Ex Parte Anderson et al

Patent Trial and Appeal Board

Apr 18, 2016

11028465 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111028,465 0110312005
90879 7590 04/20/2016
Thomson Reuters c/o Intellectual Property
3 Times Square
New York, NY 10036
FIRST NAMED INVENTOR
Steven Brant Anderson
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.
2011-2RCE 3923
EXAMINER
GOFMAN,ALEXN
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
04/20/2016 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):
IPDocketing@ThomsonReuters.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN BRANT ANDERSON and
MARK A. BLUHM1
Appeal2014-005701
Application 11/028,465
Technology Center 2100
Before MICHAEL J. STRAUSS, NABEEL U. KHAN, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
4, 6, and 10-29, which are all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Thomson Reuters Global Resources as the real party in
interest. (App. Br. 2.)
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Application 11/028,465
STATEMENT OF THE CASE
Appellants' Invention
According to Appellants, the claimed invention "receives caselaw
queries from users and returns search results that not only include one or
more relevant caselaw documents, such as a judicial opinion, but also
include links for retrieving litigation documents, such as briefs and verdict
summaries, related to the case-law documents." (Spec. 2.)
Exemplary Claim
Claim 4, reproduced below, is exemplary of the claimed subject
matter:
4. A system to retrieve litigation documents, the system
compnsmg:
a caselaw database storing a plurality of judicial decision
documents associated with legal disputes;
a litigation database storing a plurality of litigation
documents including one or more of complaint, pleading, brief,
motion and discovery documents, each litigation document filed
in a legal dispute associated with at least one judicial decision
document;
a relationship database relating at least one of the judicial
decision documents stored in the caselaw database to one or more
litigation documents stored in the litigation database; and
a server coupled to the caselaw database, litigation
database and relationship database, the server configured to:
return to a client access device one or more user-
interface elements associated with respective one or more of the
judicial decision documents in response to a submitted legal-
research query;
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receive from the client access device a selection of
at least one judicial decision document via its associated user-
interface element;
determine from the relationship database at least
one litigation document based on the selected at least one judicial
decision document; and
transmit to the client access device at least one user-
interface element associated with the determined at least one
litigation document configured to enable a user of the client
access device to request the server to retrieve the determined at
least one litigation document from the litigation database via
selection of the user interface element.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wright
Walters et al.
US 2002/0091679 Al July 11, 2002
US 7,216,115 Bl May 8, 2007
(filed Nov. 8, 2000)
REJECTION
Claims 4, 6, and 10-29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wright and Walters. 2 (Final Act. 8-15.)
2 Claims 1-3, 5, and 7-9 were canceled in an Amendment dated July 13,
2010.
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ISSUES
( 1) Whether the Examiner erred in finding the combination
of Wright and Walters teaches or suggests
a caselaw database storing a plurality of judicial decision
documents associated with legal disputes; [and]
a litigation database storing a plurality of litigation
documents including one or more of complaint, pleading, brief,
motion and discovery documents, each litigation document filed
in a legal dispute associated with at least one judicial decision
document ...
as recited in independent claim 4 and commensurately recited in
independent claims 6 and 19.
(2) Whether the Examiner erred in finding the combination of
Wright and Walters teaches or suggests "a relationship database relating at
least one of the judicial decision documents stored in the caselaw database to
one or more litigation documents stored in the litigation database," as recited
in independent claim 4 and commensurately recited in independent claims 6
and 19.
(3) Whether the Examiner erred in finding the combination of
Wright and Walters teaches or suggests
... the server configured to:
determine from the relationship database at least one
litigation document based on the selected at least one judicial
decision document; and
transmit to the client access device at least one user-
interface element associated with the determined at least one
litigation document configured to enable a user of the client
access device to request the server to retrieve the determined at
least one litigation document from the litigation database via
selection of the user interface element[,]
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as recited in independent claim 4 and commensurately recited in
independent claims 6 and 19.
( 4) Whether the Examiner erred in finding the combination of
Wright and Walters teaches or suggests "determine from the relationship
database at least one additional litigation document based on the at least one
other judicial decision document," as recited in independent claim 14 and
commensurately recited in dependent claims 18 and 23.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments the Examiner has erred. We disagree with Appellants'
conclusions and we adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken (Final Act. 2-
15) and (2) the reasons set forth by the Examiner in the Examiner's Answer
in response to Appellants' Appeal Brief. (Ans. 2-11.) We concur with the
conclusions reached by the Examiner, and we highlight the following for
emphasis. 3
A. Claims 4, 6, 10--13, 15-17, 19-22, and 24-294
1. Litigation Database
3 Only those arguments made by Appellants have been considered in this
Decision. Arguments Appellants did not make in the Briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
4 Appellants do not argue patentability of dependent claims 10-13, 15-1 7,
20-22, or 24--29 separately from independent claims 4, 6, and 19. (App. Br.
