Sigram SCHINDLER

Patent Trials and Appeals Board

Feb 23, 2021

2019006802 (P.T.A.B. Feb. 23, 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.
13/777,416 02/26/2013 Sigram SCHINDLER 2654-0013US01 6134
137713 7590 02/23/2021
Potomac Law Group, PLLC
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
EXAMINER
SMITH, PAULINHO E
ART UNIT PAPER NUMBER
2125
NOTIFICATION DATE DELIVERY MODE
02/23/2021 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):
eofficeaction@appcoll.com
patents@potomaclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SIGRAM SCHINDLER
____________________

Appeal 2019-006802
Application 13/777,416
Technology Center 2100
____________________

Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
JOYCE CRAIG, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1 through 30. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, SIGRAM SCHINDLER
BETEILIGUNGSGESELLSCHAFT MBH is the real party in interest.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Appellant’s invention relates to an Innovative Expert System that “for
a given innovation/invention the claimed Data Structure DS – structurally
being the same for any innovation/invention - meet two kinds of functional
requirements.” Abstract. Claim 1 is reproduced below.
1. A computer-implemented method for generating for a
given Problem Pair (''PTRCT"), comprising a new technical
teaching ("TT.0") of a claimed invention ("CI") and a reference
set ("RS") in a given context ("CT"), a data structure ("PTRCT-
DS") for use by a computer expert system, the computer expert
system executing the method having a processor for generating
and a memory for storing the data structure (" PTRCT-DS"), the
method comprising:
receiving a disclosure document ("document.0'') and
therein a claim with disclosure document marked-up items
("doc.0-MUls") of information disclosing a technical teaching
("TT.0") of a claimed invention ("CI");
receiving a reference set ("RS") of prior art documents
("document.i") with prior art document marked-up items
("doc.i-MUls") disclosing technical teachings ("TT.i,"), and
writing all prior art documents and their marked-up items
("MUIs") into a data structure ("PTRCT-DS"), wherein the prior
art document marked-up items ("doc.i-MUI") are called subject
matter items;
receiving a context document ("document.CT")
comprising a legal framework with context document marked-
up items ("doc.CT-MUIs") of their wordings, and writing the
context document ("document.CT") and its marked-up items
("MUIs") into the data structure ("PTRCT-DS"), wherein the
context document marked-up items ("doc.CT-MUI") are called
legal items, which state the lawfulness of the technical teaching
("TT.0") of a claimed invention ("CI"); and
creating further subject matter and legal items by
executing this method, comprising:
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(a) identifying disclosure document items ("doc.0-items")
of said claim of the technical teaching ("TT.0") of the claimed
invention ("CI") as being:
1) one disclosed element ("X.0.n") being a keyword of
the claim's wording and generating a set comprising exactly this
claim element, and writing said set into the data structure
("PTRCT-DS");
2) a disclosed compound property of said claim element
described by a compound predicate ("X.0.n"), describing the
said claim element, and generating a set comprising this
property, and writing said set into the data structure ("PTRCT-
DS"); or
3) one or more creative binary independent concepts and
their respective mirror predicates such that a conjunction of said
mirror predicates describes said property and generating for
each of said one or more creative binary independent concepts a
set comprising only the each of said one or more creative binary
independent concepts, and writing said one or more sets into the
data structure ("PTRCT-DS");
(b) generating for any set generated in (a) a set of
disclosure document marked-up items ("doc.0-MUIs")
disclosing this set's element, and writing said set of disclosure
document marked-up items ("doc.0-MUIs") into the data
structure ("PTRCT-DS");
(c) generating for any set generated in (b) a set of
"I.CTs", i.e. compounds from the context document marked-up
items ("doc.CT-MUIs"), justifying any set generated in (b), and
writing said set of "I.CTs" into the data structure ("PTRCT-
DS"); repeating steps (d)-(f) for all prior art documents
("document.i"), and for a given prior art document ("document.
i") for any prior art document item ("document. i-item")
supposed to be peer to the disclosure document ("doc.0") item
("doc.0-item") as identified in (a)1 or (a)3:
(d) generating a set comprising for a prior art technical
teaching ("TT.i") as a prior art document item ("document. i-
item") one of:
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either a claim element of the prior art technical teaching
("TT. i") peer to the claim element in step (a)1, if the peer claim
element is not existent in the prior art document ("document.i"),
replacing by a dummy peer claim element;
or a binary independent concept of the prior art technical
teaching ("TT. i") peer to the binary independent concept in
step (a)3, if the peer binary independent concept of the prior art
technical teaching ("TT. i") is not existent or not equal to its
peer binary independent concept in the technical teaching
("TT.0") of the claimed invention ("CI"), replacing by a dummy
peer concept and writing said set into the data structure
("PTRCT-DS");
(e) generating for any set generated in (d) a set of prior
art document marked-up items ("doc.i-MUIs") disclosing in the
prior art document ("document.i") the item determined in (d),
and writing said set into the data structure(" PTRCT-DS");
(f) generating for any set generated in (e) a set of "I.CTs"
i.e. compounds from the context document marked-up items
("doc.CT-MUIs") justifying elements in this set by the user, and
writing said set into the data structure ("PTRCR-DS");
(g) generating a set of anticipation combinations ("AC")
combinable over sets of (d), and writing this set of anticipation
combinations ("ACs") into the data structure ("PTRCT-DS");
(h) generating, for any anticipation combination ("AC")
generated in (g), a set of shortest sequences of Q concept
creations ("QCC") such that anticipation combination ("AC")
/modulo of the sequences of Q concept creations ("QCC")
anticipates the technical teaching ("TT.0") of the claimed
invention ("CI"), and writing said set into the data structure
("PTRCT-DS");
(i) generating, for any sequence of Q concept creations
("QCC") generated in (h), a set of "I.CTs" i.e. compounds from
the context document marked-up items ("doc.CTMUIs")
justifying this sequence by the user, and writing said set into the
data structure ("PTRCT-DS");
(j) generating, for sets generated in (a)-(i), a set of one or
more concatenations or linked-together items, by natural
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language fragments of said sets representing a given test ("T")
whereby the test ('T') is defined to be a set of argument chains
("SoARGC") showing that this test ("T") holds for the technical
teaching ("TT.0") of the claimed invention ("CI") over the
reference set ("RS") and level of knowledge according to the
context document ("document.CT"), whereby any argument
chain ("ARGC") is limited to comprising sets from (a)-(i) as
links, which are glued together by natural language fragments
and writing said set of concatenations into the data structure
("PTRCT-DS");
and
(k) generating, for any set generated in (a)-(j), a real-
time-access set facilitating a real-time dialog, and writing said
set into the data structure ("PTRCT-DS"); wherein marked-up
items ("MUIs") result from a textual analysis performed on a
document. i ("doc. i").

