Ex Parte Sutter et alDownload PDFPatent Trial and Appeal BoardSep 27, 201613559960 (P.T.A.B. Sep. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/559,960 07/27/2012 49443 7590 09/29/2016 Pearl Cohen Zedek Latzer Baratz LLP 1500 Broadway 12th Floor New York, NY 10036 FIRST NAMED INVENTOR Mark SUTTER 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 ATTORNEY DOCKET NO. CONFIRMATION NO. P-75106-US 2597 EXAMINER ANDERSEN, KRISTOPHER E ART UNIT PAPER NUMBER 2158 NOTIFICATION DATE DELIVERY MODE 09/29/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): USPTO@PearlCohen.com Arch-USPTO@PearlCohen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK SUTTER, SIMON YELSKY, and BRETT NORTON Appeal2015-004107 Application 13/559,960 Technology Center 2100 Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and DENISE M. POTHIER, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge DENISE M. POTHIER. Opinion Concurring filed by Administrative Patent Judge BRADLEY W. BAUMEISTER. POTHIER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-5, 7-13, and 15-20. Claims 6 and 14 have been canceled. App. Br. 13, 15, Claims App'x. 1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Throughout this Opinion, we refer to (1) the Final Office Action (Final Act.) mailed May 8, 2014, (2) the Appeal Brief (App. Br.) filed October 8, Appeal2015-004107 Application 13/559,960 INVENTION Appellants' invention tags content with additional information to improve searches. See Spec. 1: 10-12. Specifically, existing search technology adds additional concepts and synonyms to the search query to better capture the searcher's intent. Id. at 1: 17-22. Instead of using a search engine to generate synonyms from a search query, one embodiment of the invention tags a document itself with a synonym set based on a term identified in that document. Id. at 7: 12-15. Appellants' system then uses those tags to retrieve the documents when searched. Id. at 10:23-28. Claim 1, reproduced below with our emphasis, is illustrative: 1. A method for content-sensitive tagging of a document, the method comprising: in a system comprising a plurality of content-specific domains and a plurality of content-sensitive synonym sets, each synonym set comprising a plurality of terms that embody a single concept or meaning: analyzing a document associated by a user with a content- specific domain of the plurality of content-specific domains to identify a term within the document, the term being associated with a content-sensitive synonym set of the plurality of content- sensitive synonym sets assigned to the content-specific domain, the content-sensitive synonym set authored by a user, and the association between the synonym set and the domain determining which synonym set is to be applied to the document; and associating the document with terms contained within the content-sensitive synonym set by adding the terms to the document, based on the identified term in the document. 2014, (3) the Examiner's Answer (Ans.) mailed December 23, 2014, and (4) the Reply Brief (Reply Br.) filed February 23, 2015. 2 Appeal2015-004107 Application 13/559,960 The Examiner relies on the following as evidence of unpatentability: Spivak Musgrove US 2002/0016800 Al US 2006/0235843 Al THE REJECTION Feb. 7,2002 Oct. 19, 2006 Claims 1-5, 7-13, and 15-20 are rejected under 35 U.S.C. § 103(a) over Musgrove and Spivak. Final Act. 2-8. PRELIMINARY MATTERS Appellants attempt to incorporate "arguments presented in prior papers regarding the dependent claims 2-5, 7-8, 10-13, and 16-20." Reply Br. 7. Appellants do not point to any specific "prior papers." Id. To the extent that Appellants mean all prior papers in the record, we will not consider an argument that is not found in the appeal brief. See 37 C.F.R. § 41.37(c)(l)(iv) ("Except as provided for in§§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.") Moreover, Appellants did not present separate arguments for dependent claims 2-5, 7, 8, 10-13, and 16-20 in the appeal brief. See App. Br. 4--12. To the extent that Appellants intend to incorporate new arguments for these claims in the Reply Brief that either were not raised in the Appeal Brief or are not responsive to an argument raised in the Answer, such arguments will not be considered for purposes of the present appeal. See 37 C.F.R. § 41.4l(b)(2); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ("[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not"). 