Ex Parte Vasey

Patent Trial and Appeal Board

Sep 11, 2017

14166944 (P.T.A.B. Sep. 11, 2017)

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.
14/166,944 01/29/2014 Philip Edgar Vasey 760-02 ICON 7214
34845 7590 09/25/2017
AnHersinn frorerki T T P
EXAMINER
2 Dundee Park Dr. UDDIN, MD I
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Andover, MA 01810 ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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):
handerson @ smmalaw.com
cmorrissette@smmalaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP EDGAR VASEY
Appeal 2017-004592
Application 14/166,944
Technology Center 2100
Before JOHN A. JEFFERY, DENISE M. POTHIER, and
WILLIAM M. FINK, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—14. App. Br. 2.1 We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm in part.
1 Throughout this opinion, we refer to (1) the Final Action (Final Act.)
mailed March 11, 2016, (2) the Appeal Brief (App. Br.) filed April 28, 2016,
(3) the Examiner’s Answer (Ans.) mailed November 23, 2016, and (4) the
Reply Brief (Reply Br.) filed January 19, 2017.
Appeal 2017-004592
Application 14/166,944
The Invention
Appellant’s invention relates to a document generation system that
allows for automated and customized2 documents. This is achieved using a
questionnaire to determine relevant variables and to gather information for
generating the customized document. The invention determines whether all
relevant information has been collected to generate a fully customized
document. See Spec. 1:3—5, 3:14—17, 4:5—27, 5:18—25, Abstract.
Claim 1 is reproduced below with emphasis:
1. A method comprising:
producing a customised document for which inclusion of document
content from a template is based on evaluation of rules, the rules
being evaluated using values assigned to content variables of the
template, wherein the values are based on responses to questions of a
questionnaire, comprising:
completing the questionnaire to define a dataset of content
variables for which values have been assigned;
forming a dependency network in which conditions indicate
relationships between dependent content variables and controlling
content variables of the template;
determining which content variables of the template are relevant
by defining ones of the content variables as relevant if and only if the
content variable as represented in the dependency network:
(i) is not one of the dependent content variables, or
(ii) is one of the dependent content variables and all
associated controlling content variables are relevant and all
associated conditions evaluate to either true or indefinite;
defining the dataset as complete if and only if all relevant content
variables of the template are in the dataset', and
where received responses are insufficient to evaluate all rules,
generating a fully customised document if the dataset is complete.
2 The claims interchangeably use the American (i.e., customized) and British
spelling (i.e., “customized.”) We use the British spelling when quoting
claim language, except for claim 7, which has the American spelling. When
not quoting the claims, we use the American spelling.
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The Examiner relies on the following as evidence of unpatentability:
Leymaster US 6,182,095 B1 Jan. 30, 2001
Vasey US 2005/0050464 A1 Mar. 3, 2005
Vasey ’668 US 8,700,668 B2 Apr. 15,2014
(filed Aug. 22, 2006)
The Rejections
Claims 1—14 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1—6 of Vasey ’668. Final
Act. 6.
Claims 1, 4, 5, 7, 8, 11, 12, and 14 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Vasey. Id. at 7—10.
Claims 2, 3, 9, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Vasey and Leymaster. Id. at 11—12.
Claims 6 and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Vasey. Id. at 12.3
THE ANTICIPATION REJECTION OVER VASEY
The Examiner finds Vasey discloses the limitations of independent
claims 1 and 8. Id. at 7—10. Appellant presents four main arguments for
these claims. App. Br. 15—21. Appellant argues Vasey does not disclose the
limitation “where received responses are insufficient to evaluate all rules,
generating a fully customised document if the dataset is complete” recited in
claim 1. Id. at 16 (citing Vasey 131, Fig. 4). Appellant also argues Vasey
3 The rejection of Claims 1—14 under 35 U.S.C. § 112(a) or first paragraph
(pre-AIA) as failing to comply with the written description requirement
presented in the Final Action (Final Act. 7) has been withdrawn. Ans. 4.
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does not disclose the “forming” step in claims 1 and 8. Id. at 17—18.
Appellant further asserts Vasey does not teach the “determining” step in
claims 1 and 8. Id. at 18—20. Lastly, Appellant argues Vasey does not
disclose the “defining” step. Id. at 20.
