Philip Vasey

Patent Trials and Appeals Board

May 4, 2021

2019006248 (P.T.A.B. May. 4, 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.
11/668,686 01/30/2007 Philip E. Vasey 760-024 4258
34845 7590 05/04/2021
Anderson Gorecki LLP
One Marina Park Drive
Suite 1410
Boston, MA 02210
EXAMINER
SCHALLHORN, TYLER J
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
05/04/2021 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):
handerson@andersongorecki.com
jgorecki@andersongorecki.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PHILIP E. VASEY
____________

Appeal 2019-006248
Application 11/668,686
Technology Center 2100
____________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision2 to reject the claims directed to a method of displaying a master
document as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies the real party in interest as Thomson Reuters Global
Resources. Appeal Br. 2.
2 Herein we refer to the Final Office Action mailed January 1, 2019 (“Final
Act.”), Appeal Brief filed May 7, 2019 (“Appeal Br.”), Examiner’s Answer
mailed June 24, 2019 (“Ans.”), and Reply Brief filed August 23, 2019
(“Reply Br.”).
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STATEMENT OF THE CASE
The Specification describes generating customized documents from
document templates called master documents by using a mark-up notation.
Spec. 1:3–6. The mark-up allows portions of document content included in
the master document to be included in a final customized document only if
certain conditions are satisfied. Id. at 1:16-18. This mark-up can be
represented in a graphical form, such as a table, which is more easily
understood and edited by non-experts in the syntax of the mark-up. Id. at
5:11–14. A graphical representation of a simple mark-up example is
reproduced below, as shown on page 7 of the Specification.

Id. at 7:9–10. The above table shows a graphical representation of the
markup of a condition of the form “Variable IS ‘Value’,” where the variable
and the value depend on the particular element checked. Id. at 7:6–8. The
condition shown above requires that the “Lenders” variable have the value
“Syndicated” for the condition to be satisfied. Id. at 7:8–9.
The Specification describes different graphical representations of a
mark-up, such as composite conditions using logical operators like “OR,” as
well as more complicated examples. Id. at 9:10–13, 12:5–9. Graphical
representations are not limited to tabular representations, id. at 13:3–5, and
in one embodiment only those elements actually required by the existing
mark-up are shown, id. at 14:20–22. A user may modify the mark-up via the
graphical representation and save it for future use. Id. at 14:8–24.
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Claims 1–18 are on appeal, and can be found in the Claims Appendix
of the Appeal Brief. Claim 1 is representative of the claims on appeal, and
reads as follows (bracketing added for reference convenience):
1. A method comprising:
[A] displaying a master document of a document
generation system, the master document comprising
unconditional content, conditional content, and non-graphical
mark-up which evaluates based on input to determine whether
the conditional content is included in a customized document
generated from the master document by the document
generation system;
[B] selecting a portion of the unconditional content of the
master document;
[C] causing the selected portion of the unconditional
content to become selected conditional content in the master
document by generating and displaying a graphical
representation of how the non-graphical mark-up is related to
the selected conditional content in the master document,
including conditions under which the selected conditional
content is included in the customized document; and
[D] responsive to modification of the displayed graphical
representation, modifying the non-graphical mark-up in the
master document correspondingly, thereby modifying how the
non-graphical mark-up is related to the selected conditional
content in the master document.
Appeal Br. 19 (Claims Appendix A) (emphasis added). The other
independent claims, claims 14 and 16, similarly recite changing
unconditional content to conditional content or vice versa. Specifically,
claim 14 recites “causing the associated conditional content to become
unconditional content in the master document;” while claim 16 recites
“responsive to deletion of the displayed graphical representation, for causing
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the selected conditional content to become unconditional content in the
master document.”
Appellant requests review of Examiner’s3 rejection of claims 1–18
under 35 U.S.C. § 103(a) as unpatentable over Vasey4 in view of Titemore.5
ANALYSIS
Appellant contends that the combined references do not teach all the
claim limitations. See generally Appeal Br. 13–18. Specifically, Appellant
argues that the combination of references does not teach or suggest
“graphically converting unconditional content into conditional content.” Id.
at 14. Appellant does not argue the features recited in independent claims 1,
14, and 16 separately, therefore, we focus our discussion below on claim 1,
and especially on claim element 1[C]. See id. at 13–19.
Examiner relies on Vasey’s Figures 4, 5, and 10–19 and the associated
description to disclose a method for “displaying a master document” by
“generating a graphical representation of how the mark-up is related to the
conditional content.” Final Act. 5–6. Specifically, Examiner points us to
where Vasey describes “generating and displaying a graphical representation
of how the non-graphical mark-up is related to the selected conditional
content”.” Id. (emphasis removed) (citing Vasey ¶ 48, “FIGs. 11–19: The
radio buttons and checkboxes indicate to the user which content items will
be included in the document”).

