Ex Parte Kemp

Patent Trial and Appeal Board

Oct 31, 2014

10603207 (P.T.A.B. Oct. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD DOUGLAS KEMP
____________

Appeal 2012-003369
Application 10/603,207
Technology Center 2100
____________

Before ELENI MANTIS MERCADER, JASON V. MORGAN,
and MICHELLE N. WORMMEESTER, Administrative Patent Judges.

WORMMEESTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–12, 16–24, 30, 32–35, and 56–69, which constitute all
the claims pending in this application. Claims 13–15, 25–29, 31, and 36–55
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

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STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to providing information over a
communication network. See Specification ¶ 3. Exemplary independent
claim 1 and dependent claim 8 read as follows:
1. A system for providing legal information comprising
associated items of legal information and content, the system
comprising:
at least one computer and a plurality of user terminals
which communicate over a network;
at least one database associated with the at least one
computer storing the legal information in association with a
plurality of legal topics and a plurality of types of legal
information; and
a computer readable medium or media storing
programming that causes the at least one computer to:
access within the at least one database a plurality
of items of legal information responsive to a request
received from a user terminal, each item of legal
information being associated with one or more respective
topic tags and one or more respective type tags, each
topic tag identifying a legal topic or subtopic associated
with the associated item of legal information and each
type tag identifying a type of legal information
corresponding to the associated item of legal information;
and
cause each item of legal information associated
with the accessed information to be provided for display
on a display device associated with the user terminal
from which the request was received, automatically
tabulated by the respective type tags and configured to be
selectable at the user terminal to provide a request for
display on the display device of the content associated
with the selected item.

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8. The system of claim 1, wherein the programming causes
the at least one computer to:
automatically and periodically access the at least one
database to determine whether new legal information
responsive to the request is stored within the at least one
database while each item of legal information associated with
the previously accessed legal information is provided for
display on the display device; and
if new legal information responsive to the request is
stored within the at least one database, provide for display on
the display device each item of legal information associated
with the new legal information, together with each item of legal
information associated with the previously accessed legal
information all tabulated by type.
Applied Prior Art
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Williamson et al.
(Williamson)
US 2006/0253449 A1 Nov. 9, 2006
Rejections
Claims 1–12, 16–24, 30, 32–35, and 56–69 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Williamson. See Ans. 4–16.