3 Appeal2015-004107 Application 13/559,960 THE OBVIOUSNESS REJECTION As for the disputed claims, Appellants argue independent claims 1, 9, and 15 as a group. See App. Br. 11; Reply Br. 7. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that Musgrove discloses every recited element of claim 1, except for adding terms to the document. Final Act. 2-3. The Examiner relies on Spivak to teach this feature and concludes that when Spivak is combined with Musgrove, claim 1 would have been obvious. Id. at 3--4 (citing Spivak i-f 3). Below, we address various, disputed limitations in claim 1 and arguments related to the proposed combination. Context-Sensitive Synonym Sets Claim 1 recites, in part, "a plurality of content-sensitive synonym sets, each synonym set comprising a plurality of terms that embody a single concept or meaning." According to the Examiner, Musgrove's word-usage patterns contain content-sensitive synonyms. Ans. 3--4; Final Act. 2-3 (citing Musgrove i-fi-170, 74, 77). Appellants argue that Musgrove lacks the recited content-sensitive synonym set. App. Br. 7-9; Reply Br. 1--4. According to Appellants, Musgrove' s word-usage patterns are a set of words that are not synonyms and do not share a single concept or meaning. App. Br. 7. Appellants note that Musgrove' s word-usage patterns may include terms synonymous with the headword as contextual information. Id. (citing Musgrove i-f 74, Figs. 2, 3). But, according to Appellants, these terms are not the recited "synonym sets," because the terms are (1) part of a larger set of contextual information, (2) not marked as synonyms, and (3) not useable as synonyms. Id. at 7-8. 4 Appeal2015-004107 Application 13/559,960 Appellants further contend that the recited "content-sensitive synonym sets" do not include other words that are not synonyms. Reply Br. 3. Musgrove's word-usage patterns, in Appellants' view, includes words like "soft" in the same set as "limits" and "football" with "kick " and ' these word pairs are not synonyms. Id. at 2-3 (citing Musgrove i-fi-174, 80, Figs. 2-3). ISSUE Under§ 103, has the Examiner erred by finding that Musgrove and Spivak would have taught or suggested content-sensitive synonym sets, each "comprising a plurality of terms that embody a single concept or meaning," as recited in claim 1? ANALYSIS We begin by construing the key disputed limitation of claim 1, which calls for "content-sensitive synonym sets." According to the Specification, a "synonym set" may be (1) a series of terms that embody a single concept or a group of similar or nearly similarly concepts, (2) a set of synonyms from a thesaurus, or (3) words that are not normally associated with each other. Spec. 5:5-10. For example, words from a synonym set that are not normally associated with each other include a product name, such as "HRLG3457 ," and its nickname, e.g., "Jane." Id. at5:10-13. A synonym set maybe "content-sensitive" when the set "is limited to a certain knowledge base of content." Id. at 5:15-16. For example, "bat," "ball," "base," "glove," "hit," and "run" are associated with the knowledge base of content that represents the concept of baseball. Id. at 5:20-24. In describing these terms, 5 Appeal2015-004107 Application 13/559,960 Appellants use the phrase "may be" and "for example." See, e.g., id. at 5:5- 7, 14--18. So although these examples inform our construction of the recited "content-sensitive synonym sets," we see no definition that would limit our interpretation of the limitation at issue to the described embodiments. On this record, we agree with the Examiner that the recited "content- sensitive synonym sets" encompass, among other things, the terms in Musgrove' s word-usage patterns. Ans. 3--4. As noted by Appellants (App. Br. 7), Musgrove' s word-usage pattern is the pattern or structure of a word's contextual information when it is used, as well as clusters of similar patterns. Musgrove i-f 74, cited in Ans. 3. Notably, this contextual information in Musgrove explicitly includes synonyms. Musgrove i-f 74. For example, Musgrove provides an example of word usage pattern(s) between "pigskin" and "football." Id. i-f 80, cited in Ans. 3. To be sure, Musgrove's word-usage pattern may contain words that are not synonyms. See id., Figs. 2, 3; accord App. Br. 7; Reply Br. 2-3. But, claim 1 recites the synonym sets using the transitional phrase "comprising," "which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim." Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). As such, non-synonyms may be added to the recited "synonym sets" in Musgrove, and the sets would still fall within the scope of claim 1. Moreover, nothing in the claim excludes synonym sets that include words not normally associated with each other. As discussed above, the disclosure supports this understanding. Spec. 5:8-10. For example, Appellants argue Musgrove' s word-usage patterns group "football" with "kick" together, but these words pairs are not synonyms. Reply Br. 2-3. 6 Appeal2015-004107 Application 13/559,960 Appellants, however, have not explained how this example differs from Appellants' synonym set example of "ball" and "hit." See Spec. 5:20-24. On the contrary, "football" and "kick" embody a single concept of American football in Musgrove's system (Musgrove i-f 80), just as "ball" and "hit" embody the single concept of baseball in Appellants' system (Spec. 5:20-24). Nor do we find any limitation in claim 1 that requires the recited content-sensitive synonym set to be "marked" or otherwise identified as synonyms. See App. Br. 7. Similarly, Appellants' argument that Musgrove' s terms are not useable as synonyms fails to point to any particular use of the synonyms recited in the claim that Musgrove fails to teach. See id. In this regard, Appellants' arguments (id.) are not commensurate with the scope of claim 1. Lastly, we note that claim 15 recites "synonyms sets" rather than "content-sensitive synonym sets." As such, the argument related to "content-sensitive" does not apply to claim 15. On this record, we are unpersuaded that Musgrove's word-usage patterns lack a content-sensitive synonym set comprising a plurality of terms that embody a single concept or meaning. App. Br. 7-9; Reply Br. 1--4. By a User Claim 1 further recites, in part, "the content-sensitive synonym set authored by a user"2 (emphasis added) and "analyzing a document 2 Appellants argue claims 1 and 15 together. See App. Br. 11; Reply Br. 7. Claim 15, however, does not recite that the content-sensitive synonym set is authored by a user. See App. Br. 15, Claims App'x. Thus, arguments 7 Appeal2015-004107 Application 13/559,960 associated by a user with a content-specific domain" (emphasis added). 3 The Examiner finds that Musgrove discloses both manual and automatic methods for generating tags. Ans. 2. Appellants argue that Musgrove' s word-usage patterns are not authored by a user. App. Br. 8-9; Reply Br. 1, 3--4. According to Appellants, Musgrove' s system is fully automated. Reply Br. 4 (citing Musgrove i-f 56). Appellants contend that Musgrove derives the word-usage patterns from a corpus of documents using software. App. Br. 8-9; Reply Br. 3--4. Claim 1, in Appellants' view, requires more user involvement than simply initiating the software. Reply Br. 4. Appellants also argue that Musgrove' s documents are not associated by a user. Id. at 1-2. According to Appellants, Musgrove's tagging function is performed by a fully automatic tagging module. Id. at 2 (citing Musgrove i-fi-1 70, 89). related to Musgrove failing to show a synonym set is authored by the user do not apply to claim 15. 3 The issue of subject matter eligibility is not before us on appeal. We, therefore, leave it to the Examiner to determine, upon further prosecution, whether claim 1 (or any other claim) is drafted so broadly as to encompass an abstract idea that constitutes ineligible subject matter under 35 U.S.C. § 101. More specifically, given this claim's reliance on authoring and associating by a user, the Examiner should consider whether the recited tagging method of claim 1 could be done entirely by hand, and as such, encompass an abstract idea. See 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74,618, 74,624 (Dec. 16, 2014); July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45,429 (July 30, 2015). 8 Appeal2015-004107 Application 13/559,960 ISSUES Under§ 103, has the Examiner erred in rejecting claim 1 by finding that Musgrove and Spivak would have taught or suggested (a) "the content-sensitive synonym set authored by a user" and (b) "analyzing a document associated by a user with a content-specific domain," as recited? ANALYSIS We are unpersuaded that the Examiner erred in finding that authoring a content-sensitive synonym set by a user would have been obvious over the Musgrove-Spivak combination. Final Act. 2--4. The manual association of words with documents was known in the art at the time of the invention. For example, Musgrove discloses manually tagging a corpus of texts. Musgrove i-f 33. Those tags can address "word sense disambiguation." Id. i-fi-130, 33. Word sense disambiguation considers whether the term "space," for example, is used in the sense of outer space or spacing fence posts. Id. i-f 31. One of ordinary skill would have understood that using, at least in part, manual operations by linguistically trained labor to form the synonym sets could enhance Musgrove' s automated operations where automated methods fall short. See id. i-fi-1 31-33, 41. Granted, applying such manual techniques were known to have disadvantages. For instance, Musgrove discloses that such operations were more laborious and costly. Id. i-fi-1 39--41. Although authoring the synonym sets, at least in part manually, may render the system inferior due to these disadvantages (see In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)), we see no persuasive reason on the record to indicate that doing so would destroy 9 Appeal2015-004107 Application 13/559,960 Musgrove. Such trade-offs (e.g., entirely automated versus some user involvement where some functions are manually performed and others are automated) would have been weighed by an artisan in choosing one technique over another. That is, whether to perform these operations manually in part or automatically is an engineering trade-off that is within the grasp of the skilled artisan. Accordingly, we are unpersuaded that the Examiner erred in finding that authoring a content-sensitive synonym set by a user would have been obvious based on Musgrove and Spivak. We are also unpersuaded that Musgrove' s user does not associate a document, as recited. See Reply Br. 1-2. We disagree that Musgrove's tagging function is only performed automatically or is a fully automatic tagging module. Id. at 2 (citing Musgrove i-fi-170, 89). Specifically, Musgrove's semantic-search system 10 uses document-level tagging. Musgrove i1 90, cited in Ans. 2. The Examiner finds that Musgrove can perform this manually or automatically. Ans. 2. That is, Musgrove can use commercially available classifiers to classify documents automatically. Musgrove i1 91. But contrary to Appellants' argument (Reply Br. 2), Musgrove performs this automatic classification once sufficient examples have been classified manually. Musgrove i-f 91. Accordingly, we are unpersuaded by Appellants' arguments regarding Musgrove' s automation. See Reply Br. 1-2. Articulated Rationale for the Proposed Combination As noted previously, Spivak was relied upon to teach the concept of adding terms to the document. Final Act. 3--4. The Examiner determines that it would have been obvious to use Spivak' s method to add terms to 10 Appeal2015-004107 Application 13/559,960 Musgrove's keyword metadata because doing so would permit searching for a document using tools that do not have access to the Musgrove-built index. Id. The Examiner emphasizes that Musgrove does not look at the document's metadata, but rather the word usage pattern index. Ans. 6. In the Examiner's view, Musgrove's index operations therefore would be unaffected by the proposed combination. Id. Appellants argue that combining Musgrove with Spivak would render Musgrove inoperable. App. Br. 9-10; Reply Br. 5---6. According to Appellants, Musgrove requires the following two distinct steps: (1) indexing a document corpus, and (2) matching the query to the word-usage patterns. App. Br. 9. In Appellants' view, adding the word-usage patterns to the documents would be unwieldly and inefficient, and the results would not make sense. Id. Adding word usage patterns to the documents, in Appellants' view, would alter Musgrove's principle of operation-i.e., the two-stage approach-and render it unsatisfactory for its intended purpose. Id. at 10. Appellants further contend adding Musgrove's word-usage patterns to Spivak's metadata would not make sense and would fail to improve Spivak's conceptual search. Reply Br. 6. According to Appellants, doing so would frustrate the purpose of both references. Id. In Appellants' view, even if Musgrove and Spivak teach two search methods that may be performed independently, the Examiner has not pointed to a motivation for combining these methods. Id. Appellants further argue that Musgrove teaches away from Spivak and claim 1. App. Br. 10-11; Reply Br. 6. According to Appellants, Musgrove does not perform searches over the documents themselves, as 11 Appeal2015-004107 Application 13/559,960 Spivak does. App. Br. 10-11; Reply Br. 6. Furthermore, Appellants contend that Musgrove is different from claim 