3 Examiner’s finds that certain terms in claims 16–18 invoke 35 U.S.C.
§ 112, sixth paragraph. See Final Act. 3–4. Appellant has not rebutted
Examiner’s claim construction and, therefore, if necessary we will apply
Examiner’s claim construction.
4 Vasey, US 2003/0140053 A1, pub. July 24, 2003 (“Vasey”).
5 Titemore et al., US 2007/0011608 A1, pub. Jan. 11, 2007 (“Titemore”).
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Examiner finds that Vasey teaches all the claimed elements but for the
following limitations:
[1(B)] selecting a portion of the unconditional content of the
master document;
[1(C)] causing the selected portion of the unconditional content
to become selected conditional content in the master document
[1(D)] responsive to modification of the displayed graphical
representation, to modifying the non-graphical mark-up in the
master document correspondingly, thereby modifying how the
non-graphical mark-up is related to the selected conditional
content in the master document.
Final Act. 6 (emphasis removed) (numbering and bracketing added).
Examiner, therefore, relies on Titemore for teaching claim elements 1(B)–
1(D). See id.; Ans. 3–6.
Based on the combination of Vasey and Titemore, Examiner
concludes that
[i]t would have been obvious to a person having ordinary skill
in the art at the time the invention was made to incorporate the
teachings of Titemore into those of Vasey. One would have
been motivated to do so because it would make the software
more useful by allowing the user greater control over the
template/master document.
Final Act. 6.
Vasey teaches displaying a questionnaire interface (Vasey, e.g. FIGs.
10a-10g, 11a, 12a, 13a, etc.) which is related to the master document
(Vasey, FIG. 9). For example, Vasey teaches associating rules with content
for the inclusion into a final document. One such rule and content
combination is shown in the figure below:
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Fig. 5a–c, reproduced above, shows “clauses, and their association with the
rules, [that] are identified in the document template by means of mark-up–
namely, left and right square brackets for surrounding the clauses together
with superscript and subscript numerals associating the clauses with their
corresponding rules which are themselves preceded by corresponding
numerals.” Id. ¶ 52. In this example, if jurisdiction “England and Wales” is
selected then only the text in Fig. 5b is included in the custom document
produced by Vasey’s method.
Vasey teaches creating custom documents using an input form in the
form of a graphical questionnaire for capturing the values of the variables
that are included in the custom document. See id. ¶¶ 72, 114, 115. An
example of such a questionnaire is reproduced in the figure below:

Fig. 11a, shown above, asks the user to select a jurisdiction for which
to draft a document. See id. ¶ 114. “Full or partial information by a user, the
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rule evaluations (or non-evaluations) that are deduced from the information
provided . . . and the fully or partially customized documents that are
generated as a result.” Id. Vasey also does not limit the type of input that can
be linked into the custom document and can include sources such databases
and other expert systems. Id. ¶ 122. Finally, Vasey discloses that “[w]here
no rules have been evaluated (for example where all variables have been
deferred) the generated document will contain all the elements of document
content of the document template marked-up to indicate they are still
conditional.” Id. ¶ 113.
Titemore teaches an editor that allows “reusing document text (e.g.
repeated phrases or lists) in a newly created document having a
predetermined document type (e.g. medical record).” Titemore Abstract.
“Users can create rules that retrieve section text from an existing document
and add the text to the user’s current dictation,” the user can select specific
sections or all reusable sections. Id. ¶ 51. Titemore’s dialog box, shown
below, is a graphical representation that allows the user to create rules that
determine what text to include in a final document.