MAIN ISSUES
Under § 102, has the Examiner erred in rejecting claim 1 by finding
Vasey discloses:
I. “defining the dataset as complete if, and only if, all relevant
content variables of the template are in the dataset”
II. “where received responses are insufficient to evaluate all rules,
generating a fully customised document if the dataset is complete,”
III. “forming a dependency network in which conditions indicate
relationships between dependent content variables and controlling content
variables of the template,”
IV. determining which content variables of the template are
relevant by defining ones of the content variables as
relevant if, and only if, the content variable as
represented in the dependency network:
(i) is not one of the dependent content variables, or
(ii) is one of the dependent content variables and all
associated controlling content variables are relevant and
all associated conditions evaluate to either true or
indefinite
as recited?
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ANALYSIS
Claim Construction
We begin by construing independent claims 1 and 8. Notably, these
claims differ in scope. Claim 1 recites “[a] method.” App. Br. 25 (Claims
App’x). Claim 8 recites “[a] computer program stored on a non-transitory
computer-readable medium.” Id. at 26 (Claims App’x).
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad, of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations and quotations
omitted). Claim 1 recites a method with various steps, including:
determining which content variables of the template are
relevant by defining ones of the content variables as relevant if,
and only if, the content variable as represented in the
dependency network:
(i) is not one of the dependent content variables, or
(ii) is one of the dependent content variables and all
associated controlling content variables are relevant and all
associated conditions evaluate to either true or indefinite;
defining the dataset as complete if, and only if, all relevant
content variables of the template are in the dataset; and
where received responses are insufficient to evaluate all
rules, generating a fully customised document if the dataset is
complete.
App. Br. 25 (Claims App’x).
The “determining,” “defining,” and “generating” steps in claim 1
include conditional limitations. Consistent with our precedent, the disputed
“defining” and “generating” steps need not be performed if their condition
precedents are not met. See Ex parte Schulhauser, Appeal No. 2013-
007847, 2016 WL 6277792, at *3-5 (PTAB Apr. 28, 2016) (precedential)
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(holding that a step reciting a condition precedent does not need to be
performed if the condition precedent is not met in a method claim).4
Specifically, claim 1 recites “defining the dataset as complete if, and
only if all relevant content variables of the template are in the dataset.”
App. Br. 25 (Claims App’x) (emphasis added). That is, if less than all
relevant content variables of the template are in the dataset, then “defining
the dataset as complete” will not be performed. See id. As such, under the
broadest reasonable construction, the “defining the dataset as complete” step
need not be performed in certain situations (i.e., when the condition
precedent is not met). Id.
Additionally, claim 1 recites the further limitation “where received
responses are insufficient to evaluate all rules, generating a fully customised
document if the dataset is complete.” App. Br. 25 (Claims App’x)
(emphases added). This recitation includes two conditional limitations
“where received responses are insufficient” and “if the dataset is complete.”
Both are condition precedents. If either the received responses are sufficient
to evaluate all rules or if the dataset is incomplete, the “generating a fully
customized document” step need not be performed.
The disputed “determining” step also includes a conditional
limitation. That is, claim 1 further recites “determining which content
variables of the template are relevant by defining” content variables as
relevant if and only if a content variable (1) is not one of the dependent
4 See also Cybersettle, Inc. v. Natl Arbitration Forum, Inc., 243 Fed.Appx.
603, 607 (Fed. Cir. 2007) (unpublished); Applera Corp. — Applied
Biosystems Grp. v. Illumina, Inc., 375 Fed.Appx. 12, 21 (Fed. Cir. 2010)
(unpublished) (affirming a method claim’s interpretation as including a step
that need not be practiced if the condition for practicing the step is not met).
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content variables or (2) is one of the dependent content variables and all
associated controlling content variables are relevant and all associated
conditions evaluate to either true or indefinite. Id. However, even if these
conditions are not met (e.g., the dependent content variable has associated
controlling content variables that are not relevant or its associated conditions
evaluate to false), the step nonetheless requires “determining which content
variables of the template are relevant.” Id. (emphasis added). The only
time this step would not be performed is when the template contains no
content variables, which would effectively nullify the step of “producing a
customised document” as recited in claim 1. Thus, unlike the above
limitations, the “determining” step is required under any circumstance in
which a customized document is produced.
