Ex Parte Vasey

Board of Patent Appeals and Interferences

Oct 24, 2011

10347785 (B.P.A.I. Oct. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PHILIP EDGAR VASEY
____________
Appeal 2009-012803
Application 10/347,785
1

Technology Center 2100
____________

Before GREGORY J. GONSALVES, DAVID M. KOHUT, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL

1
Filed on January 20, 2003. This application claims foreign priority to EPO
application 02250396.5, filed on January 21, 2002. The real party in interest
is Business Integrity Ltd. (App. Br. 2; Reply Br. 2.)
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Application 10/347,785

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s Final Rejection of claims 1-36.
2
(App. Br. 2;
3
Reply Br. 2.) We
have jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm.
Appellant’s Invention
Appellant invented a ruled-based document generation system,
method, and computer-readable medium for generating customized
documents from document templates. (Spec. ¶ [0001].)
Illustrative Claim
29. A document generation system comprising: means
for storing first data representing a document template, said
document template comprising a plurality of logical rules each
of which determine, on the basis of further information, the use
to be made of content when generating a customized document;
means for receiving farther information enabling the use of
content to be determined for a first, but not for a second, of said
logical rules; and means for generating second data representing
a partially customized document on the basis of said first data
and said received further information, said second data
comprising said second logical rule.

2
Appellant’s Notice of Appeal filed March 30, 2009, states that “Applicant
hereby appeals to the Board of Patent Appeals and Interferences from the
last decision of the [E]xaminer.” Neither Appellant nor the Examiner has
subsequently withdrawn or cancelled any of the pending claims. Therefore,
since the last decision of the Examiner, or the Final Rejection mailed
December 29, 2008, indicates that claims 1-36 are pending in the present
application, all of Appellant’s pending claims 1-36 are on appeal.
3
All references to the Appeal Brief are the Appeal Brief filed on March 30,
2009, which replaced the prior Appeal Briefs filed on April 15, 2008,
January 11, 2008, December 10, 2007, November 7, 2007, and June 21,
2007.
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Application 10/347,785

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Prior Art Relied Upon
Leymaster US 6,182,095 B1 Jan. 30, 2001

Mawhood WO 01/04772 A2 Jan. 18, 2001
(hereinafter “BIL”)

Appellant’s Admitted Prior Art located in paragraphs [0007] and
[0073] of Appellant’s Specification (hereinafter “AAPA”).

Rejections on Appeal
4

Claims 29-36 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by BIL.
Claims 1-14, 16, 17, and 28 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of BIL and Leymaster.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of BIL, Leymaster, and AAPA.
Claims 18-27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over BIL.
Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of BIL and AAPA.

4
The Examiner objects to Appellant’s Specification for failing to provide
proper antecedent basis for a “computer readable medium,” as recited in
independent claims 1, 6, 17, 18, 27, 31, and 34, and dependent claims 2-4,
19-25, 35, and 36. (Fin. Rej. 2; see also Ans. 18.) In response, Appellant
contends that the claimed “computer-readable medium” is properly
supported by Appellant’s Specification. (App. Br. 43-44; 50-52.) Since the
Examiner's objection to Appellant’s Specification is a petitionable matter as
opposed to an appealable one, this issue is not properly brought before us.
See 37 C.F.R. 1.181.

