Philip VaseyDownload PDFPatent Trials and Appeals BoardMay 4, 20212019006248 (P.T.A.B. May. 4, 2021) Copy Citation 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.”). Appeal 2019-006248 Application 11/668,686 2 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. Appeal 2019-006248 Application 11/668,686 3 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 Appeal 2019-006248 Application 11/668,686 4 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”). Appeal 2019-006248 Application 11/668,686 5 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: Appeal 2019-006248 Application 11/668,686 6 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 Appeal 2019-006248 Application 11/668,686 7 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 Appeal 2019-006248 Application 11/668,686 8 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 Appeal 2019-006248 Application 11/668,686 9 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 Appeal 2019-006248 Application 11/668,686 10 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 Appeal 2019-006248 Application 11/668,686 11 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 Appeal 2019-006248 Application 11/668,686 12 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 Copy with citationCopy as parenthetical citation