Khalid Al-Kofahi et al.

Patent Trials and Appeals Board

Nov 26, 2021

2020006037 (P.T.A.B. Nov. 26, 2021)

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.
12/806,119 08/05/2010 Khalid Al-Kofahi 113027.000066US1 6613
79804 7590 11/26/2021
Duncan Galloway Egan Greenwald, PLLC
9625 Ormsby Station Road
Louisville, KY 40223
EXAMINER
GEBRESENBET, DINKU W
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
11/26/2021 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):
carnold@dgeglaw.com
kduncan@dgeglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KHALID AL-KOFAHI, MARC NOEL LIGHT, and JOEL
AARON HURWITZ
____________________

Appeal 2020-006037
Application 12/806,119
Technology Center 2100
____________________

Before JAMES R. HUGHES, ERIC S. FRAHM, and
MATTHEW J. McNEILL, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–33. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). According to
Appellant, Thomson Reuters Global Resources Unlimited Company is the
real party in interest (Appeal Br. 1).
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STATEMENT OF THE CASE
Appellant’s application relates to information retrieval in the context
of searching for legal authority or other documents in connection with the
delivery of services in the legal, corporate, or other professional sectors.
Spec. ¶ 1. Independent method claim 1 is illustrative of the invention and is
reproduced below, with bracketed lettering and emphases added to disputed
portions of the claim.
1. A non-transitory computer useable medium having a set
of executable code for enabling electronic communications
between a word processing program of a client access device and
an information services provider system (ISP), the set of
executable code comprising:
(a) a first set of computer program code for operatively
connecting to the word processing program;
(b) a second set of computer program code for operatively
connecting to the information services provider system;
(c) a third set of computer program code for accepting a
user search request initiated by a user of the word processing
program;
(d) a fourth set of computer program code for transmitting
the user search request to the information services provider
system;
(e) a fifth set of computer program code for deriving a set
of pseudo documents from a set of secondary documents, each
pseudo document in the set of pseudo documents representing a
version of a secondary document from the set of secondary
documents and comprising a set of identified citations and a set
of text segments from said secondary document in the set of
secondary documents, each text segment in the set of text
segments being associated with and immediately preceding a
corresponding identification citation from the set of identified
citations;
(f) a sixth set of computer program code for receiving a set
of search results, the set of search results comprising a primary
set of case law search results and a secondary set of non-case law
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search results, the primary set of case law search results
comprising a first set of case documents, the secondary set of
non-case law search results comprising a referencing text
document set, the referencing text document set comprising a
case law citation set, the case law citation set comprising one or
more citations from the set of identified citations in the set of
pseudo documents and used to derive a set of referencing text
results, and wherein the set of referencing text results comprises
a second set of case documents used to supplement the primary
set of case law search results; and
(g) a seventh set of computer program code for displaying
within the word processing program at least a portion of the
second set of case documents from the set of referencing text
results.

Appeal Br. 17, Claims Appendix (emphases and bracketed lettering added).

EXAMINER’S REJECTION
The Examiner rejected claims 1–33 under 35 U.S.C. § 103 as being
unpatentable over Arumainayagam et al. (US 2006/0195430 A1; published
Aug. 31, 2006) (hereinafter, “Arumainayagam”) and Dahn (US
2010/0030749 A1; published Feb. 4, 2010), and Knight et al. (US
2011/0047156 A1; published Feb. 24, 2011) (hereinafter, “Knight”). Final
Act. 3–27.

