Ex Parte Holt et al

Board of Patent Appeals and Interferences

Feb 22, 2010

09649436 (B.P.A.I. Feb. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS D. HOLT and LARRY STEPHEN BURKE
____________

Appeal 2008-005361
Application 09/649,4361
Technology Center 2100
____________

Decided: February 22, 2010
____________

Before ST. JOHN COURTENAY, III, THU A. DANG, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed August 25, 2000. The real party in interest is Surfwax,
Inc.
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 1, 2, 6, and 10-46, which are all the claims remaining in the
application, as claims 3-5 and 7-9 are cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.

A. INVENTION
Appellants invented a method for applying linguistics and syntax
analysis to augment searching. (Spec. 2, ll. 18-19.)

B. ILLUSTRATIVE CLAIMS
The appeal contains claims 1, 2, 6, and 10-46. Claims 1, 6, 10, 19, 22,
34, and 44 are independent claims. Claim 1 and 44 are illustrative:
1. A method for real-time distillation of a source document,
comprising:
receiving search criteria from a client;
searching at least one source based on the search criteria;
determining search results responsive to said searching;
distilling a selected one of the search results in
substantially real time relative to the time of selection, the selected
search result having a first content and wherein the distillation
comprises the step of extracting content from the first content in
accordance with at least one data type criterion selected from a
plurality of predefined data type criteria; and
creating a distilled version of the selected search result
including the extracted content,
wherein the distilled version constitutes a data entity
having a predefined format and that is distinct from the search result.
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44. A method for searching, comprising:
receiving search criteria;
searching at least one body of knowledge based on the
search criteria;
providing a plurality of search results that are responsive
to the searching, wherein at least one of the search results is a
document comprised of text content;
selecting one of the text-content document search results;
and
at substantially the time of selection, distilling the
selected document, wherein the step of distilling comprises the
following steps:
extracting content from the selected document in
accordance with a plurality of data type rules;
deriving a plurality of key points from the text
content of the selected document, wherein key points are at
least partially identified by locating text portions within the
document that contain predefined verb types; and
generating a reduced content distilled document
that contains at least a portion of the extracted content and at
least one of the key points.

C. REFERENCES
The references relied upon by the Examiner as evidence in rejecting
the claims on appeal are as follows:
Rubinstein US 5,913,215 Jun. 15, 1999
Lumsden US 6,006,217 Dec. 21, 1999
Balasubramaniam US 6,359,633 B1 Mar. 19, 2002

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D. REJECTIONS
The Examiner entered the following rejections which are before us for
review:
(1) Claims 44-46 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Rubinstein; and
(2) Claims 1, 2, 6, and 10-43 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lumsden in view of Balasubramaniam.

II. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Specification
1. In the Specification, a distilled format “is a reduced content version
of a source document. For example, for a text document, distillation
provides a condensed abstract of the document based on the language within
the source document.” (Spec., 10:8-10.)
Rubinstein
2. Rubinstein discloses that “[t]he document abstract pane 270 is used
to present an abstract from a document identified based on the query
expression constructed by the user. The identified document is a document
meeting the logical criteria set forth in the query expression.” (Col. 7, ll. 55-
59.)
3. Rubinstein discloses that “an abstract of the identified document is
generated by first performing linguistic analysis on the document to identify
concept sentences (i.e., sentences containing keyword phrases) and then
combining the concept sentences.” (Col. 7, ll. 62-66.)
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4. In Rubinstein, “[r]eferential analyzers, including Syntactica,
perform paragraph by paragraph parsing of documents using dictionary
definitions of words to identify grammatically and definitionally significant
phrases (i.e., keyword phrases).” (Col. 8, ll. 35-38.)
Lumsden
5. Lumsden discloses a “method for providing enhanced search
results for searches for documents on the Internet.” (Abst.)
6. In Lumsden, “the preparation includes modifying the search
criteria matches as they appear in the document so that the matches will be
visually distinctive to the user when the user views the document.” (Col. 6,
ll. 59-62.)
7. Lumsden discloses that “the document is also modified to include
code that causes user selection of one of the matching keywords in the
document . . .” (Col. 6, l. 67 to col. 7, l. 4.)
Balasubramaniam
8. Balasubramaniam discloses “a method to generate a hyperlinked
abstract from a markup language document by parsing the document to
create a syntax tree, . . .” (Abst.).
9. In Balasubramaniam, the tree is summarized. (Col. 1, ll. 64-65.)

III. PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005), citing Minn. Mining & Mfg.
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Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.
Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999)
(internal citations omitted).
“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.

IV. ANALYSIS
Grouping of Claims
In the Brief:
Appellants argue claims 44-46 as a group (App. Br. 9-18). For claims
45 and 46, Appellants repeat the same argument made for claim 44. We
therefore treat claims 45 and 46 as standing or falling with claim 44.
Appellants argue claims 1, 2, 6, and 22-33 as a group (App. Br. 19-23;
26-28). For claims 2, 6, and 22-33, Appellants essentially repeat the same
argument made for claim 1. We therefore treat claims 2, 6, and 22-33 as
standing or falling with claim 1.
Appellants argue claims 10-21 as a group (App. Br. 23-26). For
claims 11-21, Appellants essentially repeat the same argument made for
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claim 10. We therefore treat claims 11-21 as standing or falling with claim
10.
Appellants argue claims 34-43 as a group (App. Br. 28-30). For
claims 35-43, Appellants essentially repeat the same argument made for
claim 34. We therefore treat claims 35-43 as standing or falling with claim
34. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588,
590 (Fed. Cir. 1991).
The Anticipation Rejection
Claims 44-46
We first consider the Examiner’s rejection of claims 44-46 under
35 U.S.C. § 102(b) as being anticipated by Rubinstein.
Appellants contend that “[a]s is taught throughout the Rubinstein
specification, the linguistic generation of ‘concept sentences’ and ‘keyword
phrases’ is conducted for all of the documents prior to a search being
conducted in the first instance.” (App. Br. 14.) Appellants further contend
that “[n]owhere in that discussion is there any mention of utilizing
‘predefined verb types’ and a technique for identifying key points, as is
specifically required by the claim.” (App. Br. 17.)
The Examiner found that Fig. 1 of Rubinstein discloses “step 140
recites ‘Linguistically analyze the identified document to generate an
abstract’ corresponds to [the claimed at substantially the time of the
selection, distilling the selected search result].” (Ans. 20.) The Examiner
further found that “Rubinstein teaches at Col. 8 lines 35-40 the step of
Linguistic Analysis by ‘perform[ing] paragraph by paragraph parsing of
documents using dictionary definitions of words to identify grammatically
and definitionally significant phrases (i.e., keyword phrases).’” (Ans. 21.)
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Issue: Have Appellants shown that the Examiner erred in finding that
Rubinstein discloses distilling the selected document at substantially the
time of selection and locating text portions within the document that contain
predefined verb types?

Appellants’ Specification discloses that a “distilled document” is a
reduced version of the source document, i.e., an abstract (FF 1). Similarly,
Rubinstein discloses presenting an abstract of a document identified by a
query (FF 2). However, Appellants essentially contend that Rubinstein’s
abstract is not distilled at substantially the time of selection of the document
but rather before the database is ever searched by the user (App. Br. 12).
We disagree.
For example, Rubinstein discloses that an abstract is presented to the
user and that the abstract comes from a document identified based on the
query expression constructed by the user (FF 2). Rubinstein further
discloses that the abstract of the identified document is generated by
performing linguistic analysis on the document to identify concept sentences
(FF 3). Additionally, as shown in Fig. 1, steps 130-150 of Rubinstein, after
the user constructs a query, one document is identified, linguistically
analyzed to generate an abstract, and then the abstract is presented to the
user. Thus, we find that the claimed “at substantially the time of selection,
distilling the selected document” reads on Rubinstein’s above noted
features. 2

2 We note that our reviewing court has adopted a broad construction for the
term “substantial” as used in patent claims. The Court of Appeals for the
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Appellants further contend that Rubinstein fails to use “predefined
verb types” in identifying key points (App. Br. 17.) However, Rubinstein
discloses parsing the document paragraph by paragraph to identify
grammatically and definitionally significant phrases (FF 4). The ordinary
and usual meaning of “grammatically” includes looking at classes of words,
their inflections, and their functions and relations in the sentence. Merriam-
Webster’s Collegiate Dictionary, p.531 (9th Ed. 1990). We find that
Rubinstein’s grammatical analysis includes reviewing all classes of words,
including verb type. Thus, the claimed “locating text portions within the
document that contain predefined verb types” reads on Rubinstein’s
grammatical and definitional analysis of phrases.
As to the other recited elements of claim 44, Appellants provide no
argument to dispute that the Examiner has correctly shown where all these
claimed elements appear in the prior art. Thus, we deem those arguments
waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Accordingly, Appellants have not persuaded us of error in the
Examiner’s conclusion of anticipation for representative claim 44.