In contrast, claim 8 recites a different statutory class than claim 1— a
non-transitory computer-readable medium having a computer program
stored on the medium, the program comprising instructions for performing
the same steps set forth in claim 1. App. Br. 26—27 (Claims App’x). The
broadest reasonable construction of the disputed “determining” and
“generating” limitations in claim 8 requires the medium to be programmed
to perform these functions if the conditions occur and thus, the medium must
contain the instructions to provide the functionality of the recited steps
should the condition occur. Cf. Schulhauser, 2016 WL 6277792, at *7
(holding “a system claim having structure that performs a function, which
only needs to occur if a condition precedent is met, still requires structure for
performing the function should the condition occur.”)
We now turn to the rejection based on Vasey.
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Independent Claim 1
I. and II.
As explained above, the phrases “defining the dataset as complete if,
and only if, all relevant content variables of the template are in the dataset”
and “where received responses are insufficient to evaluate all rules,
generating a fully customised document if the dataset is complete” in claim
1 need not be performed if less than all relevant, template content variables
are in the dataset, if the received responses are sufficient to evaluate all
rules, or if the dataset is incomplete. App. Br. 25 (Claims App’x). Thus, the
Examiner need not present evidence of Vasey performing these steps in the
instances when the condition precedent does not occur (e.g., instances where
less than all the relevant content variables are in the dataset, where received
response are sufficient to evaluate all rules, or where the dataset is not
complete). See Schulhauser, 2016 WL 6277792, at *3—5.
The Examiner determined Vasey discloses the “completing the
questionnaire to define a dataset of content variables for which values have
been assigned” step and further the “defining the dataset” step. Final Act.
8—9 (citing Vasey H 13, 31, 34, Fig. 4 (steps 51, 53, 54, 56) and discussing
returning to the step 51 when information is not sufficient); see also Ans. 5.
In these passages, Vasey shows and describes receiving information from a
user at step 52 and then determining at step 53 whether the received
information is sufficient to evaluate all the rules. Vasey 131, Fig. 4. Vasey
discloses instances when the information is sufficient or when the condition
that “received responses are insufficient to evaluate all rules” is not met
(“yes” at step 53). See id. That is, Vasey discloses the condition precedent
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of receiving responses that are insufficient to evaluate all rules does not
occur and thus need not perform the recited “generating” step.
Additionally, Vasey teaches a condition when the “received responses
are insufficient to evaluate all rules” is met (“no” at step 53) but the second
condition “if the dataset is complete” is not met (e.g., “no” at step 54). Id.
31—32, Fig. 4. For example, Vasey discloses an instance when certain
rules have not been evaluated such that its associated conditions of content
variables cannot be evaluated to either true or indefinite (e.g., process
returns to step 51 to generate more inputs at step 54 (“NO” at step 54) or
generates a partially customized document and associated mark-ups (“YES”
at step 54 and step 55). See id. As such, Vasey further demonstrates
instances where less than all relevant content variables are in a dataset and
thus the dataset is not complete. See id. In particular, Vasey discloses a
condition precedent does not occur in either the “defining” step (e.g., less
than all relevant content variables are in a dataset) or the “generating” step
(e.g., the dataset is not complete). See id. That is, the “defining” and
“generating” steps therefore need not be performed in the above scenarios in
Vasey. See Schulhauser, 2016 WL 6277792, at *3—5.
Accordingly, Appellant’s argument related to Vasey failing to
disclose the recited “defining” and “generating” steps (App. Br. 16—17, 20;
Reply Br. 6—10) are not commensurate with the broadest reasonable
interpretation of claim 1 and are, therefore, unpersuasive.
III.
Appellant next argues Vasey fails to disclose “forming a dependency
network in which conditions indicate relationships between dependent
content variables and controlling content variables of the template” as
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recited in claim 1. App. Br. 17; Reply Br. 10—12. Specifically, Appellant
asserts the phrase “dependency network” is absent from Vasey. App. Br. 18.