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Appellant’s Contentions
Appellant contends that BIL’s disclosure of an information-capturing
document or questionnaire, which is used to obtain information to generate a
fully customized document from a template, does not describe “means for
generating second data representing a partially customized document on the
basis of said first data and said received further information,” as recited in
independent claim 29. (App. Br. 38-40; Reply Br. 41-44.) In response to
the Examiner’s Answer, Appellant argues that BIL’s information-capturing
document cannot be broadly construed as the claimed “partially customized
document” because it is not a hybrid document wherein the evaluated
sections appear complete (e.g., Appellant’s figure 8), and the unevaluated
sections appear incomplete (e.g., Appellant’s figure 6). (Reply Br. 44-46.)
Further, Appellant contends that the rules in BIL’s figure 7 do not
describe “said second data comprising said second logical rule,” as recited in
independent claim 29. (App. Br. 41; Reply Br. 47.) In particular, Appellant
argues that BIL discloses generating another information-capturing
document if all the required information is not captured, whereas the
claimed invention is directed to outputting a partially customized document
and rules even if sufficient information has not been received. (Id.) In
response to the Examiner’s Answer, Appellant contends that the rules in
BIL’s figure 6 are a complete set of rules used in the first pass at generating
the final document, whereas the second rules are a subset of the first rules
(i.e., the rules that remain unevaluated once at least some of the rules have
been evaluated.) (Reply Br. 47-48.)
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Examiner’s Findings and Conclusions
The Examiner finds that BIL discloses an information-capturing
document that contains portions of a fully customized document, such as the
execution of the rules that place the address values in the top paragraph of
figure 7b. (Ans. 16-17.) Consequently, the Examiner finds that BIL’s
information-capturing document can be broadly construed as the “partially
customized document,” as recited in independent claim 29. (Id.) Moreover,
the Examiner finds that Appellant has not pointed to any element that the
information-capturing document lacks which would preclude it from being
construed as the claimed “partially customized document.” (Id. at 17.)
Further, the Examiner finds that BIL’s figure 7 depicts not evaluating
all the rules because all the predetermined elements relating to the rules are
displayed along with each rule. (Id.) In particular, the Examiner finds that
at the bottom of figure 7b and the top of figure 7c, BIL depicts that the
predetermined elements or rules pertaining to stock levels have not been
evaluated. (Id.) Therefore, the Examiner finds that BIL describes “said
second data comprising said second logical rule,” as recited in independent
claim 29. (Id.)

II. ISSUE
Has the Examiner erred in finding that BIL anticipates independent
claim 29? In particular, the issue turns on whether BIL describes the
following claim limitations:
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(a) “means for generating second data representing a partially
customized document on the basis of said first data and said received further
information.”
(b) “said second data comprising said second logical rule.”

III. FINDINGS OF FACT
The following Findings of Fact (hereinafter “FF”) are shown by a
preponderance of the evidence.
BIL
FF 1. BIL discloses using information-capturing documents to
capture at least a part of further information, and generating a customized
document on the basis of the captured further information and a standard
document. (8: ll. 11-14.)
FF 2. BIL’s figure 7 depicts an information-capturing document with
a “Submit” button (500) and a table with three columns. (55: ll. 19-20.) In
particular, BIL discloses that the first column (502), or “Logic” column,
contains the logical rule units of a standard document. (Id. at ll. 20-21.) BIL
discloses that the second column (504), or “Clause Input” column, contains
all the known information units of the standard document together with data-
entry items for inputting further information. (56: ll. 1-3.) For example,
BIL’s figure 7a depicts entering address information in the second column
(504), or “Clause Input” column, under “The Address” label. (See figure
7a.) Moreover, at the top of figure 7b, BIL depicts executing the rules that
place the address information in the customized document. (See figure 7b.)
FF 3. At the bottom of figure 7b and the top of figure 7c, BIL depicts
that the rules in the first column (502), or “Logic” column, pertaining to the
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“Stock (Expensive)” and “Stock (Inexpensive)” labels have not been
evaluated. (See figures 7b and 7c.)

IV. ANALYSIS
35 U.S.C. § 102(b) Rejection
Claim 29
Independent claim 29 recites, inter alia: 1) “means for generating
second data representing a partially customized document on the basis of
said first data and said received further information[;]” and 2) “said second
data comprising said second logical rule.”
First, we consider the scope and meaning of the claimed term “a
partially customized document,” which must be given the broadest
reasonable interpretation consistent with Appellant’s disclosure. As
explained in In re Morris, 127 F.3d 1048 (Fed. Cir. 1997):
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
Id. at 1054. See also In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (stating
that “claims must be interpreted as broadly as their terms reasonably allow”
during examination). Appellant’s Specification states that:
the partially customized document contains not only the
predetermined elements of the content the use of which has
been determined, according to the evaluated rules, but also the
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rules which have not been evaluated in association with
predetermined elements of content corresponding to those
rules….