Federal Circuit has reaffirmed that the term “substantial” implies
“approximate.” Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442
F.3d 1322, 1329 (Fed. Cir. 2006). See also Playtext Products, Inc. v. Procter
& Gamble Co., 400 F.3d 901, 907 (Fed. Cir. 2005) (“The term ‘substantial’
is a meaningful modifier implying ‘approximate,’ rather than ‘perfect.’ ”),
citing Liquid Dynamics Corp. v. Vaughan Co., Inc., 355 F.3d 1361, 1368
(Fed. Cir. 2004). In Wilson Sporting Goods, the court determined that a
claimed “insert having a substantially circular cross-section” did not need to
be perfectly circular [emphasis added]. Wilson Sporting Goods, 442 F.3d at
1328-29. Similarly, in Playtext Products, the court determined that the
claimed “substantially flattened surfaces” did not require a perfectly flat
surface. Playtext Products, 400 F.3d at 907.
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Therefore, we affirm the Examiner’s § 102 rejection of independent claim
44 and of claims 45 and 46, which fall therewith.

The Obviousness Rejection
We now consider the Examiner’s rejection of claims 1, 2, 6, and 10-
43 under 35 U.S.C. § 103(a) as being unpatentable under Lumsden and
Balasubramaniam.
Claims 1, 2, 6, and 22-33
Appellants contend that “the addition of material to the enhanced
document, as taught by Lumsden, is contrary to the ‘distillation’ process
recited in claim 1 where materials are extracted from a search result.” (App.
Br. 20.)
Appellants further contend:
Thus, Lumsden purports to provide an enhanced user Web
search experience by providing the user with information
concerning documents accessible by way of the internet. This
end is achieved through the creation and use of “enhanced”
documents. In light of this teaching, it is not clear that the use
of abstracts such as disclosed in Balasubramaniam would
provide any additional benefit in terms of user experience.

(App. Br. 22.)
In addition, Appellants contend that “the Examiner has not
established, nor even asserted, that Balasubramaniam teaches or suggests
the limitation actually recited in claim 1.” (Id.)
The Examiner found that
Lumsden teaches at Fig. 5 that the “enhanced document” can be
created from a search result by clicking on link 60. Lumsden’s
enhanced document is therefore “a reduced content version of a
given result” because it “allows a user to quickly review” and
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thereby “determine whether the corresponding full content
version is of interest.”

(Ans. 23.) The Examiner concludes that “‘reduce content version’ does not
necessar[ily] mean ‘reduce size version’ or ‘reduce length version’ of the
document.” (Ans. 24.) The Examiner further found that “Balasubramaniam
teaches a method for automatically creating an abstract, which is a
summarized version of the document and can be transmitted to a user at a
much faster pa[ce].” (Id.)

Issue: Have Appellants shown that the Examiner erred in finding that
the combination of Lumsden and Balasubramaniam discloses that distillation
comprises the step of extracting content from the first content and creating a
distilled version of the selected search result including the extracted content?

As noted supra, Appellants define a “distilled version” of a document
as a reduced content version of a source document (FF 1). The Examiner
found that Lumsden’s enhanced document is a reduced content version of a
given result (Ans. 23). We disagree.
For example, Lumsden discloses that the enhanced version modifies
the search matches in the document so that the matches are visually
distinctive to the user (FF 5-6), and then adds code to the document which
allows the user to select a matching keyword (FF 7). In other words,
Lumsden’s enhanced version is merely a highlighted expanded version of
the original document. In contrast, claim 1 requires a reduced version (i.e., a
smaller version) of the source document to be generated. Thus, we find that
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the claimed “distilled version” is distinguishable from Lumsden’s enhanced
version.
The Examiner also found that Balasubramaniam discloses
automatically creating abstracts for documents (Ans. 24). While
Balasubramaniam’s abstract can be seen as a reduced version of a source
document, the Examiner has not shown that such an abstract is created from
extracting content from the source content, as required by claim 1.
For example, Balasubramaniam discloses that the abstracts are created
by parsing the document to create a syntax tree (FF 8). Then, the tree is
summarized (FF 9). However, the Examiner has not shown that
Balasubramaniam or Lumsden creates the abstracts by extracting content
from the source document in accordance with at least one data type criterion
selected from a plurality of predefined data type criteria, as required by
claim 1.
Furthermore, the Examiner concluded that
[b]ecause users of Lumsden’s system are only interest[ed] in
portions of document containing the matching keywords, it
would have been obvious to one of ordinary skill in the art to
modify Lumsden’s system as suggested by Balasubramaniam to
create and send a summarized version of the document for
faster transmission.