Whether Vasey discloses a dependency network, however, does not require
identity of terminology between Vasey and claim 1. See In re Bond, 910
F.2d 831,832 (Fed. Cir. 1990).
Appellant also contends the Examiner’s position that “relationships
between variables and transaction values is a dependency network ... is
undermined by not explaining how Vasey further discloses “conditions
indicate relationships between dependent content variables and controlling
content variables of the template’ as recited.” App. Br. 18 (citing to Spec.
5:27—29). Appellant argues “the Examiner’s interpretation [of a dependency
network] is inconsistent with the specification and the ordinary meaning in
the art because relationships between variables and transaction values are
not a system level analysis of the activity and topology of directed
networks.” Id.
We are not persuaded. Appellant’s reliance on Wikipedia for an
ordinary understanding of the term “dependency network” is unavailing.
App. Br. 18n.2 (citing https://en.wikipedia.org/wiki/Dependency_network).
Wikipedia is a non-peer-reviewed source with limited probative value.-' As
such, any argument that Vasey’s dependency network must have a system
5 See Bing Shun Li v. Holder, 400 Fed. App’x. 854, 857 (5th Cir. 2010)
(unpublished) (noting Wikipedia's unreliability and citing Badasa v.
Mukasey, 540 F.3d 909, 910-11 (8th Cir. 2008)); see also Ex parte Three-
Dimensional Media Group. Ltd., No. 2009-004087^oTo^3ol7280_
(BPAI 2010) (non-prec-edential), at *17 (“Wikipedia is generally not
considered to be as trustworthy as traditional sources for several reasons, for
example, because (1) it is not peer reviewed; (2) the authors are unknown;
and (3) apparently anyone can contribute to the source definition”).
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level analysis of the directed networks’ activity and topology is not
persuasive. See id.
The Specification states
A dependency network consists of nodes representing the data
variables and directed arcs between the nodes. The nodes at
the ‘target’ end of the arc represents the dependent variable
and the nodes at the ‘source’ end of the arc represent the
controlling variables. The arc represents the conditions that
relate the dependent variable back to the controlling variables.
Spec. 5:27—30, Figs. 1—3, cited in Ans. 6. This understanding of what a
dependency network consists of is not restricted to a system-level analysis of
activity and topology of directed networks. See id. Instead, the network
consists of nodes representing variables and having conditions that relate a
dependent variable back to a controlling variable. See id.
The Specification additionally provides examples of dependency
networks. Spec. 6:3—7, Figs. 1—3. For example, Figure 1 contains “a first
node 1 representing controlling variable ‘gender’ and a second node 3
representing a dependent variable ‘pregnant. ’ An arc 5 connects first and
second nodes 1 and 3 and represents the condition gender =female.’” Id. at
6:4—7, Fig. 1.”
Similarly, Vasey teaches certain variables depend on other variables.
Vasey 8, 49, cited in Final Act. 8. In particular, Vasey teaches variables
occur with unconditional and conditional text, dependency statements, and
dependency statement with other variables. Vasey 149—55, cited in Final
Act. 8. The Examiner explains that Vasey establishes controlling variables
and dependent variables that appear in a generated document. Ans. 6—7
(citing Vasey 50-51, 74, 77). Moreover, we agree with the Examiner that
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the conditional text implies a relationship between dependent content
variables and other content variables. See id.
To illustrate further, Vasey discloses a “business address” function
related to both registered companies and registered charities. See Vasey
63—77, cited in Ans. 7. In particular, Vasey discusses how a business
address question is enabled or disabled depending on whether or not the
supplier is a registered company or a registered charity. See Vasey H 70,
77. Vasey discusses (1) the business address question is enabled or disabled
when both the registered company and registered charity are known and (2)
the business address question is permanently enabled when the registered
charity is not known. See id. Thus, Vasey defines a relationship between a
controlling variable (e.g., “registered company” node or “registered charity”
node) and a dependent variable (e.g., “business address” node). See id.; see
also Final Act. 8—9 (discussing the dependency of the business address
variable on other variables).
In the Reply Brief, Appellant argues the Examiner “is clearly
extrapolating based on hindsight” that a variable “name” can be a controlling
variable and a “business address” variable can be a dependent variable.