REJECTIONS2

The Examiner rejected claims 1 through 30 under 35 U.S.C. § 112
first paragraph, as failing to comply with the enablement requirement. Final
Act. 2–4.
The Examiner rejected claims 1 through 30 under 35 U.S.C. § 112
second paragraph, as being indefinite. Final Act. 4–5.
The Examiner rejected claims 1, 5 through 11, 15 through 20 under
35 U.S.C. § 103(a) as unpatentable over the combined teachings of
Szygenda (US 2008/0086507) and Manual of Patent Examining Procedure
(MPEP). Final Act. 6–20.

2 Throughout this Decision we refer to the Appeal Brief filed April 5, 2019
(“Appeal Br.”); Reply Brief filed Sept. 18, 2019 (“Reply Br.”); Final Office
Action mailed March 7, 2018 (“Final Act.”); and the Examiner’s Answer
mailed July 18, 2020 (“Ans.”).
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The Examiner rejected claims 2 through 4, 12 through 14, and 22
through 30 under 35 U.S.C. § 103(a) as unpatentable over the combined
teachings of Szygenda, MPEP, and Buckley (Smart High Precision: Trec 7).
Final Act. 20–36.
The Examiner rejected claim 21 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Szygenda, MPEP, and
Charlesworth (2002/0052870 A1). Final Act. 36–37.

ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims 1 through 30 under 35 U.S.C.
§ 112 first paragraph and 35 U.S.C. § 112 second paragraph and we sustain
these rejections. However, we do not sustain the Examiner’s rejections of
claims 1 through 30 under 35 U.S.C. § 103.