ANALYSIS
Claims 1, 3, 5, 6, 16–24, 56–61, 63–65, and 68
Appellant argues that the Examiner erred in rejecting independent
claim 1 because Williamson fails to disclose (1) items of legal information
that are (2) associated with content, one or more topic tags, and one or more
type tags, (3) tabulated by type for display, and (4) selectable to cause a
request for the associated content. See App. Br. 8–11. Independent claims
58 and 68 recite similar features. We disagree with Appellant.
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The Examiner finds that Williamson’s specific topics 63 correspond
to the claimed items of legal information (see Ans. 18); Williamson’s
selected clause 67 corresponds to the claimed content (see Ans. 5; see also
Williamson ¶¶ 51, 53, Fig. 4); Williamson’s topic heading 61, general topics
62, and specific topics 63 correspond to the claimed one or more topic tags
(see Ans. 19 (emphasizing topic heading, general topics, and specific
topics)); and Williamson’s general topics 62 correspond to the claimed one
or more type tag (see Ans. 5, 19). As to the third and fourth argued features,
the Examiner finds that the specific topics 63 (or items of legal information)
are tabulated according to the general topics 62 (or type tags) and selectable
to cause a request for the associated clause 67 (or content). See Ans. 5, 19;
Williamson ¶¶ 51, 53, Fig. 4. We note that Appellant acknowledges that a
user in Williamson “can select a particular clause from the specific topics.”
See App. Br. 9.
Challenging the Examiner’s findings, Appellant contends that the
claim terms “items of legal information,” “content,” “legal topic,” and “type
of legal information” are mutually exclusive categories. See App. Br. 8; see
also Reply Br. 2. Appellant does not, however, identify any language in the
claims or the specification that requires these categories to be mutually
exclusive. We note that the cited portion of the specification states in part:
In some embodiments of the invention it is advantageous to
break down information within a given field into a number of
analytical topics . . . and to classify information within those
topics as belonging to one or more types . . . . For example, in a
system for providing legal information using the topic list set
out above, the types or classes “administrative action,” “current
rulemaking,” “news,” “recent cases,” and “legislative alert”
have been found to be widely applicable.
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See Specification ¶ 42 (emphasis added). While the items of legal
information may be associated with a legal topic, a type of legal information,
or both, as Appellant contends (see App. Br. 8), we see no language in the
cited portion of the specification that requires these categories to be mutually
exclusive. Accordingly, we find Appellant’s argument unpersuasive.
Appellant further contends that the displayed specific topics 63 in
Williamson cannot correspond to the claimed items of legal information
because the specific topics “are all items of the same type of legal
information, and display of items of only a single type logically cannot
include tabulation of items by type.” See App. Br. 9. Appellant does not,
however, provide any explanation as to why the display of items of a single
type cannot include tabulation of items by type. Moreover, the Examiner
points out that Appellant’s specification states, “Information is provided in
tabulated form when it is sorted, placed in tables, or presented logically.”
See Ans. 19 (emphasis omitted); Specification ¶ 9. The Examiner also
points out that Figure 4 of Williamson shows a logical presentation of the
specific topics 63 (or items of legal information). See Ans. 19; Williamson,
Fig. 4; see also Williamson ¶ 70 (“Upon user input, a specific submenu of
particular clause types, using the indices 43, is presented . . . . Upon user
input, a clause is retrieved from the clause table 40 and presented (block
163).”). We therefore find Appellant’s argument unpersuasive.
Appellant further contends that Williamson fails to disclose accessing
items of legal information responsive to a request. See App. Br. 9–10. As
the Examiner points out, however, Williamson discusses a server that
provides multiple clients with access to a shareable database. See Ans. 19;
Williamson ¶ 33. Each client executes a browser that provides a user
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interface into the legal document drafting system, which stores clauses. See
Williamson ¶¶ 34, 35. Further, as discussed above, a user may select a
clause for display. See Williamson ¶¶ 51, 53; see also Williamson ¶ 70
(“Upon user input, a specific submenu of particular clause types, using the
indices 43, is presented . . . . Upon user input, a clause is retrieved from the
clause table 40 and presented (block 163).”). Given these teachings in
Williamson, we find Appellant’s argument unpersuasive.
Appellant further contends that Williamson’s clauses are not updated
in real-time. See App. Br. 8. As claim 1 does not recite this feature,
however, Appellant’s argument is not commensurate in scope with the
claim, and the argument is therefore unavailing.
Appellant does not argue separately any features in dependent claims
3, 5, 16–24, 56, 57, 59–61, and 63–65.
In view of the foregoing, we are unpersuaded of error in the
Examiner’s findings as to the argued features, and we sustain the Examiner’s
§ 102 rejection of claims 1, 3, 5, 6, 16–24, 56–61, 63–65, and 68.
Claims 2 and 4
Appellant argues that the Examiner erred in rejecting claims 2 and 4
because Williamson fails to disclose at least two of the types of legal
information listed in the claims. See App. Br. 11–12. Although the types of
legal information disclosed in Williamson may be different than those listed
in the claims, as Appellant contends (see App. Br. 11–12), we agree with the
Examiner that Appellant’s claimed types of legal information constitute
nonfunctional descriptive material (see Ans. 20). See In re Ngai, 367 F.3d
1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed.
Cir. 1983). See also Ex parte Nehls, 88 USPQ2d 1883, 1887–90 (BPAI
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2008) (precedential). Accordingly, we are unpersuaded of error in the
Examiner’s findings, and we sustain the Examiner’s § 102 rejection of
claims 2 and 4.
Claims 7 and 66
Appellant argues that the Examiner erred in rejecting claims 7 and 66
because Williamson fails to disclose accessing automatically new
information responsive to a request while previously accessed information
responsive to the same request is displayed and providing the new
information for display together with the previously displayed information.
See App. Br. 12–14. We disagree with Appellant.
The Examiner finds that Williamson’s annotation corresponds to the
claimed new information. See Ans. 7, 21 (citing Williamson ¶¶ 36, 70, Figs.
4, 9). Williamson teaches retrieving and displaying a clause upon user input
(see Williamson ¶ 70, Fig. 9 (item 163)), and then retrieving any associated
annotation and displaying it together with the clause (see Williamson ¶ 70,
Figs. 4 (items 67, 68), Fig. 9 (item 164)). We note that the associated
specific topics 63 are also displayed along with the clause and annotation.
See Williamson, Fig. 4.
Appellant contends that Williamson does not discuss frequently
updating information and that there would therefore be no reason to check
for updates and display updated information. See App. Br. 13. Claims 7 and
66 do not refer to updated information, however; rather, the claims refer to
new information. The term “new” is defined as “[a]dditional.” See
AMERICAN HERITAGE DICTIONARY 839 (2d. ed. 1982). Williamson
discusses using annotations associated with clauses to impart expert
knowledge. See Williamson ¶ 36; see also id. ¶ 45 (annotations provide
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explanatory descriptions of clauses). As Williamson’s annotations constitute
additional (or new) information, we find Appellant’s argument unpersuasive.
Appellant further contends that Williamson does not disclose “new
legal information responsive to a user’s request.” See App. Br. 13. In
particular, Appellant contends that clicking on a hyperlink provided as a part
of Williamson’s annotation to obtain new information constitutes a new
request. See Reply Br. 2–3. While this may be true, Williamson teaches
that the annotation itself—which corresponds to the claimed new
information—and the clause (previously accessed information) are
responsive to the same request. See Williamson ¶ 70, Figs. 4, Fig. 9.
Accordingly, we find Appellant’s arguments unpersuasive.
We note Appellant’s contention that “the request” recited in claim 7
refers to “a request received from a user terminal, in response to which the
plurality of legal items are accessed in the database or databases,” which is
recited in claim 1. See Reply Br. 2. Appellant raises this argument for the
first time in the Reply Brief, and it is not in response to a new issue brought
up by the Examiner in the Answer. We therefore find this new argument
waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative). We nonetheless also find this argument unpersuasive. Claim
1 recites additionally a request for display to which “the request” recited in
claim 7 may refer.1 As discussed above, the annotation (new information) is
responsive to the same request (for display) to which the clause (previously
accessed information) is responsive.

