Ex Parte Purvis

Board of Patent Appeals and Interferences

Feb 27, 2007

10202227 (B.P.A.I. Feb. 27, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board
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UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte LISA S. PURVIS
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Appeal 2007-0014
Application 10/202,2271
Technology Center 2100
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DECIDED: February 27, 2007
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Before LEE E. BARRETT, JOSEPH F. RUGGIERO, and LANCE LEONARD
BARRY, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) and 306 from the final
rejection of claims 1-5 and 11.
We reverse.

1 Application for patent filed July 23, 2002, entitled "Case-Based System
and Method for Generating a Custom Document."
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BACKGROUND
The invention relates to a method to find document components and
assemble them into a custom document.
Claim 1 is reproduced below.
1. A method for automatically selecting an electronic document from
a document case base to be used in creating a new electronic document,
comprising:

(a) inputting features defining an electronic document to be created;

(b) searching an electronically stored document case base for
document, stored therein, substantially matching the inputted features;

(c) selecting, automatically, one of the substantially matched
documents; and

(d) modifying, automatically, the selected document to correspond to
the inputted features to create an electronic document to be used in creating
a new electronic document.

THE REFERENCES

The Examiner relies on the following references:

Koski US 6,571,251 May 27, 2003

Kiyoujima JP 404116765 A Apr. 17, 1992

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THE REJECTION
Claims 1-5 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Koski and Kiyoujima. The Examiner finds that Koski teaches
the claimed invention except for the step of modifying being done automatically.
The Examiner finds that Kiyoujima discloses automatically generating a new
electronic document in accordance with input from a user and concludes that it
would have been obvious to have incorporated automatic updating in Koski to
provide for automatic document generation.