Reply Br. 11—12. We disagree. As illustrated above, the Examiner’s
citations support various relational examples between controlling content
variables and dependent content variables. See also Vasey ]Hf 65—77, cited
in Ans. 7. Moreover, the above example is consistent with the disclosure.
See Spec. 5:27—30. The above example illustrates a node at a target end of
an arc representing a dependent variable (e.g., business address), and a node
at a source end of the arc representing a controlling variable (e.g., a
registered charity), the arc representing a condition that relates the dependent
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variable back to the controlling variable (e.g., whether or not the registered
charity is known).
We, therefore, are not persuaded that Vasey fails to disclose the
“forming” step in claim 1.
IV.
Appellant further asserts Vasey fails to disclose the recited
“determining” step. App. Br. 19. Appellant’s arguments repeat those above
concerning the “forming” step. Id. Appellant argues that Vasey does not
use the phrase “dependency network” or “the recited dependent and
controlling content variable representation.” Id. at 19-20. However, as
noted above, Vasey need not use the exact words claimed. See Bond, 910
F.2d at 832. Moreover, the “forming” step—not the “determining” step—
recites the “dependency network” and the discussed “representation.” App.
Br. 25 (Claims App’x).
Appellant further argues Vasey’s unconditional text is unconditionally
included in a document and Vasey does not show relationships between
dependent and controlling variables. Id. at 19. Appellant asserts no
controlling variables exists in Vasey. Id. at 20. We disagree with the latter
assertion. As explained above, Vasey discloses various examples of
controlling variables (e.g., a registered company or registered charity) and a
dependent variable (e.g., a business address). We refer to the discussion
above for more details.
For these reasons, we are not persuaded that Vasey fail to disclose the
“determining” step in claim 1.
Accordingly, Appellant has not shown error in rejecting claim 1.
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Claims 4 and 5
Claim 4 recites “determining that a first condition evaluates to true
based on variables in the dataset,” and claim 5 recites “determining that a
first condition evaluates to false based on variables in the dataset.” App.
Br. 26 (Claims App’x). Appellant disputes Vasey teaches “a dataset of
content variables for which values have been assigned and which is defined
by completing a questionnaire.” Id. at 21; Reply Br. 15. This argument
focuses on a limitation in claim 1, from which claims 4 and 5 depend. Id. at
25 (reciting “completing the questionnaire to define a dataset of content
variables for which values have been assigned.”)
We are not persuaded. The rejection cites to various portions of
Vasey to disclose the “completing” step. Final Act. 8 and Ans. 8 (both
citing Vasey 13, 31, 34). Specifically, Vasey teaches a web form
questionnaire used to capture information from a user. Vasey 113. Vasey
states
The information comprises transaction values which correspond
to particular variables, for example, a first transaction value
corresponds to the first variable and at least one second
transaction value corresponds to the at least one second
variable. The questionnaire comprises at least a first question
which is associated with the first variable and at least a second
question which is associated with the at least one second
variable.
Id. As such, Vasey discloses completing a questionnaire that contains
at least two variables with values (e.g., “content variables for which
values have been assigned” as recited.) See also id. 131 (step 52,
Fig. 4).
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For the first time, in the Reply Brief, Appellant argues Vasey does not
use a dependency network to determine whether a dataset is complete.
Reply Br. 15. This argument is waived. See 37 C.F.R. § 41.41(b)(2).
Additionally, to the extent this argument relates back to the disputed
“forming,” “determining,” and “defining” steps presented in the Appeal
Brief, we refer to the above discussion for more detail.
For the foregoing reasons, Appellant has not shown error in rejecting
claims 4 and 5.
Claim 7
Claim 7 recites “using the values of the variables to determine which
items of conditional content are incorporated into the customized
document.” App. Br. 26 (Claims App’x). Appellant argues that Vasey does
not perform any determinations based on variables in a dataset, including
when generating a fully customized document. Id. at 21. Appellant also
reasserts that Vasey does not teach “a dataset of content variables for which
values have been assigned and which is defined by completing a
questionnaire.” Id. at 21.