FIG. 4A, reproduced above, shows “a dialog box 150 for a document rule
where a user can create a rule that retrieves the section text from an existing
document, based on the criteria specified. The retrieved text is placed in the
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section of the dictation based on the rule’s location in the template rule set.”
Id. ¶ 54. Titemore’s editor also allows previewing of a document modified
based on the rules for text selection. Id. Titemore allows for adding
information such as time frame or authorship to a document. Id. ¶ 55 (“The
user can specify time frames in menu 152, . . . who dictated the document in
menu 156 (i.e. ‘me’ or ‘anyone’) and which section of the existing document
they want to place in their dictation in menu 158”). The added information
serve as filters for retrieving documents. Id. ¶ 69 (“The work type, time
frame, and author filters are used to find documents.”). Titemore allows
editing of existing rules.
Clicking on an underlined rule header (“Custom Text Rule:”,
“Document Rule:”, or “Current List Rule:”) opens the
corresponding rule editor. Unlike when adding the rule, the
selected rule’s information will be displayed. If the user
changes any of the rule’s criteria and clicks the “OK” button,
the selected rule will be replaced with a rule consisting of the
new criteria.
Id. ¶ 64.
Examiner finds that “Titemore teaches rules which identify a section
of an existing document to retrieve and add to a new document.” Ans. 3
(citing Titemore ¶ 51). Examiner finds that “a rule that only identifies what
section to retrieve is ‘unconditional’ because the specified section [content]
is included regardless of its document’s properties.” Id. In other words,
Examiner’s position is that a rule that says get “get the Section 3 section”
(see above Titemore Figure 4A) to incorporate into the master document is
the selection of “unconditional content” from a repository because it would
retrieve all Section 3 text. Examiner explains that “Titemore further teaches
that a user may edit existing rules, changing their criteria” and thereby you
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could change a section from being “unconditional” to “conditional.” Ans. 4.
For example, Examiner finds that a user in Titemore may edit an existing
rule and change the criteria so that the retrieved section is further narrowed.
Ans. 4 (“Titemore further teaches that a user may edit existing rules,
changing their criteria (Titemore ¶ 64)”).
Appellant asserts that Titemore’s rule editing interface does not
convert unconditional content into conditional content. Reply Br. 15.
Specifically, “[c]hanging an existing rule cannot cause a portion of
unconditional content to become conditional content because there is no
unconditional content associated with the existing rules.” Reply Br. 16.
“[W]hen Titemore deletes a rule the reused content (conditional content) is
excluded from the medical report.” Appeal Br. 17.
The issue is what is “unconditional content” in light of the
Specification. Examiner finds that the Specification does not provide a
definition for “unconditional content” but notes “that the content is included
unconditionally in the final document.” Ans. 3 (citing Spec. 1).
According the Specification,
portions of document content included in the master document
may be included in the final customised document only if
certain conditions are satisfied. Such portions of document
content may be referred to as conditional document content.
The master document may also include portions of document
content which are included unconditionally in the final
customised document.
Spec 1:16–21 (emphasis added); see also Appeal Br. 3 (“The non-
conditional content is always included in the customized document
regardless of how the rules are evaluated, and thus regardless of the user’s
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answers.”). The Specification further describes changing between
conditional and unconditional content by way of a usage statement.
The user may be allowed to delete one or more of the tables.
For example, the user may select one or more of the usage
tables and then select a ‘delete’ icon. This would have the effect
of making those elements of the master document that occurred
within the scope of the usage statement represented by the
deleted tables unconditional. The user may also be allowed to
create new tables, including usage tables, for example to make a
previously unconditional portion of the master document
conditional. In this case, the user selects a portion of the master
document and then clicks a ‘create usage table’ icon. The user
may then edit the created usage table to define the usage
statement that controls the selected portion of the master
document.
Spec. 14:20–15:2.
Based on these disclosures in the Specification, we interpret
“unconditional content” as content that is included in the master document
without meeting any selection criteria. This interpretation is consistent with
Examiner’s interpretation. See Ans. 3.
“[T]he examiner bears the initial burden . . . of presenting a prima
facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). A rejection for obviousness must include “articulated reasoning with
some rational underpinning to support the legal conclusion.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006).
On this record, we find that Appellant has the better position. We
agree with Appellant that Examiner has not directed us to any teaching in
Titemore that converts “unconditional content” into “conditional content.”
Titemore stores the reusable text in a repository (i.e. database) that is
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different from master document as claimed. See Titemore ¶¶ 4–5. Titemore’s
instructions determine what portions of the reusable text are retrieved from
the repository and included in the document. Id. ¶ 54. Titemore not only
discloses creating or deleting rules, but also teaches that the rules may be
edited. See id. ¶¶ 51, 63, 64. “Unlike when adding the rule, [when editing a
rule] the selected rule’s information will be displayed. If the user changes
any of the rule’s criteria and clicks the “OK” button, the selected rule will be
replaced with a rule consisting of the new criteria.” Id. ¶ 64.
We are not persuaded by Examiner’s position and agree with
Appellant that Titemore does not teach converting content. Specifically, we
do not find that changing the instructions from include all “Section 3” text
generated by all authors to content limiting “Section 3” text generated by a
particular author converts the content from “unconditional content” to
“conditional content” as suggest by Examiner. See Ans. 4. Titemore explains
that “[u]sers can create rules that retrieve section text from an existing
document and add the text to the user’s current dictation.” Titemore ¶ 51.
“[A] user can create a rule that retrieves the section text from an existing
document, based on the criteria specified.” Id. ¶ 54. “This editor allows for
multiple ways to select rules and sections. . . . Clicking an individual rule (in
any section), clears all previously selected sections and rules and then
highlights that rule.” Id. ¶ 47. As Appellant explains, and we agree,
Titemore retrieves the text from the repository to put into the current
document. The “new” rule, however, is not applied to the text in the current
document the rule is applied to retrieval from the repository. Reply Br. 16
(“Titemore’s “reused content” that is copied into a medical report is
conditional content.”). Thus, the rule editing feature of Titemore does not
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apply the new rules to a previously captured text but instead applies the new
rule to the original repository text. What is missing from Examiner’s
rejection is a sufficiently articulated reason based on evidence in the record
that supports the position that Titemore incorporates unconditional content
in the master document that can be further selected within the master
document in order to convert any content.
We determine that Examiner has not directed us to any teaching in the
record to support the limitation of “changing the selected portion of the
unconditional content to become selected conditional content” as recited in
claim 1[C]. Because the other independent claims, claims 14 and 16,
similarly recite changing unconditional content to conditional content or vice
versa we determine that the combination of references also fails to meet
these limitations. Accordingly, we reverse the rejection of claims 1, 14, and
16 and any of their dependents.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–18 103 Vazey, Titemore 1–18

REVERSED