Rejection based upon 35 U.S.C. § 112 first paragraph
The Examiner rejects claims 1 through 26 as failing to comply with
the enablement requirement. Final Act. 2–4. Specifically, the Examiner
lists the limitations a) through k) stating that the specification does not
provide an enabling disclosure as it is not clear how “how a computer
system would perform all the listed steps, or how to build a computer system
that would do such.” Final Act. 2–3. The Examiner provided the example
that the term “legally justifies” in claims 2, 28 and 30 is not enabled and
states that the specification “defines legal justification as being element legal
justification wherein compounds from document mark-up items justify it.
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This leads to the questions what is element, compounds, and element legal
justifications and how does a user determine what satisfies or passes for
these terms.” Final Act. 4. In the Answer, the Examiner provides several
more detailed examples and further explanation to support the rejection.
Answer 6–9. We address Appellant’s arguments as they apply to the specific
examples identified by the Examiner. However, we do not support the
Examiner’s blanket conclusion, on page 6 of the Answer, that “there is no
direction in the specification given to how a user or person would go about
accomplishing the steps of a-k as well as how a computer would
automatically accomplish these same steps” without further explanation by
the Examiner.
In the first example, the Examiner, referring to element (a)2) of claims
1 and 11, states:
it is uncertain how a user determines properties of an element
and what constitutes a property of an element, what elements
the user has to identify and how the user determines that
something is to be an element, how a user identifies creative
binary independent concepts and what is meant by creative as
creative is vague in itself.
In the appellant's arguments, it is stated that a “subject
matter item” is any item disclosed in a document or in the
simplest case an elementary binary independent disclosed
creative concept (BID-cr-C). Also that claims state it can be an
element, property or binary independent concept. If a subject
matter can be anything in document that makes it unclear as to
how an user or system is to go about identifying it as it could be
anything and there are no clear bounds or requirement for what
the user or system is to find or identify.
Ans. 6–7. Appellant in the Appeal Brief, states that:
With respect to the term “a property,” Appellant respectfully
notes that the term has been previously defined as an “attribute”
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in US patent application no. 13/608,543 filed on September 10,
2012, and incorporated by reference in its entirety in the present
application. The property/attribute describes an element. See
present disclosure on page 22, line 35 and page 30, line 27-28.
Appeal Br. 15.
Appellant’s arguments have not persuaded us the Examiner erred in
concluding that the limitations in (a)2) of claims 1 and 11 are not enabled.
With respect to the limitation being vague, we consider this below as an
issue of indefiniteness when we address the rejection based upon U.S.C. §
112 second paragraph. Claim 1 recites “creating further subject matter..
comprising (a) identifying disclosure document items … as being … 2) a
disclosed compound property.” Independent claim 11 recites a similar
limitation. We have reviewed the pages cited by Appellant in the Appeal
Brief, page 22, line 35 merely identifies that properties are used to generate
sets and page 30 lines 27 through 28 identify that generic notions are used to
describe properties. Neither of these cited passages disclose how to identify
or determine properties to enable an artisan to make and use the invention
claimed without undue experimentation.3 Further, in the “Summary of the

3 “[T]o be enabling, the specification of a patent [application] must teach
those skilled in the art how to make and use the full scope of the claimed
invention without ‘undue experimentation.’” Genentech, Inc. v. Novo
Nordisk, A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright,
999 F.2d 1557, 1561 (Fed. Cir. 1993)) (emphasis added). Determining the
need for “undue experimentation” is not “a single, simple factual
determination, but rather is a conclusion reached by weighing many” factors.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Those factors (the Wands
factors) include:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
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claimed subject matter” section of the Appeal Brief Appellant identifies that
this limitation is disclosed in Figures 5(a)-(f) and page 26 line 14 through
page 28, line 14. Appeal Br. 4. We have reviewed the cited Figures, and
find that they merely depict linkages between items in boxes. Further, we
have reviewed the cited disclosure on pages 26 through 28 of the
Specification, which in several instances discusses using a property of an
object in modeling; however we do not find that this teaches how a property
is identified (i.e. Appellant’s Specification does not describe the process,
algorithm or criteria applied to identify or determine a property). As such,
with respect to the first example we concur with the Examiner that the
Specification does not provide a disclosure as to how make or use the
invention claimed.
In the second example, the Examiner, referring to element (a)1) of
claims 1 and 11, states:
there is no definition or instructions or examples for what
constitutes a keyword in a claim or how to identify them. It is
uncertain if all the words in a claim are keywords, only one of
the words, or if there some method to determine or decide
which words are keywords. The term “compound property” is
defined in the claim 1(a)(2) as the elements in 1(a)(1) described
by a compound predicate (X.0.n), wherein compound predicate
is not defined in the claims or specification, nor how a user or
system is to identify them. In addition as it is dependent on the
term “element” which is not also clearly defined it leaves it up
to the user or system to guess what these terms mean and
encompass and then try figure out how to identify them on their

