Ex Parte Vasey

Patent Trial and Appeal Board

Oct 25, 2012

10933466 (P.T.A.B. Oct. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PHILIP E. VASEY
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Appeal 2010-005182
Application 10/933,466
Technology Center 2100
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Before DENISE M. POTHIER, JEFFREY S. SMITH,
and GLENN J. PERRY, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005182
Application 10/933,466

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 22-45, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Illustrative Claim
22. A document generation system for generating a customised
document using content elements selected by rules operating on input
information, and symbol elements, the system comprising:
at least one computer having a document generation program installed
thereon;
wherein the system is capable of generating a fully or a partially
customised document by evaluating the rules to select some of the content
elements; and
wherein the system further comprises means to associate further rules
with the symbol elements, including means by which a user specifies use of
selected symbol elements with selected content elements as a function of
order of appearance of those content elements in series in only a portion of a
particular document; and
an interface that renders the fully or partially customized document in
tangible form.

Prior Art
Nunberg US 5,111,398 May 5, 1992
Foy US 2002/0046235 A1 Apr. 18, 2002

Examiner’s Rejections
Claims 22-45 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Foy and Nunberg.

Appeal 2010-005182
Application 10/933,466

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ANALYSIS
Appellant makes several arguments in the Appeal Brief based on
limitations not recited in claim 22. See App. Br. 38-42. For example,
Appellant argues that the presently recited invention is intended for different
purposes where predictability and controllability are paramount to
grammatical correctness. App. Br. 38. However, the purposes argued by
Appellant are not recited in claim 22 and therefore do not serve to
distinguish claim 22 over the combination of Foy and Nunberg. As another
example, Appellant argues that the combination of Foy and Nunberg applies
rules to symbol elements but never associates particular rules with particular
symbol elements before the rules are applied. App. Br. 40. However,
associating particular rules with particular symbol elements before the rules
are applied is not recited in claim 22, and we find no basis for reading this
limitation into claim 22. Appellant further contends that the combination
does not teach customization on a sub-document level with user-defined
rules. App. Br. 41. The Examiner finds that customization on a sub-
document level with user-defined rules is not recited in claim 22. Ans. 11-
12. We agree with the Examiner.
Appellant argues the combination does not teach “including means by
which a user specifies use of selected symbol elements with selected content
elements as a function of order of appearance of those content elements in
series in only a portion of a particular document” as recited in claim 22.
Reply Br. 43. Appellant also contends that Nunberg, at column 15, lines 25-
30, teaches rules that implicitly prohibit the appearance of a parenthetical
paragraph, sentence, or clause at the beginning of a document, paragraph, or
phrase, respectively, but does not teach that parenthesis or any other symbol
Appeal 2010-005182
Application 10/933,466

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elements are included, excluded, or treated in some user defined manner.
Reply Br. 45. These arguments are presented for the first time in the Reply
Brief. Appellants could have presented these arguments in the Appeal Brief,
such that we would have had benefit of the Examiner’s evaluation of the
argument in the responsive Answer. Appellants do not explain what good
cause there might be to consider the new argument. Appellants’ new
arguments are thus untimely and has, accordingly, not been considered. See
Ex parte Borden, 93 USPQ2d 1473 (BPAI 2010) (informative).
Further, we find that Nunberg teaches rules that interpret text as words
or sentences, and treat each grouping together. See Ans. 3 (citing col. 1, ll.
45-54). Nunberg teaches categorizing text units such as words, phrases,
clauses, quotations, parentheticals, sentences, and paragraphs into textual
types independent of content. Grammar rules such as punctuational
structure are applied to the textual types. See Ans. 3 (citing col. 5, ll. 42-50;
col. 10, ll. 20-25); Ans. 4 (citing col. 15, ll. 25-30; col. 28, ll. 30-40).
Appellant has not provided persuasive evidence or argument to distinguish
“only a portion of a particular document” from the textual types such as a
sentence or a paragraph. See App. Br. 41; Reply Br. 43-44. Therefore,
capitalizing a word at the beginning of a sentence as taught in column 10,
lines 20-25, teaches use of selected symbol elements as a function of order
of appearance in only a portion of a document within the meaning of claim
22.
Further, prohibiting a parenthetical clause at the beginning of a
document as taught at column 15, lines 25-30, ipso facto excludes
parenthetical symbols and the associated content at the beginning of a
document, which “specifies use of selected symbol elements with selected
Appeal 2010-005182
Application 10/933,466

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content elements as a function of order of appearance of those content
elements in series in only a portion of a particular document” within the
meaning of claim 22.
The Examiner finds that Nunberg teaches that the user specifies use of
selected symbol elements. Ans. 3-4 (citing col. 15, ll. 25-30; col. 28, ll. 30-
40). Appellant has not provided persuasive evidence or argument to rebut
the Examiner’s findings. We agree with the Examiner for the reasons given
by the Examiner in the Answer. We also find that that column 6, lines 28
through 39 in Nunberg teaches “user specifies use of selected symbol
elements.”
We find that the combination of Foy and Nunberg teaches “including
means by which a user specifies use of selected symbol elements with
selected content elements as a function of order of appearance of those
content elements in series in only a portion of a particular document” as
recited in claim 22. We sustain the rejection of claim 22 under 35 U.S.C. §
103. Appellant presents arguments for patentability of independent claims
33-38 and 42-45 similar to those presented for claim 22, which we find
unpersuasive. Appellant has not presented arguments for separate
patentability of claims 23-32 and 39-41, which fall with claims 22 and 38.

Appeal 2010-005182
Application 10/933,466

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DECISION
The rejection of claims 22-45 under 35 U.S.C. § 103(a) as being
unpatentable over Foy and Nunberg 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). See 37 C.F.R. §
41.50(f).

AFFIRMED

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