Ex Parte Vasey

Board of Patent Appeals and Interferences

Dec 23, 2011

10932266 (B.P.A.I. Dec. 23, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PHILIP E. VASEY
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Appeal 2009-014006
Application 10/932,266
Technology Center 2100
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Before MAHSHID D. SAADAT, KRISTEN L. DROESCH and
JASON V. MORGAN, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 – 22, 24, 29 – 33, and 35 – 40. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Invention
The invention relates to the dynamic generation of questionnaires
(Spec. 1). Independent claims 1 and 38 are directed to systems for
generating a customized document. Independent claim 29 is directed to a
computer-implemented method of generating an information capture
document. Independent claim 37 is directed to a computer program product
for performing the steps of the method described in claim 29.
Exemplary Claim
1. A system for generating a customised document using
a template comprising content elements selected by rules
operating on input information, wherein at least one
content element comprises at least a first variable, the
system further comprising:
a) means to generate a fully or a partially
customised document by evaluating the rules to select
some of the content elements;
b) means to evaluate a set of further rules, the rules
including at least one second variable, to determine the
number and type of occurrences of the first variable
within the template, wherein the further rules determine
whether the first variable occurs in the template within
unconditional text, conditional text or a usage statement;
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c) means to aggregate the further set of rules with
one another to determine the relevance of the first
variable in terms of the at least second variable, wherein
the relevance of a variable indicates whether or not a
question associated with the variable is to be included in
an information capture document or not; and
d) means to generate an information capture
document for obtaining input information from a user
based upon at least the determined relevance of the first
variable, including means to disable a first question
associated with the first variable if the second variable is
determined to be irrelevant.
Evidence Examiner Relies Upon
Huyn US 2002/0035486 A1 Mar. 21, 2002
Callender US 2002/0119433 A1 Aug. 29, 2002
Examiner’s Rejection
The Examiner rejects claims 1 – 22, 24, 29 – 33, and 35 – 40 under 35
U.S.C. § 103(a) as being unpatentable over Huyn and Callender.
ISSUE
Did the Examiner err in finding that Huyn teaches generating an
information capture document?
ANALYSIS
Claim 1
Appellant contends that the Examiner improperly construes the claim
“as reciting operation of the questionnaire form, i.e., dynamically adjusting
the presentation of questions in response to user input” (App. Br. 15; Reply
Br. 15). Specifically, Appellant argues that the claim is directed to “the
generation of the initial questionnaire form presented to the user before any
input has been received from the user, i.e., automatically creating the
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underlying code that allows the questionnaire form to work properly” (App.
Br. 16; Reply Br. 16). Appellant further argues that, in contrast, Huyn
describes “operation of the form in response to user input after
relationships between questions have already been established” (App.
Br. 17; Reply Br. 17). However, Appellant’s construction of the claim
recitations is too narrow.
As the Examiner points out (Ans. 15 – 16), the claim does not
preclude the use of user input before or during generation of an information
capture document. Appellant emphasizes that “means to generate an
information capture document” is the last (App. Br. 16; Reply Br. 16) and
final (App. Br. 20; Reply Br. 20) element recited in claim 1. However, it is
well established that unless a claim specifically recites an order for the
execution of steps of a method, that claim will not be construed as requiring
a specific order. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369
(Fed. Cir. 2003) (citing Interactive Gift Express, Inc. v. Compuserve, Inc.,
256 F.3d 1323, 1342 – 43 (Fed. Cir. 2001)). No such specific order is recited
in claim 1.
Furthermore, the Specification describes an example where the
document generation program receives information entered by a user
through an input form (step 52) before the document generation program
generates a customized document (step 56) (Spec. 7, ll. 24 – 30; fig.4). As
such, we find that a broad, but reasonable, interpretation of the claimed
“means to generate an information capture document” includes systems in
which a questionnaire is partially delivered and, based on user responses to
an initial set of questions, additional questions are selected and delivered. In
such systems, the selection and presentation of conditional questions
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generates an information capture document comprising the combination of
the initial and the conditional questions.
Huyn teaches this type of information capture document generation.
In an example cited by the Examiner (Ans. 5), Huyn teaches that if a
positive response to screening questions 160 is received, then additional
questions 170 are presented to elicit further information (¶ [0075]; fig.11C).
Subsequently, the system generates an information capture document
comprising the screening (i.e., initial) questions and the additional (i.e.,
conditional) questions.
Appellant further contends that “[t]he issue is not whether the
questionnaire is computerized. The issue is whether the code that causes the
questionnaire to operate was written by a human being or a machine” (Reply
Br. 23). However, a system that assembles initial and conditional questions
encompasses the claimed means to generate an information capture
document. Therefore, the system of Huyn, in which “[q]uestion assembly
logic determines which potential questions to assemble into a form”
(¶ [0054]), teaches generating, not just operating, an information capture
document.
Appellant contends that Huyn does not teach the claimed means to
aggregate a further set of rules because “the limitation recites determining
the relevance of the first variable in terms of the second variable, i.e.,
identifying whether there is a relationship between the variables before any
user data is ever gathered” (App. Br. 18; Reply Br. 18). For similar reasons
to those discussed above, we find that the aggregation limitation does not
preclude the gathering of user input before or during aggregation. Moreover,
as the Examiner points out (Ans. 5), Huyn teaches a “questionnaire system
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consisting of a database that stores questionnaire objects, including clinical
questions, question presentation conditions, forms, and form linking
conditions” (¶ [0017]). The Examiner also points out (Ans. 16) that Huyn
further clarifies that “not all included questions are presented, but only as
determined by the question linking logic” (¶ [0054]). That is, Huyn
determines which lower-level questions are relevant in terms of the answers
to higher-level question and conditions (i.e., aggregated rules) which link the
higher-level and lower-level questions.
Appellant contends that in the claimed invention “it is the number and
type of occurrences of the first variable within the template that is used to
determine whether the variable is always included, or only under certain
circumstances. Note that the rules are then aggregated to determine
relevance (not user input)” (App. Br. 20; Reply Br. 20). However, we agree
with the Examiner (Ans. 17) that Huyn teaches determining the number and
type of occurrences of a first variable. Huyn depicts an example in figure 8A
in which questions on form F1 are always included, while questions on other
forms are included only under certain circumstances. The questions on form
F5 are included only if both conditions C12 and C25 are met or if condition
C13 is met. Thus, both the number of occurrences (i.e., questions on form F5
are available in multiple ways) and the type of occurrence (i.e., questions on
form F5 are always conditional) are used to determine whether a variable is
always included, or only under certain circumstances.
For the above reasons, we agree with the Examiner that Huyn teaches
generating an information capture document. Accordingly, we find that the
Examiner did not err in rejecting claim 1 under 35 U.S.C. § 103(a).
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Claims 2 – 22, 24, 29 – 33, and 35 – 40
Appellant submits that the arguments made with respect to claim 1
“are equally applicable to independent claims 29, 37, and 38 because
corresponding limitations are recited” (App. Br. 21; Reply Br. 21).
Appellant does not argue the limitations of the dependent claims separately.
As such, for the reasons discussed above, we find that the Examiner did not
err in rejecting claims 2 – 22, 24, 29 – 33, and 35 – 40 under 35 U.S.C.
§ 103(a).
DECISION
We affirm the Examiner’s decision rejecting claims 1 – 22, 24, 29 –
33, and 35 – 40.
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

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