of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of
the claims.
Id. (citing In re Forman, 230 USPQ 546, 547 (BPAI 1986)).

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own. This would constitute undue experimentation.
Answer 7.
With respect to this example, Appellant in the Appeal Brief states
“With respect to the term ‘element,’ Appellant respectfully submits that an
‘element’ of a claim is defined as being a keyword of the claim's wording.
See page 41, third paragraph, section ii).” Appeal Br. 15.
Appellant’s arguments have not persuaded us the Examiner erred in
concluding that the limitations in (a)1) of claims 1 and 11 are not enabled.
Claim 1 recites “creating further subject matter… comprising (a) identifying
disclosure document items … as being … 1) one disclosed element … being
a keyword of the claim’s wording ” Independent claim 11 recites a similar
limitation.
We have reviewed paragraph 41 of Appellant’s Specification which
discusses that keywords are elements but do not find that this teaches how a
keyword is identified (i.e. Appellant’s Specification does not describe the
process, algorithm or criteria applied to identify or determine a keyword).
Further, in the “Summary of the claimed subject matter” section of the
Appeal Brief Appellant identifies that this limitation is disclosed in Figures
5(a)-(f) and page 26 line 14 through page 28, line 14. Appeal Br. 4. As
discussed above Figures 5(a)–(f) depict linkages between items in boxes.
Pages 26 through 28 of the Specification do not discuss keywords. As such,
with respect to the second example we concur with the Examiner that the
Specification does not provide a disclosure as to how make or use the
invention claimed.
In the third Example, the Examiner, referring to element (a)3) which
of claims 1 and 11, states:
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“binary independent concept”, there is no clear definition or
instructions in the speciation that guides the user or system on
what they encompass and how one would identify them. The
closest the specification comes to giving a definition is the
specification on page 9 line 4-6 wherein it cites “The BID-de-
Cs/BID-cr-Cs alias elementary de-CS/Cr-CS eventually
scientifically correctly model the “fundamental building
blocks” of this invention/TT.0, i.e. the independent thoughts
embodied by the TT.0. From this the examiner understand that
“binary independent concept” and/or “elementary binary
independent concept” means “independent thoughts” embodied
in an invention. It is unclear or uncertain how a system or user
determines and identifies independent thoughts or what is even
considered an independent thought? Then if the definition given
in the claim 1(a)(3) is used, wherein the creative binary
independent concept and its respective mirror predicates such
that conjunction of mirror predicates describe said property and
generating for each of said one or more creative binary
independent concepts a set comprising only each of said one or
more creative binary independent concepts. This is not a clear
definition of what a creative binary independent concept is as
states a creative binary independent concept is composed of a
set of only each of said creative binary independent concepts. It
is not clear if the claim is saying that creative binary
independent concepts are a junction of mirror predicates,
wherein each mirror predicates are not defined in the
specification or claims. Thus it not clear how a user or
computer system would identify them in a document and there
is no directions or examples on how to do such. Without having
clear directions or examples on what the terms mean and how
to identify them the user is again left to try and figure out what
each mean and how to identify them on their own and this
would constitute undue experimentation.