33.) Except for our ultimate decision, the Examiner's rejection of these
claims is not discussed further herein.
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Appellants challenge on several grounds the Examiner's findings
regarding the "litigation database" limitation. Appellants first argue Wright
and Walters do not teach a "litigation database" because the databases
disclosed therein include only "judicial decision documents." (App. Br. 11.)
In particular, although Appellants acknowledge Wright refers to "[s]earch
objects" including "briefs," Appellants argue the disclosure of "briefs" is
only in connection with documents that "relate to judicial decision
documents (opinions) issued by a court," and hence the referenced "briefs"
are not "litigation documents." (App. Br. 11-13; Reply Br. 4.) We disagree.
Wright's disclosure of different types of"[ s ]earch objects" is not, as
Appellants insist (based on pure attorney argument), limited to court
documents, but also includes a "variety of types" of documents, including
not only legal opinions but also "treatises, statutes, briefs, and law review
articles; scientific or medical writings; or patents and patent applications."
(Wright i-f 11 (emphasis added).) Thus, as the Examiner finds, and we agree,
the ordinary skilled artisan would not read "brief' as disclosed in Wright to
be limited to "a summary of a published opinion," as Appellants argue (App.
Br. 13), but would understand that term to include "a legal brief[,] which is
what is being claimed."5 (Ans. 3.) The Examiner additionally finds, and we
5 Although it is unnecessary to do so in light of the breadth of Wright's
disclosure, we further note that, to the extent Appellants' argument is
premised on a distinction between different types of "briefs," such argument
improperly hinges on the content of the documents. Our reviewing court has
held, however, that nonfunctional descriptive material cannot lend
patentability to an invention that would have otherwise been unpatentable in
light of the prior art. See, e.g., Ex parte Mathias, 84 USPQ2d 1276, 1279
(BPAI 2005) (informative), aff'd, 191 Fed. Appx. 959 (Fed. Cir. 2006)
(citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)), aff'd, 191 Fed.
Appx. 959 (Fed. Cir. 2006)).
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agree, Walters also teaches a database including litigation documents when
describing "computerized searches of legal materials, including without
limitation judicial opinions, statutes, regulations, regulatory decisions,
Security and Exchange Commission filings, briefs. pleadings ... " (Ans. 3
(citing Walters col. 3, 11. 39--45).)
Appellants further argue the Examiner's rejection is in error because
neither of the cited references teaches a litigation database that is "separate"
from a caselaw database. (App. Br. 12.) We disagree with Appellants'
premise that "a litigation database and a caselaw database are recited as
separate elements" in the claims. (Id.) As the Examiner concludes, and we
agree, although the claims describe "a litigation database storing a plurality
of documents," they do not require that "only" litigation documents are
contained in such a database. (Ans. 4.) By the same token, the claims do
not require the "caselaw database" store only caselaw. Nor have Appellants
cited to anything in the Specification that would constrain the construction
of "litigation database" and "caselaw database" to require separate and
distinct structures.
In any event, even if the claims were deemed to require separate
databases, we would not be persuaded of error in the Examiner's rejection.
We note that further supporting the Examiner's finding of obviousness is the
suggestion in Wright of multiple databases when describing searching
multiple "collections of linked objects." (Wright i-f 8.) Walters similarly
discloses searching "a database or group of databases." (Walters col. 7, 11.
35-37 (emphasis added).) And, as noted supra, Wright and Walters both
teach including judicial opinions as well as litigation documents stored in
their respective "collections" or "group of databases." In light of the
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teachings of Wright and Walters, we are not persuaded that segregating these
types of documents into separate databases would be outside "the inferences
and creative steps that a person of ordinary skill in the art would employ."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). To be patentable,
an invention must be "more than the predictable use of prior art elements
according to their established functions." Id. at 417.
Appellants additionally argue "Walters and Wright do not disclose
litigation documents that are each associated with at least one judicial
decision document." (App. Br. 14.) We disagree. As the Examiner finds,
and we agree, Wright teaches or suggests linking between a variety of types
of documents, including "legal opinions" and "briefs." (Ans. 3; Wright i-fi-18,
11, 14; Fig. 2.) As addressed supra, we are not persuaded of error in the
Examiner's finding "briefs" as taught by Wright encompasses litigation
documents. (Ans. 3; Wright i-fi-1 8, 11.) Although Figure 2 of Wright does not
explicitly depict briefs linked to legal opinions, we note that Figure 2 is
merely an example, and does not purport to depict all permutations of linked
documents as disclosed in Wright's written description. See, e.g., Lampi
Corp. v. Am. Power Prods., 228 F.3d 1365, 1378 (Fed. Cir. 2000)
(concluding that the embodiment drawings did not compel a conclusion that
the written description is so narrowly tailored to be limited to the
embodiments depicted in the drawings).