As to the latter dispute, we refer above for more details. As to the
former assertion, we note this limitation of incorporating content into the
customized document is contingent on the step of generating a fully
customized document occurring. App. Br. 25—26 (Claims App’x). As
discussed above, the document is generated only when certain conditions
precedent occur (i.e., (1) where received responses are insufficient to
evaluate all rules and (2) the dataset is complete). As addressed above,
Vasey teaches a scenario when these conditions precedent do not occur (e.g.,
(1) where received responses are sufficient to evaluate all rules, or (2) when
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the dataset is not complete). See Vasey 31—32, Fig. 4. Because the above
scenarios occur in Vasey, the rejection need not present evidence of Vasey
performing the recited “using” step in claim 7. See Schulhauser, 2016 WL
6277792, at *3-5.
For the above reasons, Appellant has not shown error in rejecting
claim 7.
Claims 8, 11, 12, and 14
Unlike claim 1, the broadest reasonable construction of independent
claim 8 requires the medium to include program instructions that can
perform the recited steps should the condition occur. Cf. Schulhauser, 2016
WL 62777892, at *7 (holding “a system claim having structure that
performs a function, which only needs to occur if a condition precedent is
met, still requires structure for performing the function should the condition
occur.”) Thus, Vasey must disclose a medium that includes instructions for
performing the recited steps in claim 8, including “generating a fully
customized document if the dataset is complete” and “where the received
responses are insufficient to evaluate all rules.” App. Br. 26—27 (Claims
App’x).
We begin by construing a key disputed limitation in claim 8—
instructions comprising a “generating a fully customised document” step,
which includes the phrases: (1) “a fully customised document” and “if the
dataset is complete.” Id. at 27 (Claims App’x). Turning to the disclosure,
the Specification discusses a document generation system where a
questionnaire is completed and a customized document may be generated
using the information from the questionnaire. Spec. 3:14—17, 4:20—21. The
disclosure further states “where certain questions are not answered due to
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their irrelevance, a fully customised document may still be generated since
the only variables that are missing from the dataset are irrelevant ones.”
Spec. 5:10—12. As such, “a fully customised document” is a document that
(1) can be generated from a questionnaire that has not been completed in its
entirety, and (2) does not require irrelevant dataset variables. See id.
The Specification further summarizes what forms a complete dataset
and how a fully customized document is generated, stating:
the system determines whether the dataset produced from the
questionnaire is complete or not by determining whether all
relevant variables are in the dataset.... If the dataset is
complete^] a fully customised document containing all relevant
information is generated. If the dataset is not complete^] then
only a partially customized document may be generated.
Spec. 9:6—16. As such, “the dataset is complete” when all relevant variables
are part of its dataset, and a generated document is “fully customized” when
the document has all the relevant dataset variables. This is also recited in
claim 8, reciting instructions that comprise “defining the dataset as complete
if, and only if, all relevant content variables of the template are in the
dataset.” App. Br. 27 (Claims App’x).
The disclosure and claim 8, similarly, also describe relevant variables
that complete a dataset, indicating “a variable is defined as relevant if, and
only if: (i) the variable is not the target node of any arcs” (i.e., “is not one of
the dependent content variables” as recited) or “(ii) it is the target node of an
arc, and all the source node variables are relevant, and the conditions do
evaluate to true or indefinite” (i.e., “is one of the dependent content variables
and all associated controlling content variables are relevant and all
associated conditions evaluate to either true or indefinite” as recited). Spec.
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8:19-23; see also Spec. 5:28—31 (explaining nodes at the target and source
end of an arc representing dependent and controlling variables respectively).
To illustrate, Figure 11 shows “various datasets that are complete or
not.” Spec. 3:12, Fig. 11; see also id. at 8:28—9:2. In this figure, which
refers to the dependency network shown in Figure 1, a dataset that contains
Gender=“Male” is complete, because (1) controlling variable ‘gender’ is a
source node of an arc and thus relevant and (2) the dependent variable
4pregnant’ is not relevant given that its condition (i.e., gender=“/<"ma/e”)
does not evaluate to true or indefinite. Id. at 6:4—7, 8:28—9:2, Fig. 11.