Answer 7–8. Appellant states that the term Binary Independent Concept
(BID) “identifies the knowledge representation of a concept” and that the
term binary merely means it is either true or false. Appeal Br. 15 (citing
Spec. p. 8, ll. 13–14). Appellant states that a compound concept is a
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conjunction of several binary independent concepts and that a set of
concatenations are a series of things connected or linked. Id (citing Spec. p.
65). Further, Appellant states:
With respect to “predicates,” Appellant notes that only
predicates can be combined by logical operations. The reason
why concepts are transformed into their respective predicates is
that only predicates can be (dis)aggregated by logical
operations whereas concepts can consist of terms which are not
open for logical operations. With respect to the term “mirror
predicate,” a mirror predicate can be interpreted as the First
Order Logic (“FOL”) form of the respective concept. See page
62, first paragraph and page 65, section 2. This implies that
binary concepts and mirror predicates are interchangeable. See
page 65, section 2.

Appeal Br. 16. Additionally, Appellant states that “the present specification
clearly describes each of the terms and abbreviations used in the claimed
invention” and that Appellant submitted an index of terms in a response filed
August 20, 2013. Reply Br. 3–4.
Appellant’s arguments have not persuaded us the Examiner erred in
concluding that the limitations in (a)3) of claims 1 and 11 are not enabled.
Claim 1 recites “creating further subject matter.. comprising (a) identifying
disclosure document items … as being … 3) one or more creative binary
independent concepts and their respective mirror predicates such that a
conjunction of said mirror predicates describes a property ” Independent
claim 11 recites a similar limitation. Appellant’s response provides an
explanation of what the terms “creative binary independent concepts”,
compound concepts and mirror predicates represent. However, the
Examiner’s rejection is that the Specification does not provide a guide as to
how a user or the system would identify these concepts as there “is no
directions or examples on how to do such.” Further, as with limitations (a)1)
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and (a)2) disused above in the “Summary of the claimed subject matter”
section of the Appeal Brief cites to Figures 5(a)-(f) and page 26 line 14
through page 28, line 14 to provide support for limitation (a)30. Appeal Br.
4. As discussed above Figures 5(a)–(f) depict linkages between items in
boxes. Pages 26 through 28 of the Specification do not discuss or provide
examples of how the user or the system would identify these concepts. As
such, with respect to the third example we concur with the Examiner that the
Specification does not provide a disclosure as to how make or use the
invention claimed.
In the fourth example, the Examiner, referring to claims 28 and 30
finds the claims have the term “legally justifies” which is “not defined in
the specification as to how one goes about determining if something is
‘legally justified’ or what is required for something to be ‘legally justified.’”
Answer 6.
Appellant has not addressed this example in either the Appeal Brief or
the Reply Brief and thus has not persuaded us of error in the Examiner’s
enablement rejection as to fourth example.
With respect to all of the Enablement rejections, Appellant argues that
the Examiner has not considered any of the Wands Factors but rather merely
reached the conclusion that the disclosure does not satisfy the Enablement
requirement. Reply Br. 2–3 (citing In re Wands, 858 F.2d 731, 737 (Fed.
Cir. 1988)). We are not persuaded of error by this argument, the test for
compliance with the enablement requirement under 35 U.S.C. § 112 first
paragraph is whether the disclosure, as filed, is sufficiently complete to
enable one of ordinary skill in the art to make and use the claimed invention
without undue experimentation. In re Wands, 858 F.2d at 737. The court in
In re Wands set forth eight factors to be considered to evaluate whether a
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disclosure would require undue experimentation. Id. However the
Examiner need not discuss each Wands factor. See MPEP § 2164.01(a) (see
also In Re Hills, 484 Fed. Appx 491, 495 (Fed. Cir. 2012) (nonprecedential)
sustaining a rejection when “both the examiner’s analysis and the Board’s
analysis were based on the factors most relevant to this case, that is, the lack
of “direction or guidance presented” by the inventor, and the “absence of
working examples” sufficient to connect the discussed theory to the recited
claims”). Here as discussed above we addressed four examples of claim
limitations which the Examiner found not to be enabled. In discussing each
of these examples the Examiner considered the amount of direction provided
by the inventor and the existence of examples provided by Appellant. These
are two of the factors set forth Wands. In re Wands, 858 F.2d at 737. Thus,
Appellant has not persuaded us the Examiner erred by not considered any of
the Wands Factors. As Appellant’s arguments have not persuaded us of
error in the Examiner’s enablement rejection of independent claims 1 and
11, we sustain the Examiner’s rejection for lack of enablement under 35
U.S.C. § 112, first paragraph, of independent claims 1, 11 and claims 2
through 10, 12 through 30 which depend upon claims 1 and 11.