1, which prepares a set of documents that can be used with a conventional keyword-based searching system. App. Br. 11 (citing Spec. 14:18-27). ISSUE Is the Examiner's reason to combine the teachings of Musgrove and Spivak supported by articulated reasoning with some rational underpinning to justify the Examiner's obviousness conclusion? ANALYSIS The Examiner does not propose altering Musgrove's two-stage approach, as characterized by Appellants. See App. Br. 9-10. Rather, the Examiner proposes supplementing Musgrove' s system for users that do not have access to the Musgrove-built index. Final Act. 3--4. Accordingly, Appellants' arguments directed to altering Musgrove' s two-stage approach do not squarely address the Examiner's reasoning. App. Br. 9-10. We also are unpersuaded that adding Musgrove's word-usage patterns to Spivak's metadata would not make sense and would fail to improve Spivak's conceptual search. See Reply Br. 6. Although adding these terms may render the system inferior for some search queries, we see no reason, nor do Appellants provide sufficient evidence, that doing so would render either reference inoperable. That is, even if Appellants have established that the method would be rendered inferior for certain input, this does not show that the method is inoperable or even inferior for all word usage patterns added to document metadata. Accordingly, we are not persuaded that 12 Appeal2015-004107 Application 13/559,960 combining Musgrove with Spivak would have rendered Musgrove inoperable. The Examiner concludes that using Spivak's method to add terms to Musgrove's metadata would permit searching for documents with tools that do not access the Musgrove-built index. Final Act. 3--4. That is, the Examiner's combination uses Spivak and Musgrove collectively to perform the same functions in the combination as they do separately with no change in their operation. Ans. 6. In this way, the Examiner combines prior art elements according to known methods to yield predictable results-an obvious combination. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). We are also unpersuaded by Appellants' arguments concerning teaching away. App. Br. 10-11; Reply Br. 6. Specifically, Appellants argue that Musgrove teaches using an index of word usage patterns to retrieve documents based on a user query, whereas Spivak uses a conventional keyword-based index of documents. App. Br. 10. Because of these differences, Appellants contend that Musgrove teaches away from combining with Spivak. App. Br. 11; Reply Br. 6. However, although the references use different techniques for searching on a query, we disagree that one skilled in the art would have been discouraged from using Spivak's technique upon reading Musgrove. Rather, they are just alternative approaches. Even more, Appellants' argument that Musgrove contrasts with embodiments in claim 1 (App. Br. 11) fails to explain how one would be lead in a direction divergent from the path taken by Appellant. Moreover, as explained above, the combined Musgrove/Spivak system marries Musgrove and Spivak's technique. See Final Act. 3--4. 13 Appeal2015-004107 Application 13/559,960 Appellants have not shown that the differences pointed out by Appellants between Musgrove and Spivak (App. Br. 10-11; Reply Br. 6) would have discouraged the combined approach discussed in the rejection or that such an integration would have required substantial reconstruction. For the foregoing reasons, we sustain the Examiner's rejection of representative claim 1, as well as claims 9 and 15, not argued separately with particularity. See App. Br. 11; Reply Br. 7. Claims 2-5, 7, 8, 10-13, and 16-20 depend from claim 1, 9, or 15. In arguing against the rejection for each of these claims, Appellants refer to the arguments presented for claim 1. See App. Br. 11; Reply Br. 7. The issues before us, then, are the same as those in connection with claim 1, and we refer Appellants to our previous discussion. Accordingly, we also sustain the rejection of claims 2-5, 7, 8, 10-13, and 16-20 for the above-discussed reasons. CONCLUSION The Examiner did not err in rejecting claims 1-5, 7-13, and 15-20 under§ 103. DECISION The Examiner's decision rejecting claims 1-5, 7-13, and 15-20 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)(l )(iv). AFFIRMED 14 Appeal2015-004107 Application 13/559,960 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK SUTTER, SIMON YELSKY, and BRETT NORTON Appeal2015-004107 Application 13/559,960 Technology