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs (Appeal Br. 7–
16; Reply Br. 1–5), the Examiner’s rejection (Final Act. 3–27), and the
Examiner’s response to Appellant’s arguments (Ans. 3–13). Appellant’s
arguments that the Examiner has misinterpreted the claimed pseudo
documents (see Appeal Br. 12–14; Reply Br. 2–5; see also claims 1, 8, 15
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(reciting “pseudo documents”)) have persuaded us of error in the Examiner’s
rejection of all of the disputed claims under 35 U.S.C. § 103.
Appellant’s arguments present the dispositive issue of whether or not
the Examiner erred in finding the combination of Arumainayagam, Dahn,
and Knight teaches or suggests the pseudo documents recited in independent
claims 1, 8, and 15, “each pseudo document in the set of pseudo documents
representing a version of a secondary document” (claims 1, 8, 15) (emphasis
added) as recited in each of independent claims 1, 8, and 15. The
Examiner’s conclusion of obviousness is based on the interpretation that
Knight’s pseudo documents are equivalent to the claimed pseudo documents
and would operate in combination with the teachings of Arumainayagam
and Dahn to produce the claimed invention (see Final Act. 3–8; Ans. 7–13).
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language 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). Under this standard,
we interpret claim terms using “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.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
Paragraphs 81–83 of Appellant’s Specification describe pseudo
documents (see Fig. 4, documents D1–D5 in a reference text collection) as
documents that “contain references, citations and GUID for the case, e.g., a
litigation maintained in a Litigation Support System (LSS), such as West
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Case Notebook” (Spec. ¶ 81). Appellant further describes that,
In the diagram of Figure 4, D4 implies three bits of information in
the Pseudo Document. However, the Pseudo Document may be a
structured document with, for example, the following fields:
1. Case GUID
2. Metadata
a. Case jurisdiction
b. Case court level
3. Citing document A and its referencing text
4. Citing document B and its referencing text
5. Citing document C and its referencing text
…
n. Citing document X and its referencing text

Spec. ¶ 81. Although the Specification describes what is preferably included
in a pseudo document, a limitation in the specification should not be
imported into a claim when there is no evidence that the limitation is
important, essential or critical. See Blackbird Tech LLC v. Elb Electronics,
Inc., 2017-1703 (Fed. Cir. 2018) (finding a claim construction erroneous
where the specification failed to describe the claimed element as important,
essential, or critical to the invention). Even without importing the above
understanding of what constitutes a pseudo document into the claims, one
need only look to the claim language itself to understand what is covered by
the claims.
The claims define the boundaries of the exclusive rights granted under
35 U.S.C. § 154, providing notice of the claim scope to the public. “[C]laim
construction must begin with the words of the claims themselves.” Amgen
Inc. v. Hoechst Marion Roussel, Inc., 457 F.3d 1293, 1301 (Fed. Cir. 2006)
(citation omitted). In other words, “the name of the game is the claim.” In
re Hiniker, 150 F.3d 1362, 1369 (Fed. Cir. 1998); see Giles S. Rich, The
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Extent of the Protection and Interpretation of Claims-American
Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L., 497, 499 (1990)
(“To coin a phrase, the name of the game is the claim.”).
In this case, claims 1, 8, and 15 make clear that the recited pseudo
documents are documents “representing a version of a secondary document”
(claims 1, 8, 15) (emphasis added).
However, Knight’s pseudo documents are not “a version of a
secondary document” as required by claims 1, 8, and 15. As evidenced by
the very portion of Knight cited by the Examiner as supporting the rejection
(see Final Act. 7 citing Knight ¶¶ 36, 37), Knight discloses that
Pseudo documents are created using knowledge obtained by a
person familiar with the issue or topic that is converted into a
document. For example, a reviewer who participated in a verbal
conversation with a litigant or other party during which specifics
of a lawsuit were discussed could create a pseudo document
based on the verbal conversation.

Knight ¶ 36 (emphases added). In other words, Knight’s pseudo documents
are created based on converting a conversation, notes, or recording of a
conversation into a document. That is, Knight’s pseudo documents
represent a version of a conversation or interaction, not a version of another
document, as claimed.
In view of the foregoing, Appellant’s arguments that Knight’s pseudo
documents do not meet the language of the claims (see Appeal Br. 12–14;
Reply Br. 2–5), and therefore cannot be combined with Arumainayagam and
Dahn to perform the claimed methods (see Appeal Br. 10–11), are
persuasive. Because Appellant’s arguments have persuaded us of error in
the Examiner’s rejection of independent claims 1, 8, and 15, and the claims
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which depend thereupon, we do not sustain the Examiner’s rejection of
claims 1–33 based upon the combination of Arumainayagam, Dahn, and
Knight.

CONCLUSION
We reverse the Examiner’s rejections of claims 1–33 under 35 U.S.C.
§ 103(a).

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–33 103(a) Arumainayagam, Dahn,
Knight
1–33

REVERSED