DISCUSSION
The first issue involves steps (a), (b), and (c) of inputting features of an
electronic document to be created, searching a case base of documents for a
document substantially matching the inputted features, and automatically selecting
one of the substantially matching documents.
Appellant argues that Koski is directed to a case management system that
allows a user to find a similar experience or incident in a database to glean the
relevant solution or answer to the current problem, and is not directed to searching
out electronic documents based upon document features to gather a starting point
for generating a new document (Br. 5).
The Examiner responds that the cases in Koski "can relate, for example, to
help desk support, sales support, customer service, medical diagnosis, engineering
design, executive information systems, or the like" (col. 2, ll. 63-66) and "[t]hus,
the cases in Koski reference are considered as documents" (Answer 6).
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Appellant replies that the Examiner's position that entering a description of
an incident and finding a case related to the inputted description is equivalent to
the claimed input of document features and finding a document that is related to
the inputted document features is unsustainable (Reply Br. 4). It is argued that
claim 1 requires that features, corresponding to non-content based document
structure and layout which defines the "electronic document to be created," are
inputted, whereas in Koski, a description of the problem is entered to enable
resolution of the problem, not the creation of an electronic document (id.).
Moreover, it is argued the Koski desires to find a case with a particular content to
provide a solution to a query, not to find a case (document) having a particular
structure or layout of a document as in the claim (id. at 5).
Both Appellant's invention and Koski deal with "case-based reasoning
(CBR)" using a "case base." Koski relates to CBR, in general. The inputted
attributes in Koski are described by a property-value pair, as in the present
invention. We presume that the "cases" in Koski can be considered to be
"documents," as stated by the Examiner, in the broad sense that a computer data
file can be considered to be a document, which are retrieved based on inputted
features. However, the inputted attributes (features) in Koski do not "defin[e] an
electronic document to be created," but define a case which most closely matches
the input attributes. Koski is not directed to searching out electronic documents
based on document features so as to gather a starting point for generating a new
document. While it may have been obvious to apply the teachings of Koski so that
the cases are electronic documents and the searching is for electronic documents
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that satisfy the input attributes for an electronic document to be created, this
reasoning is not set forth by the Examiner and would require some motivation not
found in Koski. Nevertheless, this is not the only problem with the rejection.
The second issue involves step "(d) modifying, automatically, the selected
document to correspond to the inputted features to create an electronic document to
be used in creating a new electronic document." Appellant states (Br. 3) that this
feature is described at lines 7-8 of page 5 of the filed specification, which states:
"Perform an adaptation process on the selected documents to create the final
desired output document." The "adaptation process" corresponds to "modifying."
The specification states to "use an adaptation mechanism to transform that solution
to meet exactly the requirements of our new document" (page 5, ll. 21-22), that
corresponds to claim step (d). There is no description instructing one of ordinary
skill in the art how to make or use "an adaptation mechanism" which would
automatically modify a selected document so, presumably, the Examiner has
determined this to be within the level of ordinary skill in the art or the application
would be nonenabling. See In re Epstein, 32 F.3d 1559, 1568, 31 USPQ2d 1817,
1823 (Fed. Cir. 1994) ("Rather, the Board's observation that appellant did not
provide the type of detail in his specification that he now argues is necessary in
prior art references supports the Board's finding that one skilled in the art would
have known how to implement the features of the references and would have
concluded that the reference disclosures would have been enabling."); In re Fox,
471 F.2d 1405, 1407, 176 USPQ 340, 341 (CCPA 1973) (appellant's specification
"assumes anyone desiring to carry out the process would know of the equipment
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and techniques to be used, none being specifically described"). It is not clear
where the specification discloses modifying "automatically."
Appellant disputes the Examiner's finding that Koski teaches, at column 3,
line 54 through column 4, line 12, modifying the selected document to correspond
to the inputted features to create an electronic document to be used in creating a
new electronic document. It is argued that "views" in Koski are structures in the
database to facilitate searching, not documents dependent upon input from the user
and the generation of a view is not dependent upon input from the user (Br. 5). It
is argued that Koski creates a new case only when no case has been selected in
accordance with the inputted attributes and, if a record is selected, it is not
modified (Br. 6).
The Examiner responds that "[t]he best matching case or cases (documents)
in the view are retrieved from the case base and formatting (modifying) the case
(document) retrieved from the case base and presenting the output case as action
corresponding to the incident (input features) (col. 3, line 54 - col. 4, line 12)"
(Answer 7).
Appellant replies that the views in Koski are user independent and
formatting a view of the case is void of any relationship to the inputted description
(Reply Br. 5).
We agree with Appellant that there is no teaching or suggestion in Koski of
"modifying . . . the selected document [which substantially matches the inputted
features] to correspond to the inputted features." (The Examiner finds that the
limitation "automatically," omitted as indicated by ellipses, is taught by
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Kiyoujima.) "Formatting" the cases in Koski is not the same as "modifying . . . the
selected document to correspond to the inputted features," because formatting has
nothing to do with inputted features. Koski only creates a new case when there is
not a sufficiently close match within the case base and after there is a final
resolution of the case (col. 4, ll. 8-12); it does not modify a case to create a new
case based on the inputted features. The views in Koski have no relationship to the
input attributes.
Appellant argues that Kiyoujima also fails to teach or suggest that the
selected document is modified to correspond to the inputted features to create an
electronic document to be used in creating a new electronic document because
Kiyoujima teaches that the selected document is modified based on a program
(Br. 6). The Examiner responds that Koski is relied upon for these limitations
(Answer 8). We find that Koski does not teach these limitations.
For these reasons, the rejection of claim 1 is reversed. Claims 2-5 and 11
depend from claim 1 and the rejection of these claims must also be reversed.
REVERSED

eld

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BARRY, Administrative Patent Judge.

I concur with the majority and write separately with an additional
observation. "When the nature of . . . subject matter [to be patented] admits of
illustration by a drawing and the applicant has not furnished such a drawing, the
Director may require its submission. . . ." 35 U.S.C. § 113. "Whenever the nature
of the subject matter sought to be patented admits of illustration by a drawing . . .
and the applicant has not furnished such a drawing, the examiner will require its
submission. . . ." 37 C.F.R. § 1.81(c).

Here, I believe that the Appellant's claimed subject matter admits of
illustration to facilitate understanding of her invention. In particular, a depiction of
where "features defining an electronic document to be created" are input would
facilitate understanding of step (a) of claim 1. Also, a depiction of the relations
among the "electronic document to be created," the "electronically stored
document case base," the "document . . . substantially matching the inputted
features," and the "electronic document to be used in creating a new electronic
document" would facilitate understanding of the relation among steps (a) through
(d) of the independent claim.

In an ex parte appeal, however, the Board "is basically a board of review C
we review . . . rejections made by patent examiners." Ex parte Gambogi,
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62 USPQ2d 1209, 1211 (Bd. Pat. App. & Int. 2001). Therefore, I leave it to the
Examiner to decide whether to require submission of such drawings.

tdl

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