Rejection based upon 35 U.S.C. § 112second paragraph
The Examiner concludes that the terms “mark-up items”, “legal item”,
“element”, “a property”, “one or more creative binary independent
concepts”, “compounds (‘I.CT’)”, “a set of one or more concatenations”,
“predicate: and “mirror predicates” render claims 1 through 30 indefinite as
it is unclear what the terms mean and encompass. Final Act. 4–5. Further,
the Examiner concludes that the recitation in claims 8 and 18 that at least
one or more normally interactively performed steps a–k are performed
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automatically, is ambiguous. Final Act. 5. The Examiner reasons that the as
“preamble of the claim states it is a computer-implemented method for use
by an expert system that performs all of steps a-k. For this reason it is not
clear which or if any of steps a-k are performed by a user.” Id.
Appellant argues the Examiner’s rejection is improper as:
Each of the technical terms and acronyms appearing in
the claims are fully disclosed and enabled either in the present
specification or in the applications incorporated by reference
into the present application. It is further noted that claim
language must be interpreted in conjunction with the
specification, and not in a vacuum. Thus, it is not necessary for
the claims to repeat definitions of acronyms and terms that are
fully defined in the specification. Instead, the specification must
be referred to when reading and interpreting such terms.

Appeal Br. 14. Appellant argues that the term “marked up items”, that
services such as PE2E performs mark ups and that “‘marking up’ constitutes
a textual analysis of a document.” Appeal Br. 14 (citing Spec. p. 6, ll. 12–
16). With respect to the term “legal item” Appellant argues that the term is
defined to be content text document marked-up item and as an item that is
“stating the lawfulness of the disclosure.” Appeal Br. 15 (citing Spec. page
6, l. 8). Appellant argues that the term “element” is “defined as being a
keyword of the claim's wording.” Appeal Br. 15 (citing Spec. 41). The term
“a property” is defined in Application 13/608,543 and Appellant’s
Specification as describing an element. Appeal Br. 15 (citing Spec. p. 22, 1.
35, and p. 30, ll. 27–28). With respect to the term “Binary independent
concept,” Appellant asserts that the term “identifies the knowledge
representation of a concept” and that binary identifies it as true of false.
Appeal Br. 15 (citing Spec. p. 8, ll. 13-14). With respect to the term “a set of
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concatenations,” Appellant asserts that it relates to a series of things
connected or linked together. Appeal Br. 15–16. With respect to predicates,
Appellant states:
only predicates can be combined by logical operations. The
reason why concepts are transformed into their respective
predicates is that only predicates can be (dis)aggregated by
logical operations whereas concepts can consist of terms which
are not open for logical operations. With respect to the term
“mirror predicate,” a mirror predicate can be interpreted as the
First Order Logic (“FOL”) form of the respective concept. See
page 62, first paragraph and page 65, section 2. This implies
that binary concepts and mirror predicates are interchangeable.
See page 65, section 2.
Appeal Br. 16.
At the outset we note that Appellant has not addressed the Examiner’s
rejection of claims 8 and 18 under 35 U.S.C. § 112, second paragraph as
there is an ambiguity as to whether steps are performed by a user or an
expert system. As such Appellant has not apprised us of an error in this
rejection and we sustain this rejection of claims 8 and 18 pro forma.
Further, we recognize that Appellant argues in the Reply Brief that an
index of terms was submitted in a prior response which was not addressed
by the Examiner. We have not considered these arguments in the Reply
Brief, as: a) in accordance with 37 C.F.R. § 41.37 (iv) arguments (i.e. the
index) not submitted in the Briefs will not be considered and b) these
arguments in the Reply Brief could have been presented in the Appeal Brief,
and are not prompted by the Examiner’s Answer, and are not based on any
new arguments or grounds of rejection in the Examiner’s Answer. As a
result, Appellant has waived these untimely arguments because Appellant
has not shown good cause for belatedly raising the new argument. See 37
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C.F.R. § 41.41(b)(2).
The Examiner provides a detailed response on pages 10 through 14 of
the Answer. We address each of the elements in the order presented.
With respect to the term “mark-up items” the Examiner cites to the
disclosure US Patent application 13/608,543 (which is incorporated by
reference in the current application) and states:
These two paragraphs would indicate to the examiner that the
task of textual analysis is performed by a user as the technology
is not developed far enough to do what is required by the FSTP
expert system. As such when it comes to user marking up
subject matter items and legal items due to lack of definition
from the specification, the metes and bounds of the “mark-up
items” are unclear and could mean so many different things.
Answer 11. We concur with the Examiner that the use of the term “mark-up
items” renders the claim indefinite. The Office “determines the scope of
claims . . . not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction ‘in light of the specification as
it would be interpreted by one of ordinary skill in the art.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). Applying the broadest
reasonable interpretation of a claim, then, the Office establishes a prima
facie case of indefiniteness with a rejection explaining how the metes and