2. Relationship Database
Appellants next argue the Examiner's findings are in error because
"the cited portions of Walters and Wright do not disclose or suggest a
relationship database relating at least one of the judicial decision documents
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stored in the case law database to one or more litigation documents stored
in the litigation database, as recited in claim 4." (App. Br. 14--15.) We
disagree. As the Examiner finds, and we agree, Wright teaches association
between different documents such as through "master/ detail record links in a
relational database." (Wright i-f 14 (emphasis added); Ans. 5.) Appellants
counter that "Wright does not explicitly disclose or suggest master/detail
record links between legal opinions and briefs." (Reply Br. 2 (emphasis
added).) We disagree with Appellants' premise that such teaching must be
"explicitly" provided in the cited references to support the Examiner's
finding. As the Supreme Court explained in KSR, the skilled artisan is "a
person of ordinary creativity, not an automaton." KSR, 550 U.S. at 21. It is
also well settled that a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom. See In re Fritch, 972 F .2d
1260, 1264--65 (Fed. Cir. 1992); In re Preda, 401F.2d825, 826 (CCPA
1968). Although Wright's Figure 2 depicts association of only certain legal
documents with others, we note that such depiction is by way of example
only, as we explain supra, and we agree with the Examiner the disclosure of
Wright as a whole teaches or suggests relating litigation documents (such as
briefs) to judicial decision documents. (See Ans. 3.)
3. Determining and Transmitting Litigation Documents
With regard to the "server" limitation of claim 4, Appellants argue the
Examiner's findings are in error because the cited references do not teach or
suggest a "user-interface element" that enables retrieval of a litigation
document. (App. Br. 21.) Appellants argue primarily against the Wright
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reference in this regard, asserting "the links that are already displayed are
merely informational," and "user selection of the displayed object does not
cause a determination of a litigation document, nor enable retrieval of that
litigation document by selection of an object or a link." (Id.) Appellants'
argument is not persuasive at least because it does not address the
Examiner's rejection, which is not premised on Wright alone, but on the
combination of Wright and Walters. Where, as here, the rejections are based
upon the teachings of a combination of references, "[ n ]on-obviousness
cannot be established by attacking references individually." In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413,
425 (CCPA 1981)). The Examiner finds, and we agree, Walters discloses
querying a database and returning "at least judicial decisions," and Wright
discloses returning links "including links at least from a judicial document to
a litigation document," and Walters also discloses "a user choosing to view
the queried objects." (Ans. 6 (citing Walters col. 7, 11. 42-58 and col. 11, 11.
10-17; Wright i-fi-18, 35).) Further supporting the Examiner's findings
regarding a "user-interface element" is the disclosure in Walters of
hyperlinks that may be selected by the user to view the returned records.
(Walters col. 8, 11. 7-17.)
Appellants additionally argue the cited references do not teach or
suggest "determin[ing] from the relationship database at least one litigation
document based on the selected at least one judicial decision document."
(App. Br. 19.) In particular, Appellants argue:
Claim 4 recites that the search results (user-interface elements)
are generated in response to a legal-research query. The user-
interface elements are associated with one or more judicial
decision documents included in the search results. After a
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judicial decision document is selected, the server determines a
litigation document from the relationship database based on the
selection. Thereafter, a user-interface element is provided to a
client access device that can be used to retrieve the determined
litigation document.
(App. Br. 20 (emphases added).) Appellants contend Wright's display of
search results "merely communicates static information" and "is not
responsive to a user selection for determining documents." (Id. at 17.)
Therefore, Appellants argue, "user selection of the displayed object does not
cause a determination of a litigation document." (App. Br. 21 (emphasis
added).)
Appellants' argument is unpersuasive because it is not commensurate
with the scope of the claims. See In re Self, 671F.2d1344, 1348 (CCPA
1982) ("[A]ppellant's arguments fail from the outset because ... they are
not based on limitations appearing in the claims."). Claim 4 does not, as
Appellants contend, require the selection of "at least one judicial document"
before "at least one litigation document" is "determine[ d] ... from the
relationship database." (See App. Br. 21.) Rather, claim 4 recites "a server .
