9). The Examiner finds Dicker's description of extracting the N top- ranked products from a list (Dicker i-f 209, Fig. 13), and the ranked personal recommendations returned by Dicker' s process (i-f 191) disclose contested limitation L4: "ranking the second set of documents." (Ans. 10; Final Act. 4). We agree with the Examiner's findings, because the claim term "second set of documents" is mapped to Dicker' s list of recommendations, and the ranking is performed on the recommendations. See e.g., Dicker (i-f l 91 ): The search query list includes the terms and/or phrases submitted by the user to a search engine of the Web site 30. The captured search terms/phrases may be used for a variety of purposes, such as filtering or ranking the personal recommendations returned by the FIG. 2 process, and/or identifYing additional items or item categories to recommend. Given this evidence, and on this record, we are not persuaded the Examiner's claim interpretation is overly broad, unreasonable, or inconsistent with the Specification. Seen. I, n.3, supra. Therefore, based on a preponderance the evidence, we are not persuaded the Examiner erred. Accordingly, we sustain the Examiner's anticipation rejection RI of independent claim 1. 8 Appeal2015-005761 Application 11/538,749 Anticipation Rejection RI ofindependent Claims 6 and 2 I We sustain the anticipation rejection of independent claims 6 and 21, which recite similar limitations to claim 1 in commensurate form, for the same reasons discussed above regarding claim 1. We further note, that unlike claims 1 and 21, claim 6 is silent regarding any "legal information" limitation. Rejection RI of Dependent Claims 3, 4, 3I -33. Regarding representative claim 31, Appellants contend: Dicker is void of any teaching ofidentifying a set oflegal related attributes as claimed. Dicker does not teach, disclose, or suggest identifying any such attributes, and contrary to the Examiner's suggestion, simply being able to search for words that may relate to the law does not teach the claimed limitation. (App. Br. 10). We note dependent claim 31 is drafted in a Markush group format: "identifying a set of legal issue related attributes derived from one or more of the group consisting of the query; metadata from one or more of the first set of documents; and metadata about one or more of the first set of documents." (Emphasis added). Accordingly) the Examiner is only required to show prior art disclosing any one of the listed elements in the group. See Fresenius USA, Inc. v. Baxter Int'l Inc., 582 F.3d 1288, 1298 (2009) ("[T]he entire element is disclosed by the prior art if one alternative in the Markush group is in the prior art.") (citing Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1380 (Fed. Cir. 2003)). Applying this guidance here, and given our discussion of claim 1 above regarding the recited "query for legal information," we find a 9 Appeal2015-005761 Application I 1/538,749 description of the "query" is sufficient to anticipate the contested set of attributes. The Examiner finds the claimed "identifying a set of legal issue related attributes" is disclosed by the identification of the terms of a "query." (Ans. 25). We agree with the Examiner's finding, because Dicker' s HTTP requests disclose a "query" within the meaning of claim 3 I. Such "query" could be for legal books (Dicker, i-f 6 I), because we find legal books are among the types of books sold by Amazon.com (Dicker Figs. 6, I2), and thus may be queried (searched for) by the user. We conclude the recited "identifying a set of legal issue related attributes derived from ... the query" (claim 3 I) broadly but reasonably covers a query for legal books and related attributes, for example, titles and abstracts ("related attributes" as claimed). Therefore, we find the preponderance of evidence supports the Examiner's finding of anticipation (rejection RI) for representative dependent claim 3 I, and for rejection RI of the associated grouped claims, which fall therewith. See Claim Grouping, supra. Rejection RI of Dependent Claims 36--38 Claim 36 recites: "The method of claim 6, wherein automatically identifying a second set of documents includes automatically identifying a set of legal issue related attributes derived from one or more of the group consisting of: the query; metadata from one or more of the first set of documents; and metadata about one or more of the first set of documents." Appellants contend, "[d]ependent claims 36-38 are allowable for at least the reason that the claims depend from and include the elements of allowable independent claim 6." (App. Br. I3). We found Appellants' contentions regarding claim 6 unavailing for the reasons discussed above. IO Appeal2015-005761 Application I 1/538,749 We have also fully addressed above (regarding rejection RI of claim 3 I) Appellants' additional contention that "Dicker is void of any teaching of identifying a set of legal related attributes as claimed." (App. Br. I3). In support, Appellants aver: "At best, Dicker can execute a query that may contain terms that are legal in nature, but certainly does not teach, disclose, or suggest identifying legal issue related attributes as claimed." (App. Br. I3-I4). As