bounds of a pending claim are not clear because the claim contains words or
phrases whose meaning is unclear. See In re Packard, 751 F.3d 1307, 1310
(Fed. Cir. 2014).
Here, claims 1 and 11, recite receiving a disclosure document and
therein a claim with disclosure document marked-up items; receiving a set of
prior art documents with prior art document mark-up items; and receiving a
context document … wherein the context document marked-up items are
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called legal items; and several steps of generating marked-up items. Thus,
the claims recite mark-ups as something in a document and as something
that can be generated from documents. We concur with the Examiner that
the Specification provides no definition of the term mark-us that can be used
to determine the scope of what a mark–up is. Appellant’s argument on page
14 of the Brief, that the mark-up constitutes a textual analysis of the
document is unavailing as a textual analysis as it gives no indication of what
type of textual analysis it represents. Accordingly, Appellant’s have not
persuaded us of error in the Examiner’s conclusion that the limitation
“mark–up” renders the claims indefinite.
With respect to the term “mark-up items” the Examiner considers the
claims to be indefinite as “it is unclear as to what the bounds of a legal item
are and what makes the technical teaching lawful.” Answer 10–11. We
concur with the Examiner. Claims 1 and 11 identifies that some mark-up
items are “legal items.” As discussed above we concur with the Examiner
that the recitation of mark-up items is ambiguous. We do not find that
Appellant’s proffered definition of a “legal items”, “stating the lawfulness of
the disclosure” to provide an objective measure as to what a legal item (i.e.
we do not consider to define the bounds of the limitation) and as such we do
not consider the use of the term “legal item” to be definite or to make the
recitation of a mark-up item any less indefinite. Accordingly, Appellant’s
arguments have not persuaded us of error in the Examiner’s conclusion that
the limitation “legal items” renders the claims indefinite.
With respect to the term “element” the Examiner considers the claims
to be indefinite, as defining the term “element” as a keyword, does not make
the claims definite as there is no explanation in the Specification as to what
makes a word a keyword. Answer 11–12 (citing Spec. p. 41). Further, the
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Examiner identifies that considering an element as something that has a
property is also unclear, as it is not clear if “element are words used in the
claims, or if properties are the sets of words used in the claims. If it is the
words in the claims being properties, how is this different from element
which is keywords used in the claims? As such it is still not clear and thus
indefinite what properties are.” Answer 12 (citing Specification p. 22, 35,
and p. 30, ll. 27–28). We concur with the Examiner. Claims 1 and 11 recite
identifying an element as being a keyword of the claims wording, and a
further step of generating a set of mark-up items disclosing a set’s element.
As discussed supra, Appellant’s Specification does not describe the process,
algorithm or criteria applied to identify or determine a keyword and as such
we do not find that the Specification provide a guide as to the bounds of the
term keyword, and defining an element as a keyword suffers the similar
problem. Thus, we are not persuaded by Appellant’s argument that the term
“element” is a keyword. Appeal Br. 15. Further, Appellant’s argument that
a “property” is describing an “element” is not persuasive of error as it is not
understood how a word can have a property. Therefore Appellant has not
persuaded us the Examiner of error in the Examiner’s conclusion that the
limitation “an element” and “a property” renders the claims indefinite.
Appeal Br. 15.
With respect to the term “creative binary independent concepts” the
Examiner considers the claims to be indefinite as:
The Examiner understands that “binary independent concept”
and/or “elementary binary independent concept” means
“independent thoughts” embodied in an invention. It is
uncertain what constitutes an independent thought. Then if the
definition given in the claim 1(a)(3) is used, wherein the
creative binary independent concept and it respective mirror
predicates such that conjunction of mirror predicates describe
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said property and generating for each of said one or more
creative binary independent concepts a set comprising only
each of said one or more creative binary independent concepts.
This is not a clear definition of what a creative binary
independent concept is as states a creative binary independent
concept is composed of a set of only each of said creative
binary independent concepts. It is not clear if the claim is
saying that creative binary independent concepts are a junction
of mirror predicates, wherein each mirror predicates are not
defined in the specification or claims.
Answer 12–13 (citing Spec. p. 22 and p. 30).
Appellant’s explanation, on page 15 of the Brief, of the term binary
independent concept as representing a knowledge of a concept, in binary
terms has not persuaded us of error in the Examiner’s rejection. Independent
claims 1 and 11 recites step (a) 3 of creating subject matter and legal items
by identifying disclosure items as one or more creative binary independent
concepts. We concur with the Examiner that there is no clear definition to
determine the bounds of the term “creative binary independent concepts”
and we are not persuaded of error in the Examiner’s conclusion that the
limitation “an element” and “a property” renders the claims indefinite.