. . configured to" both "receive ... a selection of at least one judicial
decision" and to "determine from the relationship database at least one
litigation document based on the selected at least one judicial decision
document." (App. Br. 36 (Claims Appendix) (emphasis added).) As recited,
these limitations do not preclude the server from determining "at least one
litigation document" for each "judicial decision document" returned in the
query, as long as that determination includes "at least one litigation
document based on the selected at least one judicial decision document." In
other words, we disagree with Appellants' argument that the "server"
limitation of claim 4, afforded its broadest reasonable interpretation, imposes
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a temporal or cause-and-effect relationship on the "receive" and "determine"
functions. And as the Examiner finds, and we agree, Walters as modified by
Wright teaches or suggests a server configured to perform all recited
functions in claim 4. (Final Act. 10-11.)
Appellants' arguments for independent claims 6 and 19 are
substantively the same as those presented for claim 4 (App. Br. 22-33), and
are, thus, not persuasive of Examiner error for the reasons stated above with
regard to claim 4. With further regard to independent claim 6, which is
recited in method form, we are not persuaded claim 6 requires a particular
order of the recited "receiving" and "determining" steps, as Appellants argue
in similar fashion to their related argument regarding claim 4. (App. Br. 30-
31: "After at least one of the judicial decision documents is selected, at least
one litigation document is determined from the relationship database based
on the selection of the least one judicial decision document." (emphasis
added)). "[A]lthough a method claim necessarily recites the steps of the
method in a particular order, as a general rule the claim is not limited to
performance of the steps in the order recited, unless the claim explicitly or
implicitly requires a specific order." Baldwin Graphic Systems, Inc. v.
Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008) (citing Interactive Gift
Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342--43 (Fed. Cir. 2001)).
Appellants have not persuasively pointed to claim language, or anything
else, requiring a specific order of steps.
For the foregoing reasons, we are not persuaded of error in the
Examiner's 35 U.S.C. § 103(a) rejection of independent claims 4, 6, and 19,
or of dependent claims 10-13, 15-17, 20-22, or 24--29, which are not
argued separately, and we sustain that rejection.
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B. Claims 14, 18, and 23
Claim 14 depends from claim 4 (indirectly through claim 13), and
adds the limitation "determine from the relationship database at least one
additional litigation document based on the at least one other judicial
decision document." (App. Br. 39 (Claims Appendix).) In other words,
according to Appellants:
[CJ laim 14 recites that, in addition to the at least one litigation
document determined in claim 4, at least one additional litigation
document is determined. The additional litigation document is
determined based on another judicial decision document. As
recited in claim 13, from which claim 14 depends, the other
judicial decision document is related to the at least one judicial
decision document selected by the user in claim 4 (e.g., due to a
common history between the judicial decisions).
(App. Br. 33 (emphases added).) Appellants argue the Examiner's findings
are in error because "Walters and Wright do not disclose or suggest
determining litigation documents related to different judicial decision
documents based on a user selection of one judicial document." (App. Br.
34; see also Reply Br. 4.)
We disagree. The Examiner finds, and we agree, "Wright [Figure 2]
shows a determination of multiple relationships between documents
including between an additional document. The additional documents are
shown as search results and are each selectable to the user." (Ans. 11.)
Wright in particular teaches relationships between different judicial decision
documents (e.g., Fig. 2), and the combination of Wright and Walters, for the
reasons stated above, teaches determining one or more litigation documents
related to judicial decision documents. Appellants' arguments regarding
claim 14 are otherwise substantively repetitive of the arguments raised
regarding claims 4, 6, and 19, which we have found unpersuasive for the
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reasons addressed supra. We are, therefore, not persuaded of error in the
Examiner's 35 U.S.C. § 103(a) rejection of dependent claims 4, 18, and 23,
and we sustain that rejection.
DECISION6
For the above reasons, the Examiner's rejection of claims 4, 6, and
10-29 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
6 Should there be further prosecution of this application (including any
review for allowance), Appellants and Examiner may wish to review the
claims for compliance under 35 U.S.C. § 101, as potentially being directed
to non-statutory subject matter, i.e., an abstract idea, in light of the two-step
framework set out in the Supreme Court decision in Alice Corp. Pty. Ltd. v.
CLS Bank Int 'l, 134 S. Ct. 2347 (2014) (see "2014 Interim Guidance on
Patent Subject Matter Eligibility" (Interim Eligibility Guidance) (79 Fed.
Reg. 74, 618-19 (Dec. 16, 2014), the preliminary examination instructions
on patent eligible subject matter ("Preliminary Examination Instructions in
view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS
Bank International, et al." Memorandum to the Examining Corps, June 25,
2014), and the updates in "July 2015 Update on Subject Matter Eligibility"
(80 Fed. Reg. 75,429 (July 30, 2015))).
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