1 Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review the claims for
compliance under 35 U.S.C. § 112.
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Appellant further contends that Williamson does not disclose
“accessing such [new] information while previously accessed responsive
items are displayed.” See App. Br. 13. As discussed above, Figure 4 of
Williamson shows the specific topics 63 (items of legal information
associated with previously accessed legal information) being displayed
while the clause (previously accessed legal information) and annotation
(new information) are accessed and displayed. See Williamson ¶ 70, Fig. 4.
Accordingly, we find Appellant’s argument unpersuasive.
Finally, Appellant contends that Williamson does not disclose
accessing automatically the new information. See App. Br. 13; Reply Br. 2.
As discussed above, Williamson teaches retrieving and displaying a clause
upon user input (see Williamson ¶ 70, Fig. 9 (item 163)), and then retrieving
any associated annotation and displaying it together with the clause (see
Williamson ¶ 70, Figs. 4 (items 67, 68), Fig. 9 (item 164)). See also
Williamson ¶ 45 (“The annotations are automatically displayed upon the
selection of a clause or outline.”). Accordingly, we find Appellant’s
argument unpersuasive.
In view of the foregoing, we sustain the Examiner’s § 102 rejection of
claims 7 and 66.
Claims 8, 9 and 67
Appellant argues that the Examiner erred in rejecting claims 8, 9, and
67. See App. Br. 12–14. With respect to claims 8 and 67, Appellant
contends that Williamson fails to disclose accessing automatically and
periodically the new information discussed above. See App. Br. 13–14;
Reply Br. 3. With respect to claim 9, Appellant contends that Williamson
fails to disclose accessing automatically and continually the new information
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discussed above. See App. Br. 13; Reply Br. 3. We agree with Appellant.
The Examiner does not identify in Williamson any teaching that access to
the annotation is periodic or continual.2 Accordingly, we find Appellant’s
arguments persuasive, and we do not sustain the Examiner’s § 102 rejection
of claims 8, 9, and 67.
Claims 10–12, 32, and 33
Appellant argues that the Examiner erred in rejecting claim 10
because Williamson does not disclose a plurality of databases. See App. Br.
16–17. Claims 11, 12, 32, and 33 recite similar features. We disagree with
Appellant.
The Examiner finds that Williamson’s plurality of logical tables
corresponds to the claimed plurality of databases. See Ans. 22; Williamson
¶ 42, Fig. 3. Appellant contends that “the examiner incorrectly interprets
‘database’” as being a table. See Reply Br. 3–4. In particular, Appellant
contends that “[t]he examiner seems not to see any requirement even that the
tables be actually separate to be treated as separate databases, so long as they
are ‘logically’ separate.” See Reply Br. 4. Appellant does not, however,
identify any language in claim 10 that requires the databases to be “actually”
separate. Moreover, Appellant does not explain why logical separation is
different than actual separation. Accordingly, we find Appellant’s argument
unpersuasive.
Appellant seems to further contend without explanation that “storing
clauses, outlines, and annotations in separate logical tables [does not]

