Ex Parte Duncan et al

Patent Trial and Appeal Board

Feb 25, 2015

11854314 (P.T.A.B. Feb. 25, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHN DUNCAN, RAMON CAUDET, and
CARL W. WILLIAMS
1

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Appeal 2012-009469
Application 11/854,314
Technology Center 2100
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Before CARLA M. KRIVAK, JOHN A. EVANS, and
ROBERT L. KINDER, Administrative Patent Judges.

KINDER, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1 and 3–26. We have jurisdiction
under 35 U.S.C. § 6(b). An oral hearing was held February 10, 2015.
We REVERSE.
STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention generally relates to an information and
document research system, and more particularly to a research system and

1
According to Appellants, the real party in interest is Executive Data
Systems, Inc. App. Br. 1.
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method including a record builder for improving search accuracy and
reducing redundancy. Spec. ¶ 1.
Claims on Appeal
Claims 1 and 3–26 are the claims on appeal. Claims 1, 8, 19, and 22
are independent. We select independent claim 1 as illustrative (emphasis
added):
1. A system for providing relevant documents from a
plurality of databases, comprising:
at least one processor;
a search module executing on said processor for
receiving at least one search expression via a user computer and
executing one or more searches according to the received
search expression;
at least one managed database including a plurality of
managed documents previously identified in search results by
said search module in one or more prior searches executed by
said search module, each of said managed documents having
been selectively chosen by a user from the search results for
storage in said managed database upon the one or more prior
searches, said at least one managed database further including a
plurality of search records including one or more prior search
expressions,
wherein each of the managed documents is associated in
said managed database with at least one of the prior search
expressions used to identify such managed document in at least
one of the prior searches;
a plurality of unmanaged databases including a plurality
of unmanaged documents;
wherein said search module comprises software for
searching the at least one managed database to identify at least
one of the prior search expressions corresponding to the at least
one received search expression and retrieving at least one of the
managed documents associated with the identified prior search
expression from said managed database;
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wherein said search module further comprises software
for searching said plurality of unmanaged databases to identify
one or more unmanaged documents corresponding to the at
least one received search expression, receiving a user selection
of at least one of the unmanaged documents associated with the
at least one received search expression, and storing the at least
one of the unmanaged documents associated with the received
search expression in said at least one managed database.

Examiner’s Rejection
2

Claims 1 and 3–25 are rejected under 35 U.S.C. § 102(b) (2011) as
being anticipated by Fikes (US 2006/0224583 A1, published Oct. 5, 2006,
filed Mar. 31, 2005). Ans. 5. Because the publication date of Fikes is less
than one year prior to the filing date of Appellants’ Application No.
11/854,314 (filed Sept. 12, 2007), the rejection should have been based on
35 U.S.C. § 102(e) (2011) and not § 102(b). Appellants failed to address
this discrepancy and we therefore treat the anticipation rejection as if
properly made pursuant to § 102(e).

ANALYSIS
Claim 1 requires in pertinent part, “each of said managed documents
having been selectively chosen by a user from the search results for storage
in said managed database upon the one or more prior searches.” The
Examiner first relies on the “user information database” of Fikes as
disclosing the claimed “managed database.” Ans. 18. The Examiner then
relies on Fikes’ teaching of a user’s ability to “selectively subscribe to . . .
various data types,” as disclosing the user selection limitation. Fikes ¶ 36;

2
In the Answer, the Examiner withdrew rejections made pursuant to
35 U.S.C. § 112. Ans. 17.
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Ans. 21, 24 (“Fikes discloses that the user selects the types of data to be
stored by selecting the type of data to be stored, a user is provided with an
opportunity to selectively subscribe to each of the various data types
individually or collectively.” (Emphases omitted)). The Examiner also relies
on other embodiments of Fikes related to “contentID 522,” event data
associated with a user record, as well as query terms associated with a
recorded event. Ans. 20–22 (quoting Fikes ¶¶ 46, 47); see also Fig. 5.
Appellants contend “the subscriptions described in Fikes identify
types of data that a user wants to receive (see ¶ 0036) and do not relate at all
to a user selectively identifying documents from search results to store such
documents in a managed database.” Reply Br. 3; App. Br. 12. Further,
Appellants continue, “[b]y subscribing to a particular data type, the user will
merely receive all data associated with the chosen data type, regardless of
whether it is relevant or not. Thus, in Fikes, particular documents are not
selectively identified by the user for storage in a managed database.” Reply
Br. 3–4.
The Examiner relies on at least three distinct embodiments of Fikes to
disclose just the user selection limitation at issue. See Ans. 6 (reliance on
the user subscription capability of ¶ 36 as depicted in Figs. 2 (220) and 3, the
user’s ability to add, modify, or delete discrete events discussed in ¶ 44, and
then the “user information database” (116) (Fig. 1) and user records stored in
the database as depicted in Fig. 5). When relying on several embodiments in
an anticipation analysis, the relationship and compatibility of these
embodiments should be readily discernable to a person of ordinary skill in
the art. In an anticipation rejection, “it is not enough that the prior art
reference . . . includes multiple, distinct teachings that [an ordinary] artisan
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might somehow combine to achieve the claimed invention.” Net MoneyIN,
Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
We cannot discern how the embodiment of Fikes discussing a user’s
ability to selectively subscribe to each of the various data types individually
or collectively (¶ 36) discloses a user selectively choosing a managed
document, based on one or more prior searches, “for storage in said
database” (the “user information database” of Fikes). There is no indication
that a user’s subscription to a data type is based on any specific prior search
or that a user selectively choses a data type for placement into Fikes’ user
information database.
Because we have no persuasive evidence before us that Fikes
discloses each limitation of claim 1, we cannot not sustain the Examiner’s
rejection of claim 1 under 35 U.S.C. § 102(e). Likewise, because each
independent claim recites similar limitations to those addressed supra, we
also do not sustain the Examiner’s anticipation rejection of claims 3–26.

CONCLUSION
On the record before us, we conclude that the Examiner has erred in
rejecting claims 1 and 3–26 under 35 U.S.C. § 102(e).

DECISION
As such, we REVERSE the Examiner’s Final Rejection of claims 1
and 3–26.
REVERSED

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