Ex Parte Taylor

Patent Trial and Appeal Board

Oct 31, 2012

11500607 (P.T.A.B. Oct. 31, 2012)

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.
11/500,607 08/08/2006 David C. Taylor GGL-029US 4400
101786 7590 10/31/2012
Shvarts & Leiz LLP
Gina Yekelchik
1121 San Antonio Road, Suite B101
Palo Alto, CA 94303
EXAMINER
WITZENBURG, BRUCE A
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
10/31/2012 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 DAVID C. TAYLOR
____________________

Appeal 2010-011300
Application 11/500,607
Technology Center 2100
____________________

Before JOSEPH L. DIXON, THU A. DANG, and JAMES R. HUGHES,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011300
Application 11/500,607

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
12 and 31-43. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing
was scheduled for Nov. 8, 2012, but was waived. Therefore, we decide the
appeal on the briefs.
We reverse.

The claims are directed to a data extraction tool and, more
particularly, to novel systems and methods for searching, organizing, and
presenting information stored in electronic format. Claim 12, reproduced
below, is illustrative of the claimed subject matter:
12. A method for creating a macro-context for a plurality of
terms, the method comprising:

identifying a plurality of domains, each domain thereof
corresponding to a subject matter unique thereto;

creating a plurality of domain lists, each domain list
pertaining exclusively to a domain of the plurality of domains
and comprising domain terms corresponding substantially
exclusively to the subject matter of the domain to which the
domain list pertains;

identifying a corpus of information divided into a
plurality of terms and a plurality of topical entries, each term of
the plurality of terms corresponding to a topical entry of the
plurality of topical entries;

counting, by a computer apparatus within each topical
entry of the plurality of topical entries, occurrences of domain
terms from each domain list of the plurality of domain lists; and

calculating, by the computer apparatus, a macro-context
for each term of the plurality of terms, the macro-context
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Application 11/500,607

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comprising a vector coupling each domain of the plurality of
domains with a weight derived from the counting of
occurrences of the domain terms corresponding thereto.

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Schuetze US 5,675,819 Oct. 07, 1997

REJECTION

Claims 12 and 31-43 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Schuetze.

ANALYSIS
Appellant contends that while both the Schuetze reference and
Appellant use some of the same words to describe their respective inventions
that does not automatically mean Schuetze anticipates Appellant’s claimed
invention. (App. Br. 8). We agree with Appellant.
First, we find the Examiner's discussion and reliance upon columns 14
to 16 of Schuetze with the correlation of the words in the thesaurus to the
domains in independent claim 12 to be attenuated and based upon
speculation with the discussion of the word "tug." (Ans. 9).
The Examiner further states that "[g]iven the standard implementation
of a thesaurus in light of its contents based on the disclosure of Schuetze the
examiner feels this includes a successful showing that multiple domains
(individual concepts in the thesaurus entries) have been identified with
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Application 11/500,607

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unique subject matter." (Ans. 10 (emphasis added)). We find the
Examiner's statement to be inappropriate for a rejection based upon
anticipation where the reference must necessarily describe the claimed
invention.
Appellant contends that independent claim 12 requires "creating a
plurality of domain lists, each domain list pertaining exclusively to a domain
of the plurality of domains and comprising domain terms corresponding
substantially exclusively to the subject matter of the domain to which the
domain list pertains." Appellant contends that the Examiner's reliance upon
the same four locations within the disclosure of Schuetze is misplaced.
We agree with Appellant and find that the Examiner's statement that
"it is quite clear that each conceptual entry in the thesaurus contains a list of
synonyms as per the definition. Thus ‘domain lists’ which map to the
synonyms within a thesaurus are indeed present on each domain (or
conceptual entry." (Ans. 10-11). The Examiner provides no express support
for this statement and does not evidence that Schuetze describes the claimed
invention.
Since we find that the Examiner has not made the showing of "domain
lists," the Examiner has similarly not shown the claimed "counting, by a
computer apparatus within each topical entry of the plurality of topical
entries, occurrences of domain terms from each domain list of the plurality
of domain lists" and the "calculating … from the counting of occurrences" as
recited in claim 12. Therefore, the Examiner has not shown that Schuetze
describes the claimed invention recited in independent claim 12.
Independent claims 31 and 37 contain similar limitations drafted in
slightly different wording for “sets” rather than a “domain list.” Again, the
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Examiner has not shown that Schuetze describes the claimed invention of
independent claims 31 and 37 and their respective dependent claims.

CONCLUSIONS OF LAW
The Examiner erred in rejecting independent claims 12, 31, and 37
over Schuetze based on anticipation.

DECISION
For the above reasons, the Examiner’s rejection of claims 12 and
31-43 is reversed.

REVERSED

Vsh