Additionally, the dataset containing Gender=“Female” and Pregnant=
“False” is complete because (1) the controlling variable ‘gender’ is a source
node and relevant and (2) the dependent variable ‘pregnant’ is relevant
because (a) it is a target node of an arc, (b) its source node (e.g., gender) is
relevant, and (c) its condition evaluates to true (e.g., Gender -female”). Id.
On the other hand, datasets that contain no information or Gender=“Female”
are not complete because some relevant variables are missing (e.g.,
controlling variable “gender'’'’ and/or dependent variable “pregnanf). Id.
Thus, in the latter two scenarios, a fully customized document cannot be
generated.
Based on the above understanding of the disputed terms, we find error
in the Examiner’s rejection of independent claim 8. The Examiner relies on
Vasey’s Figure 4 and paragraph 31 to teach “where received responses are
insufficient to evaluate all rules, generating a fully customised document if
the dataset is complete.” Final Act. 9—10. As explained, the rejection splits
this limitation into two portions, determining (1) steps 51—54 and paragraph
31 teach the “where received responses are insufficient to evaluate all rules”
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part of this limitation and (2) steps 51—54 and 56 in Figure 4 and paragraph
31 disclose the “generating a fully customised document if the dataset is
complete” part of this recitation. Ans. 5.
However, Vasey’s Figure 4, as noted by Appellant (App. Br. 16—17),
generates a customized document at step 56 only when the answer to step 53
(i.e., “RECEIVED INFORMATION SUFFICIENT TO EVALUATE ALL
THE RULES?”) is “YES.” Vasey 131, Fig. 4. When the received
information (e.g., responses) are insufficient to evaluate all the rules in
Vasey (i.e., “NO” at step 54), a partially customized document is generated
that contains associated unevaluated rules (e.g., through mark-ups or other
means) at step 55. See id. Vasey fails to discuss whether the generated,
partially customized document at step 55 contains all relevant, dataset
variables and thus, whether “the dataset is complete” as recited.
Notably, the rejection does not map the partially customized
document at step 55 to the disputed recitation of “generating a fully
customised document if the dataset is complete” but “the received responses
are insufficient to evaluate all rules” in claim 1. Instead, the Examiner
determines Vasey’s “fig. 4 clearly shows the process make loop(s) to
complete dataset and produce fully customized document through step 56[.]”
Ans. 5. That is, Vasey’s Figure 4 shows and describes, when the received
information is not sufficient to evaluate all the rules at step 53 (“NO” at step
53) and when a partially customized document is not generated at step 54
(“NO” at step 54), the process loops back to step 51. See Vasey 131, Fig. 4.
Yet, as Appellant notes, the customized document, which the Examiner
maps to the recited “fully customized document” generated “through step
56” (Ans. 5), is generated when the received responses are sufficient to
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evaluate all the rules, which differs from “generating the fully customized
document” “where the received responses are insufficient to evaluate all
rules” in claim 1. App. Br. 16—17; Reply Br. 7, 9.
The rejection also cites additional paragraphs in Vasey when
addressing the “determining which content variables of the template are
relevant” limitation. Final Act. 9 (citing Vasey 1 8, 49—55, 63—67, 75—77).
However, the Examiner has not sufficiently explained how or if these
passages are being relied upon to disclose generating a fully customized
document if the dataset is complete and the received responses are
insufficient to evaluate all rules. See id. at 9—10; see also Ans. 5.
For the foregoing reasons, Appellant has persuaded us of error in the
rejection of (1) independent claim 8 and (2) dependent claims 11, 12, and 14
for similar reasons.
THE OBVIOUSNESS REJECTIONS
Dependent claims 9, 10, and 13 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Vasey alone or in combination with
Leymaster. Final Act. 11—12. These rejections do not rely on further
citations in Vasey or Leymaster to teach the above-discussed limitation in
claim 8. See id. Accordingly, for substantially the same reasons, Appellant
has persuaded us of error in the rejections of claims 9, 10, and 13, which
depend directly or indirectly from claim 8.
Claim 6 depends from claim 1. Appellant does not dispute the
rejection of this claim other than to state if an independent claim is
nonobvious, the dependent claims follow. See App. Br. 23. Because we are
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not persuaded that claim 1 is patentable for the above-stated reasons,
Appellant has not persuaded us of error in rejecting claim 6.
Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Vasey and Leymaster. Final Act. 11—12. Claim 2 recites “the
questionnaire includes a plurality of questions, and wherein completing the
questionnaire comprises answering fewer than all of the questions.” App.
Br. 26 (Claims App’x). The Examiner determines Vasey does not explicitly
disclose this step but Leymaster teaches not completing a questionnaire is
known in the art. Id. at 11 (citing Leymaster 6:23—25). The Examiner
further states it would have been obvious to include this feature in Vasey in
order to track questions that have not been answered. See id. (citing
Leymaster 6:16—17).
Claim 2 is separately argued (App. Br. 22—23), and claim 3 depends
from claim 2 {id. at 26 (Claims App’x)). Specifically, Appellant argues
Leymaster does not address responding to the missing information by
determining whether they are relevant. Id. at 22; Reply Br. 16—17. This
argument is not availing. First, neither claim 2 nor claim 1, from which
claim 2 depends, recites determining whether missing information is
relevant. Rather, claim 1 recites determining which content variables of the
template are relevant. App. Br. 25 (Claims App’x). Second, Appellant
attacks Leymaster individually without considering what the combination of
Vasey and Leymaster teaches or suggests. See In re Keller, 642 F.2d 413,
426 (CCPA 1981). As previously discussed, Vasey teaches determining
which variables are relevant; Leymaster is relied upon for the limited
purpose of teaching it is known in the art to complete less than all the
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questions in a questionnaire as claim 2 recites, such as when the user does
not how to respond to a question. See Leymaster 6:12—15.
Appellant also contends Vasey does not teach that some of the mles
may not need to be evaluated in order to generate the customized document.
App. Br. 22; Reply Br. 17 But, as previously stated, the step of “generating
a fully customized document” need not be performed when either (1) the
received responses are sufficient to evaluate all rules or (2) the dataset is not
complete. As previously stated, Vasey discloses scenarios where these
condition precedents are not met. We refer to the discussion above for more
details. Accordingly, the obviousness rejection need not present evidence of
Vasey performing the disputed “generating” step.
For the above reasons, Appellant has not shown error in rejecting
claim 2 and dependent claim 3, which is not separately argued.
THE NONSTATUTORY DOUBLE PATENTING REJECTION
Lastly, Appellant argues that the double patenting “rejection does not
map features of the pending claims to features of the claims of Vasey ‘668.
Rather, the rejection is a conclusory statement of a legal conclusion without
supporting explanation.” App. Br. 11.
The double patenting rejection is as follows:
Claims 1-14 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1-6 of U.S. Patent
No. [] 8700668 B2. Although the claims at issue are not
identical, they are not patentably distinct from each other
because newly added or some omitting limitations are [sic]
makes the clams [sic] merely differ in form. Therefore they do
not change the scope of the invention and would perform same
functionality.
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Final Act. 6.
We agree with Appellant that this rejection does not establish a prima
case of nonstatutory double patenting. Other than a statement that the claims
“differ in form” (id.), there is no discussion of individual claims, their
limitations, or why specific claim limitations in the instant application are
not patentably distinct from claims 1—6 of Vasey ’668. See id. For the first
time in the Response to Argument section of the Examiner’s Answer, the
Examiner maps the “determining which content variables of the template are
relevant” recitation in claim 1 of the instant application to claim 1 of
Vasey ’668. Ans. 3. However, as noted in the Reply Brief, this analysis is
still incomplete as it does not address all “the features in any of the pending
claims.” Reply Br. 5. We agree.
Accordingly, as presented, Appellant has persuaded us of error in the
rejection of claims 1—14 being unpatentable based on the ground of
nonstatutory double patenting over Vasey ’668.
DECISION
We affirm the Examiner’s rejection of claims 1, 4, 5, and 7 under §
102, and claims 2, 3, and 6 under § 103.
We reverse the Examiner’s rejections of claims claims 8, 11, 12, and
14 under § 102, and claims 9, 10, and 13 under § 103.
We reverse the Examiner’s rejection of claims 1—14 on the ground of
nonstatutory double patenting.
AFFIRMED-IN-PART
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