Center 2100 BAUMEISTER, Administrative Patent Judge, concurring. I agree with the Majority Opinion in all aspects. I write separately because I question whether it matters if the combination of Musgrove and Spivak would have taught or suggested that the content-sensitive synonym set specifically is "authored by a user," as recited in claim 1. That is, I question whether, and to what degree, the claim language "authored by a user" further narrows or patentably distinguishes claim 1 from a method that otherwise corresponds to claim 1. For example, it is unclear whether claim 1 patentably distinguishes over a method that alternatively entails analyzing a document to identify a term associated with a content-sensitive synonym set wherein the content-sensitive synonym set is authored by a third party or generated automatically, instead of authored by a user. I. The steps of method claim 1 evidence that the claim drafter was fully aware of how to recite affirmative method steps. See claim 1 (reciting the 15 Appeal2015-004107 Application 13/559,960 affirmative method steps of "analyzing ... ," and "associating ... "). lfthe Claim Drafter intended the manner in which the content-sensitive synonym set was created to further patentably distinguish the claim, the Claim Drafter could have recited an affirmative method step that employs the gerund form of the verb "author"-something to the effect of a user authoring a content- sensitive synonym set. But the Claim Drafter instead employed the product- by-process or source language, "the content-sensitive synonym set authored by a user." That is, claim 1 reasonably seems to be directed only to the method of using a product (the claimed synonym set}-not to the method of making and using the product. To be sure, meager legal authority exists for the proposition that the product-by-process doctrine is applicable to product-by-process limitations appearing in claims to the method of using the product. The existing authority on the doctrine primarily is limited to product claims that are set forth in product-by-process format, as well as product-by-process limitations appearing within product claims of otherwise standard format. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1379 (Fed. Cir. 2009) (discussing the requirements of a product-by-process limitation and explaining that the limitation at issue did not meet those requirements). However, I am equally unaware of any legal authority holding that the product-by-process doctrine is only applicable to product claims. In re Distefano, 808 F.3d 845 (Fed. Cir. 2015) may appear, at first blush, to stand for such a position. In fact, though, Distefano is readily distinguishable. Distefano involved an appeal from the Board's affirmance of the Examiner's anticipation rejection of a claim to a method of designing web 16 Appeal2015-004107 Application 13/559,960 pages. Distefano, 808 F.3d at 847. The issue on appeal (see id.) focused on the first method step of the sole independent claim, which is referred to as the "selecting limitation:" 24. A method of designing, by a user in a user interface having first and second display regions each capable of displaying a plurality of element [sic], an electronic document, compnsmg: selecting a first element from a database including web assets authored by third party authors and web assets provided to the user interface or outside the user interface by the user (Emphasis added). The Distefano court explained, "the parties agreed that all of the other limitations were anticipated [sic: taught] by [the prior art]." Id. "The Board determined that the selecting limitation should not be afforded patentable weight under the printed matter doctrine." Id. at 848. "In performing the printed matter analysis, the Board concluded that ' [the] web assets' origination from third party authors and the user cannot patentably distinguish (i.e., cannot breathe novelty into) the claimed method, particularly because the web assets' origins have no functional relationship to the claimed method."' Id. (internal citations omitted). Our reviewing court disagreed, concluding that "the Board erred in finding that the origin of the web assets constituted printed matter in the claims at issue and erred in assigning the origin no patentable weight under the printed matter doctrine in finding anticipation by [the cited prior art]." Distefano, 808 F.3d at 851 (emphasis added). In so holding, though, the Court limited its analysis solely to the