(Ans. 24-25.) We disagree.
For instance, Lumsden’s user gets an enhanced version of the
document. As such, we find that going from an enhanced version to an
smaller abstract version would defeat the purpose of Lumsden’s invention.
Contrary to the Examiner’s findings, Lumsden’s user are not “only
interested in portions of the documents” but rather are interested in being
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able to efficiently navigate to interested portions of the document using
graphically highlighted keywords. Thus, we find the Examiner’s articulated
reason for modifying Lumsden to only send abstracts deficient. Therefore,
we cannot sustain the rejection of representative claim 1.
Thus, Appellants have persuaded us of error in the Examiner’s
conclusion of obviousness for representative claim 1. Therefore, we reverse
the Examiner’s § 103 rejection of independent claim 1 and of claims 2, 6,
and 22-33, which stand therewith.

Claims 10-21
Appellants contend that “the lengthy passage cited by the Examiner
concerns creation of an abstract, and has nothing to do with presentation, to
a user, of a mid-menu that corresponds to a result object.” (App. Br. 25.)
Appellants further contend that
the “abstractor” cited by the Examiner is employed to create the
abstract . . . so the operation of the “abstractor” necessarily
commences before the “abstract” has been created. On the
other hand, the “mid-menu” recited in claim 10 is not created
until after the result object, alleged by the Examiner to
correspond to the “abstract,” has already been produced.
(Id.)
The Examiner found that “Balasubarmaniam teaches the step of
creating a classified tree (i.e., ‘mid-menu’) that corresponds to the document
to form an abstract, and displaying the abstract to the user, and therefore
anticipates the claimed limitations.” (Ans. 26-27.)

Issue: Have Appellants shown that the Examiner erred in finding that
Balasubarmaniam discloses creating a mid-menu that corresponds to the
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result object, the mid-menu comprising a plurality of menu options and
displaying the mid-menu?

The Examiner found that Balasubarmaniam’s classified tree
corresponds to the claimed mid-menu (Ans. 26-27). However, we initially
note that the Examiner has failed to show that Balasubarmaniam’s classified
tree (i.e., alleged mid-menu) is displayed, as required by claim 10. Instead,
the Examiner merely states that the “abstract” formed by the classified tree is
displayed to the user (id.). Thus, even if we find that the claimed “mid-
menu” reads on Balasubarmaniam’s classified tree (which we have not), the
Examiner has failed to establish that such a tree is displayed.
Furthermore, as argued by Appellants, the mid-menu is created to
correspond to the result object, which necessarily dictates that the creation of
mid-menu follows the creation of the result object. (App. Br. 25.) We agree.
For at least this reason, the claimed “mid-menu” cannot read upon
Balasubarmaniam’s classified tree which precedes the creation of the
abstract.
Thus, Appellants have persuaded us of error in the Examiner’s
conclusion of obviousness for representative claim 10. Therefore, we
reverse the Examiner’s § 103 rejection of independent claim 10 and of
claims 11-21, which stand therewith.

Claims 34-43
In essence, for claims 34-43, Appellants present the same arguments
as presented supra regarding claims 1 and 10, which we have found
persuasive.
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Thus, Appellants have persuaded us of error in the Examiner’s
conclusion of obviousness for representative claim 34. Therefore, we
reverse the Examiner’s § 103 rejection of independent claim 34 and of
claims 35-43, which stand therewith.

V. CONCLUSIONS
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 44-46 under 35 U.S.C. § 102(b).
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1, 2, 6, and 10-43 under 35 U.S.C. § 103(a).

VI. DECISION
In view of the foregoing discussion, we affirm the Examiner’s
rejection of claims 44-46, but reverse the Examiner’s rejection of claims 1,
2, 6, and 10-43.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2009).

AFFIRMED-IN-PART

nhl

ERIC L. MASCHOFF
WORKMAN, NYDEGGER & SEELEY
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