Ex Parte Dweck et al

Board of Patent Appeals and Interferences

May 18, 2010

10016673 (B.P.A.I. May. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAY S. DWECK and REHA ELCI
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Appeal 2009-001825
Application 10/016,6731
Technology Center 2100
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Decided: May 18, 2010
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Before JAMES D. THOMAS, JAY P. LUCAS, and THU A. DANG,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed October 30, 2001. The real party in interest is Goldman,
Sachs and Co.
Appeal 2009-001825
Application 10/016,673

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 26 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

We affirm.

Appellants’ invention relates to a method and apparatus for efficiently
selecting documents for retrieval to a human or machine content reader
based on comparing content selection tags to indicia related to the
documents. In the words of Appellants:
A content provider can store information
that will be made available to content readers. For
example, a financial company might store
hundreds of thousands of documents (e.g.,
investment reports, stock charts, and market
predictions) that will be made available to
customers via a Web site.
. . . .
According to one embodiment, information
is received from a content reader. A set of content
selection tags is established based on the received
information, each content selection tag in the set
being associated with a hierarchical tag domain. It
is then arranged for the content reader to receive
an indication of a document in accordance with the
set of content selection tags.
According to still another embodiment, an
indication of a first content selection tag set is
received from a content reader via a graphical user
interface, the first content selection tag set being
adapted to facilitate identification of a first
investment research document in accordance with
a first document tag set. An indication of a second
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content selection tag set is also received from the
content reader, and the second content selection
tag set is adapted to facilitate identification of a
second investment research document in
accordance with a second document tag set. It is
then arranged for an indication of the first
investment research document to be displayed via
a first portion of a content reader display and for
an indication of the second investment research
document to be displayed via a second portion of
the content reader display.

(Spec. 1, ll. 11 to 14 and Spec. 3, ll. 5 to 19).

Claim 1 and claim 20 are exemplary and are reproduced below:
1. A method of facilitating access to
documents, comprising:

receiving information from a content reader;

establishing a set of content selection tags
based on the received information, each content
selection tag in the set being associated with a
hierarchical tag domain;

arranging for the content reader to receive
an indication of a document in accordance with the
set of content selection tags; and

storing the set of content selection tags in
association with the content reader.

20. The method of claim 19, wherein the
first set of content selection tags is associated with
a first portion of a reader display and the second
set of content selection tags is associated with a
second portion of the reader display.

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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Beaulieu US 5,502,637 Mar. 26, 1996
Husick US 5,717,914 Feb. 10, 1998
Snow US 6,098,066 Aug. 01, 2000
Anderson US 6,510,434 B1 Jan. 21, 2003

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1, 2, 4 to 12, 15 to 19, 22, 25, and 26 stand rejected under 35
U.S.C. § 103(a) for being obvious over Snow in view of Anderson.
R2: Claims 3, 13, 20 and 21 stand rejected under 35 U.S.C. § 103(a) for
being obvious over Snow in view of Anderson and Husick.
R3: Claim 23 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Snow in view of Anderson and Beaulieu.
R4: Claim 14 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Snow in view of Anderson and Beaulieu.

Appellants contend that the claimed subject matter is not rendered
obvious by Snow alone, or in combination with Anderson, Husick and
Beaulieu, for failure of the references to teach claimed limitations or to be
properly combined. The Examiner contends that each of the claims is
properly rejected.
The rejections will be reviewed in the order argued by Appellants.
Only those arguments actually made by Appellants have been considered in
this opinion. Arguments that Appellants could have made but chose not to
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make in the Brief have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a). The issue specifically turns
on whether there is a legally sufficient justification for combining the
disclosures of Snow and Anderson and whether Snow or Anderson teach a
set of content selection tags as claimed.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a method of providing documents to document
readers based on tags of the documents related to the technology sector to
which it is related, or to other characteristics of the document (Spec. 9, ll.
17 to 27). These are compared to content selection tags, which indicate
the subject matter for which the reader is seeking (Spec. 13, ll. 13 to 19).
The content selection tags may be stored in association with the content
reader (Spec. 14, l. 5).
2. Snow teaches the classification of documents into categories and sub-
categories for searching in a node/tree structure (Col. 2, ll. 59 to 67).
Likewise, Snow teaches content selection categories, chosen by a user, to
specify the object of the search (Col. 8, ll. 49 to 67).
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3. Anderson teaches category tags associated with documents being
searched (Col. 2, l. 55). Search terms corresponding to domains and
categories of indices are mapped to XML tags (Col. 3, ll. 12 and 13).
PRINCIPLES OF LAW
BURDEN AND REVIEW STANDARDS
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
“It is common sense that familiar items may have obvious uses
beyond their primary purposes, and a person of ordinary skill often will be
able to fit the teachings of multiple patents together like pieces of a puzzle.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007).
References within the statutory terms of 35 U.S.C. § 103 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two
separate tests define the scope of analogous prior art: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed and,
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(2) if the reference is not within the field of the inventor's endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved. In re Deminski, 796 F.2d 436, 442 (Fed. Cir.
1986); see also In re Wood, 599 F.2d 1032, 1036 (CCPA 1979) and In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).). Furthermore, “‘there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

ANALYSIS
From our review of the administrative record, we find that the
Examiner presents conclusions of unpatentability on pages 4 to 23 of the
Examiner’s Answer. In opposition, Appellants present a number of
arguments.

Arguments with respect to the rejection
of claims 1, 2, 4 to 12, 15 to 19, 22, 25, and 26
under 35 U.S.C. § 103(a) [R1]

The Examiner has rejected the noted claims for being obvious over
Snow and Anderson. Appellants argue first that the Examiner “has not
provided a reasonable motivation to combine Snow and Anderson … as
recited in the claims.” (Brief 5, top) (emphasis omitted). We find that each
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of the references, Snow and Anderson, is from the same field of endeavor as
the Appellants’ invention, namely database searching with tagged
documents, and that the Examiner has expressed a rationale for combining
the teachings. In accordance with the principles of In re Clay (cited above)
and KSR (cited above), we hold that the references may be properly
combined.
Appellants then allege that neither Snow nor Anderson disclose
“storing the set of content selection tags in association with the content
reader” as claimed (Brief 6, bottom). The Examiner points to the storing of
document tags, not to the storing of content selection tags, at Snow (col. 2,
ll. 62 to 64; Ans. 24, top). However, the Examiner also points to Anderson
(col. 2, l. 53 to col. 3, l. 7; Ans. 24, top). This latter Anderson teaching
discusses receiving and necessarily holding sets of tags corresponding to the
search request. We find this teaching sufficient to render obvious the
claimed “storing the set of content selection tags in association with the
content reader”.
With regard to Appellants’ arguments concerning claims 18, 19 and
20 (the latter rejected under [R2]), we find that Snow and Anderson provide
the necessary teachings of portions of the display to render the claims
obvious, for the reasons expressed by the Examiner which we adopt. (Ans.
24, bottom and 25, top).
CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 26 under 35 U.S.C. § 103(a)
as specified in rejections [R1] to [R4].

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DECISION
The Examiner’s rejections [R1] to [R4] of claims 1 to 26 are 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)(1)(iv).
AFFIRMED

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