applicability of the printed matter doctrine to the method claims on appeal. Id. at 848-51. The Distefano 17 Appeal2015-004107 Application 13/559,960 opinion did not address, much less answer, either the question of ( 1) whether the product-by-process doctrine is applicable to product-by-process limitations appearing in method-of-use claims, generally or (2) whether the source of Distefano 's web assets patentably distinguished these data structures. Granted, the present claim language "the content-sensitive synonym set authored by a user" could, at least hypothetically, structurally or functionally distinguish over methods that alternatively are performed on computer-generated synonym sets, but such a patentable distinction would only exist to the extent that the record evidences that the method by which the synonym set is created necessarily causes some physical distinction in the resultant synonym set's characteristics. Appellants' Briefs do not indicate that any such structural distinction exists, though. See App. Br. 8- 9; Reply Br. 3--4. II. Even if one were to take the contrary opinion that product-by-process limitations appearing in method-of-use claims should be analyzed by a different legal standard than product-by-process limitations appearing in product claims, the inherency doctrine provides an alternative legal theory for questioning the degree to which the claim language "authored by a user" distinguishes the method of claim 1. Of particular relevance are the reasoning and holding espoused by the predecessor to our reviewing court in In re Best, 562 F.2d 1252 (CCP A 1977). Best involved claims directed to zeoltic molecular sieve catalyst compositions and to a process for producing them. Best, 562 F2d 1252. The Board had found that the prior art expressly disclosed "[a]ll the positive 18 Appeal2015-004107 Application 13/559,960 process limitations ... except for the functionally expressed rate of cooling." Id. at 1254. Id. The Board further reasoned, though, there is nothing to indicate that this rate of cooling in any way differs from the normal rate resulting from removal of the heat source. Thus, the examiner's conclusion that those parameters of the resultant product which are recited in the appealed claims but are not expressly disclosed in the reference would be inherent is a reasonable one, absent convincing evidence to the contrary. Appellants have presented no such convincing evidence. No comparison has been made between appellants' process and product and the process and product disclosed in the [prior art]. On appeal, the Court rejected appellants' argument that "because [the prior art] is silent on appellants' crucial cool-down step and on his apparatus, a direct comparison between the claimed process and that of Hansford is impossible." Id. at 1254. The Court concluded that its "analysis of the comparative data offered by appellants convinces us that the burden of rebutting the PTO's reasonable assertion of inherency under 35 U.S.C. § 102, or of prima facie obviousness under 35 U.S.C. § 103, has not been met. Id. In so concluding, the Court reasoned where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Id. at 1254--55 (internal citations omitted). Furthermore, the Court made clear that such a burden for appellants "is applicable to product and process claims reasonably considered as possessing the allegedly inherent 19 Appeal2015-004107 Application 13/559,960 characteristics." Id. at 1255 (emphasis added). Such burden shifting potentially would seem to be proper in the present appeal. If the record reasonably indicates that the synonym set recited in claim 1 would have the same characteristics regardless of whether it were authored by a user, authored by a third party, or generated automatically by a computer, it would seem reasonable for the Examiner to require Appellant to demonstrate that the characteristics of the prior art's synonym set is distinguishable from the characteristics of the claimed synonym set. Whether the rejection is based on 'inherency' under 35 U.S.C. § 102, on 'prima facie obviousness' under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO' s inability to manufacture products or to obtain and compare prior art products. Id. (citations omitted). For these reasons, I question the extent to which the claim language "authored by a user" limits independent claim 1. I therefore question whether the Majority needed to address this issue. 20 Copy with citationCopy as parenthetical citation