discussed above, we find the Amazon server would have been capable of serving webpages (i.e., electronic documents), which include queried "legal information" and "legal issue related attributes" (e.g., titles and abstracts of legal books and/or documents). (See Final Act. 4; claim 36). We find the title and abstract of any user-searched legal book (i.e., as searched for on Amazon.com, as depicted in Dicker's Figs. 6 and I2) are "legal issue related attributes" falling within the scope of representative claim 36, under a broad but reasonable interpretation. Accordingly, we sustain the Examiner's anticipation rejection RI of representative claim 36, and rejection RI of the grouped claims, which fall therewith. See Claim Grouping, supra. Rejection RI of Dependent Claims 41--43 For the same reasons as discussed above regarding rejection RI of claims 3 I and 36, we sustain the Examiner's anticipation rejection of representative claim 4I and rejection RI of the grouped claims, which fall therewith. See Claim Grouping, supra. 11 Appeal2015-005761 Application 11/538,749 Rejection R2 of Claims 2, 7, 13-18, 22, and 26-28 Regarding representative dependent claim 2, Appellants' contentions merely recite the claim language. (App. Br. 18). Appellants assert the limitation "ranking the second set of documents" is not taught by the cited references. (App. Br. 19). However, we are not persuaded by Appellants' assertions without any substantive explanation or objective evidence in support. 6 We agree with and adopt the Examiner's findings (Ans. 74-76), and we also note our discussion above regarding the commensurate limitation "ranking the second set of documents," as recited in claim 1. Therefore, we sustain the Examiner'sÂ§ 103 rejection R2 of representative dependent claim 2, and the rejection R2 of the grouped claims, which fall therewith. See Claim Grouping, supra. Rejection R3 of Claims 5, 8, and 23 Regarding dependent claims 5, 8, and 23, Appellants continue the pattern of merely advancing conclusory statements and attorney argument. (App. Br. 19-20). See n.6, infra. Therefore, we sustain the Examiner's rejection R3 underÂ§ 103 of representative dependent claim 5, and rejection R3 of the grouped claims, which fall therewith. See Claim Grouping, supra. 6 Attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. Attorney "argument ... cannot take the place of evidence." In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (Attorney arguments or conclusory statements are insufficient to rebut a prima fade case). 12 Appeal2015-005761 Application 11/538,749 Rejection R4 ofDependent Claims 9-12, 19, 20, 24, and 25 Regarding representative claim 9, Appellants contend: Pitkow 's method of counting and comparing citations clearly does not teach shared legal classification codes as claimed .... Furthermore, Pitkow does not teach, disclose, or suggest feature vectors as claimed. (App. Br. 21, emphasis added). We agree with the Examiner that Pitkow teaches the contested limitations (Ans. 79-80), because the scope of the claim 9 limitation "based on at least one from the group consisting of number of shared legal classification codes and number of shared legal citations" covers Pitkow's number of legal citations. (Pitkow i-fi-f 110, 117-118). We agree with the Examiner, because this Markush group claim limitation recites the language "at least one from the group consisting of' which is satisfied by either the number of shared legal classification codes or shared legal citations. See Fresenius USA, Inc. v. Baxter Int'l Inc., 582 F.3d at 1298 ("[T]he entire element is disclosed by the prior art if one alternative in the Markush group is in the prior art."). Therefore, we find Pitkow's legal citations teach or suggest the contested limitation of claim 9. Regarding Appellants' additional contention that Pitkow doesn't teach or suggest "vectors," we are not persuaded by Appellants' argument because Appellants are arguing the references separately.7 The Examiner cites Rubenczyk, not Pitkow, for teaching or suggesting "vectors." (Ans. 80, Final Act. 54 ). 7 See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references.). 13 Appeal2015-005761 Application 11/538,749 Therefore, we find a preponderance of evidence supports the Examiner's legal conclusion of obviousness regarding representative dependent claim 9, and rejection R4 of the associated grouped claims, which fall therewith. See Claim Grouping, supra. Rejection R5 of Claims 29, 30, 34, 35, 39, and 40 Regarding dependent claims 29, 30, 34, 35, 39, and 40, Appellants merely advance conclusory statements and attorney arguments. (App. Br. 22). See, n.6, supra. Therefore, we sustain the Examiner'sÂ§ 103 rejection R5 of representative dependent claim 29, and rejection R5 of the associated grouped claims, which fall therewith. See Claim Grouping, supra. DECISION We affirm the Examiner's decision rejecting claims 1, 3, 4, 6, 21, 31-33, 36-38, and 41--43 under 35 U.S.C. Â§ 102(e). We affirm the Examiner's decision rejecting claims 2, 5, 7-20, 22-30, 34, 35, 39, and 40 under 35 U.S.C. Â§ 103(a). 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). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 14