2 As our analysis is constrained by the Examiner’s rejection under 35 U.S.C.
§ 102 and the record before us, we express no opinion regarding obviousness
under 35 U.S.C. § 103.
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constitute storing them in different ‘databases’ by legal topic.” See Reply
Br. 4. We note, however, that Williamson teaches that the logical tables are
indexed by indices that form associations with the clauses, outlines,
annotations, and learn topics “preferably using a topical ordering based on
the subject matter.” See Williamson ¶¶ 14, 15, 47. Without further
explanation from Appellant as to why Williamson does not disclose the
argued feature, we find Appellant’s argument unpersuasive.
In view of the foregoing, we sustain the Examiner’s § 102 rejection of
claims 10–12, 32, and 33.
Claims 30 and 69
Appellant argues that the Examiner erred in rejecting independent
claims 30 and 69 because Williamson fails to disclose two features: (1)
“causing legal information associated with the identified documents to be
provided for display on the display device, automatically tabulated by type
according to the identifiers associated with the respective identified
documents”; and (2) “formatting the documents according to a protocol.”
We disagree with Appellant.
As to the first argued feature, Appellant maintains Appellant’s
arguments with respect to claim 1 and does not provide additional
arguments. See App. Br. 14. For the reasons discussed above, we find
Appellant’s arguments unpersuasive.
As to the second argued feature, the Examiner finds that Williamson
teaches formatting legal documents using tag-delimited language, such as
HTML or XML, and therefore discloses formatting documents according to
a protocol. See Ans. 21. Appellant contends that “formatting according to a
protocol means more than simply specifying that, e.g., XML be used to mark
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up a document, but includes specifying particular document structure and
can include specifying particular content.” See App. Br. 15; see also Reply
Br. 3. Appellant does not, however, identify any language in claims 30 or
69 that requires specifying document structure or content. Moreover, the
cited portions of the specification discuss specifying structure and content as
an example, not a requirement. See Specification ¶ 24 (“documents are
formatted according to a protocol, which specifies, for example, the format
and content structure . . . , as well as the information content”) (emphasis
added). Appellant’s specification also states:
Preferably a part of the process of placing the document in
standardized format comprises formatting the document data
according to a standardized protocol. In general, electronic
documents according to the invention may be in any one of a
variety of formats, such as, but not limited to . . . Hyper-Text
Markup Language (HTML), Extended Markup Language
(XML) . . . .
See Specification ¶ 49. Thus, Appellant’s specification provides formatting
documents in HTML or XML as an example of formatting documents
according to a standardized protocol. We therefore find Appellant’s
argument unpersuasive.
Appellant further contends without explanation that it is not clear that
a document in HTML or XML has been formatted according to a protocol
within the meaning of the present claims. See App. Br. 16. As discussed
above, however, Appellant’s specification provides formatting documents in
HTML or XML as an example of formatting documents according to a
standardized protocol. See Specification ¶ 49. Accordingly, we find
Appellant’s argument unpersuasive.
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Appellant further contends that Williamson teaches formatting web
pages using HTML or XML, while the Examiner “suggests that the clauses,
and not the Web pages, correspond to the claimed documents.” See App. Br.
16; Reply Br. 3. As shown in Figure 4 of Williamson, however, the clauses
are displayed as web pages. See Williamson, Fig. 4. Accordingly, we find
Appellant’s argument unpersuasive.
In view of the foregoing, we sustain the Examiner’s § 102 rejection of
claims 30 and 69.
Claims 34 and 35
Appellant argues that the Examiner erred in rejecting claims 34 and
35 because Williamson fails to disclose the recited features: (1) checking a
document for compliance with a protocol; (2) generating a notice of defects;
and (3) formatting a non-complying document according to the protocol.
See App. Br. 16. The Examiner does not identify in Williamson any
teaching of these argued features. Accordingly, we find Appellant’s
argument persuasive, and we do not sustain the Examiner’s § 102 rejection
of claims 34 and 35.
Claim 62
Contrary to Appellant’s contention (see App. Br. 13), claim 62 does
not recite features similar to those recited in any of claims 7–9; and
Appellant does not argue separately the features recited in claim 62.
Accordingly, we treat claim 62 as not being argued, and we therefore sustain
the Examiner’s § 102 rejection of claim 62.

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DECISION
The Examiner’s decision rejecting claims 1–7, 10–12, 16–24, 30, 32,
33, 56–66, 68, and 69 under 35 U.S.C. § 102(e) is affirmed.
The Examiner’s decision rejecting claims 8, 9, 34, 35, and 67 under
35 U.S.C. § 102(e) is reversed.
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-IN-PART

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