Ex Parte Smyros et al

Patent Trial and Appeal Board

Dec 18, 2014

12192846 (P.T.A.B. Dec. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/192,846 08/15/2008 Athena A. Smyros 001-P005 3579
91133 7590 12/18/2014
Papalas PLLC
6960 Brookshire Drive
Dallas, TX 75230
EXAMINER
PEACH, POLINA G
ART UNIT PAPER NUMBER
2165
MAIL DATE DELIVERY MODE
12/18/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ATHENA A. SMYROS and CONSTANTINE SMYROS
___________

Appeal 2012-006917
Application 12/192,846
Technology Center 2100
____________

Before BRUCE R. WINSOR, DANIEL N. FISHMAN, and
JASON J. CHUNG, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) of the final rejection of
claims 1–25.1 Although not identified in Appellants’ Briefs (see App. Br.
2), we note this case is related to Appeal No. 2012-006987 (US Application
No. 12/192,775). See also Spec. ¶ 1. We have considered the present case
along with the related Appeal No. 2012-006987. We heard oral argument on
December 4, 2014. We will add a transcript of the oral hearing to the record
in due course. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 In this Opinion, we refer to the Appeal Brief (“App. Br.,” filed December
14, 2011), the Reply Brief (“Reply Br.,” filed March 19, 2012), the
Examiner’s Answer (“Ans.,” mailed January 17, 2012), and the original
Specification (“Spec.,” filed August 15, 2008).
Appeal 2012-006917
Application 12/192,846

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STATEMENT OF THE CASE
THE INVENTION
Appellants’ invention relates to providing search results from
provided search terms that match with documents in an information set.
Spec. ¶ 2.
Claim 1, reproduced below, is illustrative:
1. A method for forming an index of an information
repository that is topically searchable comprising:
analyzing, by a processing device, each document of a
plurality of documents to determine at least one topic of the
document;
analyzing, by the processing device, the plurality of
documents to determine common topics among the plurality of
documents; and
forming, by the processing device, the index from the
analysis of each document and the analysis of the plurality of
documents, wherein the index is a numerical matrix comprising
document content information corresponding to the plurality of
documents and document characteristic information
corresponding to a plurality of documents; and
storing the index in a computer readable medium.

THE REJECTION
Claims 1–25 are rejected under 35 U.S.C. § 102(b) as anticipated by
Aarskog (US 2005/0108001 A1).

ANALYSIS
We only consider those arguments Appellants actually made in this
Decision. Arguments that Appellants did not make in the Briefs are not
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Application 12/192,846

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considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner erred. App. Br. 4–12; Reply Br. 2–12. We are not
persuaded by Appellants’ contentions. We adopt as our own the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and as set forth by the Examiner in the Examiner’s Answer in response
to Appellants’ Appeal Brief (see Ans. 12–39). However, we highlight and
address specific arguments and findings for emphasis as follows.
Appellants’ arguments broadly assert Aarskog fails to teach any of the
recited features of, for example, claim 1. App. Br. 5–6; Reply Br. 3–6.
However, merely reciting language of the claims and asserting the cited
prior art reference does not teach the claim limitation is insufficient. See 37
C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(“[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.”). Appellants’ arguments fail to provide
sufficient, persuasive argument or evidence regarding the specific deficiency
of the Examiner’s findings with respect to the limitations of claim 1. Rather,
Appellants’ arguments: repeat the language of a claim element and
essentially conclude that the cited paragraphs do not teach the quoted claim
recitation.
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Application 12/192,846

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For example, regarding the recited step “analyzing, by a processing
device, each document of a plurality of documents to determine at least one
topic of the document,” Appellants state:
The Examiner cites paragraphs [0133] and [0887] of
Aarskog as teaching analyzing, by a processing device, each
document of a plurality of documents to determine at least one
topic of the document. However, paragraph [0133] discuses
having a user select a set of documents, and not a processing
device. Furthermore, the selected documents are documents of
interest and not a topic. Paragraph [0887] is discussing index
entries, specifically APO triplets. Nothing in this paragraph
teaches analyzing documents to determine at least one topic.
Therefore, Aarskog does not teach this element.
App. Br. 5. This statement fails to identify an error in the Examiner’s
findings but instead baldly concludes, without persuasive evidence or
analysis, that the cited portions of Aarskog fail to teach the recited
limitation.
Therefore, we are unpersuaded of Examiner error at least because
there is no ipsissimis verbis test for determining whether a reference
discloses a claim element, i.e., identity of terminology is not required. In re
Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
The Examiner’s Response (Ans. 13–21) identifies numerous
additional citations in Aarskog disclosing the features of claim 1.
Appellants’ Reply Brief (Reply Br. 3–6) responds to these additional
citations in the same manner as they respond to the Examiner’s rejection—
baldly asserting the citations fail to teach the corresponding claim feature.
Thus, for the same reasons discussed above, we remain unpersuaded.
Appellants present a somewhat more specific argument regarding the
step of forming an index asserting the matrix of Aarskog is never “stated as
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Application 12/192,846

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being an index.” App. Br. 6; Reply Br. 5. We are not persuaded the
Examiner erred because, as noted above, identity of terminology is not
required for an anticipation rejection. Bond, 910 F.2d at 832.
Appellants further contend, “The matrix of Aarskog is part of the
MAFS see paragraph [0411], while the index of Aarskog is associated with
the APOS see paragraph [0350], which appear to be separate entities.” App.
Br. 6; Reply Br. 5. Even assuming Appellants are correct that the matrix and
index of Aarskog are separate entities, we remain unpersuaded because the
argument fails to identify why the matrix and index being separate entities
evidences that the index of Aarskog is not a numerical matrix.
Still further, Appellants argue, “Moreover, the text extraction
procedures shown in Figures 2 and 3 of Aarskog would not lead to
numerical results.” Id. As above, we are not persuaded of Examiner error.
We note it is common knowledge that all operations of a computer employ
numerical information—all instructions and data of computers at the time of
the invention are encoded as binary values (i.e., numeric information).
Thus, an index of Aarskog is numerical in that all data manipulated by
Aarskog’s system is numeric. Furthermore, the Examiner explains, at least,
paragraphs 174, 177, and 178 of Aarskog disclose an index is a matrix
having multiple dimensions (Ans. 18) and the matrix includes clearly
numeric values such as a frequency of words (Ans. 19 citing Aarskog ¶
172). Appellants respond in the same manner as discussed above by merely
noting the paragraphs cited and baldly asserting none of the cited paragraphs
teach the claimed feature of forming a numerical matrix index. Reply Br. 5.
Therefore, we find Appellants’ Reply Brief unpersuasive for the same
reasons already discussed supra.
Appeal 2012-006917
Application 12/192,846

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In view of the above discussion, by a preponderance of the evidence
on the record before us, we are not persuaded of error in the Examiner’s
findings that Aarskog teaches every element of claim 1.
Appellants present similar conclusory remarks regarding claim 2
(dependent from claim 1) and for independent claims 12 and 20 and do not
separately argue dependent claims 3–11, 13–19, and 21–25. See App. Br. 7–
12. Thus, for the same reasons as claim 1, we are not persuaded the
Examiner erred in rejecting claims 2–25.

DECISION
For the above reasons, the Examiner’s rejection of claims 1–25 is
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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