With respect to the term “compounds” the Examiner considers the
claims to be indefinite “compound from the context document marked up
item justifying by legal statements, but it is still remains uncertain on legal
statements, independent thoughts, marked-up items are and which form
compounds and as such compounds are found to be uncertain also.” Answer
13.
Appellant’s arguments that the compound is an aggregation of
concepts is not persuasive of error in the Examiner’s rejection. Appeal Br.
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15. Each of the independent claims 1 and 11, recites creating subject matter
and legal items by identifying a disclosed compound property, and several
steps generating compounds from the context document marked-up items.
Thus, the claimed compounds are of mark-up items which as discussed
above, are indefinite. Thus, for the reasons discussed above with respect to
the claimed mark-up items, we consider the claimed compound mark-up
items to be indefinite and we sustain the Examiner’s conclusion that the
limitation “compounds” renders the claims indefinite.
With respect to the term “a set of concatenation” the Examiner
considers the claims to be indefinite as it is the not clear what is being
concatenated. Answer 13. Each of the independent claims 1 and 11 recites
generating for sets generated in the prior steps (a)-(i), a set of one or more
concatenations. The prior steps (a) through (i) include steps of identifying
elements, generating mark-up items and thus the concatenation is of items
that as discussed above are ambiguous. Thus, for the reasons discussed
above with respect to the claimed elements and mark-up items, we consider
the claimed compound mark-up items to be indefinite and we sustain the
Examiner’s conclusion that the limitation “compounds” renders the claims
indefinite.
As Appellant’s arguments have not persuaded us of error in the
Examiner’s indefiniteness of independent claims 1 and 11, we sustain the
Examiner’s rejection of independent claims 1, 11 and claims 2 through 10,
12 through 30 which depend upon claims 1 and 11.

Rejection of claims 1 through 30 under 35 U.S.C. § 103
As discussed above sustain the Examiner’s rejection of claims 1
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through 30 as being indefinite, thus to consider the Examiner’s rejection
would require speculation as to the scope of the claims. Our reviewing court
has said that it is wrong to rely upon speculative assumptions as to the
meaning of claims when considering a rejection over prior art. In re Steele,
305 F.2d 859, 863 (CCPA 1962). Accordingly, we do not sustain the
Examiner’s rejections of claims 1 through 30 under 35 U.S.C. § 103(a),
because ascertaining the scope of the claims would require speculation on
our part. We decline to engage in speculation.
DECISION
In summary:
Claim
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–30 112(first
paragraph)
Enablement 1–30
1–30 112(second
paragraph)
Indefinites 1–30
1, 5–11, 15–
20
103(a) Szygenda, MPEP 1, 5–11,
15–20
2-4, 12-14,
22–30
103(a) Szygenda, MPEP
Buckley
2-4, 12-14,
22–30
21 103(a) Szygenda, MPEP,
Charlesworth
21
Overall
Outcome
1–30

Because we have sustained at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s rejection. See
37 C.F.R. § 41.50(a)(1).
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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.
§ 1.136(a)(1)(iv) (2018).
AFFIRMED