(Spec. ¶ [0040].)
Upon reviewing Appellant’s Specification for context, we agree with
the Examiner that the claimed term “a partially customized document” may
be broadly, but reasonably construed as any document that only contains a
portion which has been fully customized or complete. (See Ans. 16-17.)
As detailed in the Findings of Fact section supra, BIL discloses using
an information-capturing document that captures portions of information
and, subsequently, generates a customized document based on such
information. (FF 1.) In particular, BIL discloses customizing a document
by entering address information under “The Address” label of an
information-capture document. (FF 2.) After the address information is
entered into the information-capture document, BIL discloses evaluating the
rules associated with the address information, which place or enter the
address information into the customized document. (Id.) Moreover, while
BIL discloses evaluating the rules pertaining to “The Address” label, it also
discloses that rules pertaining to both the “Stock (Expensive)” and “Stock
(Inexpensive)” labels have not been evaluated because insufficient
information has been provided. (Id.)
Therefore, consistent with our claim construction above, we find that
BIL describes the claimed “partially customized document” because it
discloses a document that that only contains a portion that appears to be fully
customized or complete (i.e., “The Address” section). Put another way, we
find that BIL discloses generating information that represents the claimed
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“partially customized document,” which is based on both predetermined
elements of content (i.e., “The Address,” “Stock (Expensive),” and “Stock
(Inexpensive)” labels) and received further information (i.e., the address
information entered by a user). Therefore, we find that BIL describes
“means for generating second data representing a partially customized
document on the basis of said first data and said received further
information,” as recited in independent claim 29.
Further, BIL discloses rules in the first or “Logic” column pertaining
to “Stock (Expensive)” and “Stock (Inexpensive)” labels that have not yet
been evaluated. (FF 3.) Consequently, we find that while BIL describes a
portion of a document that appears to be complete (i.e., the section under
“The Address” label), BIL also describes a portion of the document that
appears to be incomplete because it contains rules that remain unevaluated
due to insufficient information (i.e., “Stock (Expensive)” and “Stock
(Inexpensive)” labels). Therefore, we find that BIL describes “said second
data comprising said second logical rule,” as recited in independent claim
29. It follows that the Examiner has not erred in finding that BIL anticipates
independent claim 29.
Claims 30, 31, and 34
Independent claims 30, 31, and 34 either recite the same or similar
claim limitations as independent claim 29. (See App. Br. 38; Reply Br. 41.)
Therefore, for the same reasons discussed supra, the Examiner has not erred
in finding that BIL anticipates independent claims 30, 31, and 34.
Claims 32, 33, 35, and 36
Appellant does not provide separate and distinct arguments for
patentability with respect to dependent claims 32, 33, 35, and 36. Therefore,
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we select independent claim 29 as representative of these cited claims.
Consequently, the Examiner has not erred in rejecting dependent claims 32,
33, 35, and 36 for the same reasons set forth in our discussion of
independent claim 29. See 37 C.F.R. § 41.37(c)(1)(vii).
35 U.S.C. § 103(a) Rejections
Claims 1, 5, 6, 7, 16, 17, and 28
Appellant offers the same arguments set forth in response to the
anticipation rejection of independent claim 29 to rebut the obviousness
rejection of independent claims 1, 5, 6, 7, 16, 17, and 28. (See App. Br. 41-
43; Reply Br. 48-50.) We have already addressed these arguments in our
discussion of independent claim 29, and we found them unpersuasive.
Therefore, the Examiner has not erred in concluding that the combination of
BIL and Leymaster renders independent claims 1, 5, 6, 7, 16, 17, and 28
unpatentable.
Claims 2-4, 8-15, and 18-27
Appellant does not provide separate and distinct arguments for
patentability with respect to dependent claims 2-4, 8-15, and 18-27.
Therefore, we select independent claim 29 as representative of these cited
claims. Consequently, the Examiner has not erred in rejecting dependent
claims 2-4, 8-15, and 18-27 for the same reasons set forth in our discussion
of independent claim 29. See 37 C.F.R. § 41.37(c)(1)(vii).

V. CONCLUSIONS OF LAW
1. The Examiner has not erred in rejecting claims 29-36 as being
anticipated under 35 U.S.C. § 102(b).
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2. The Examiner has not erred in rejecting claims 1-28 as being
unpatentable under 35 U.S.C. § 103(a).

VI. DECISION
1. We affirm the Examiner’s decision to reject claims 29-36 as
being anticipated under 35 U.S.C. § 102(b).
2. We affirm the Examiner’s decision to reject claims 1-28 as
being unpatentable under 35 U.S.C. § 103(a).
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

ELD