Ex Parte Angell et al

Patent Trial and Appeal Board

Jun 27, 2016

11281291 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111281,291 11117/2005 Robert L. Angell
45095 7590 06/29/2016
HOFFMAN WARNICK LLC
540 Broadway
4th Floor
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CHA9200500l6US1 1395
EXAMINER
VY,HUNGT
ALBANY, NY 12207 ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT L. ANGELL, STEPHEN K. BOYER,
JAMES W. COOPER, RICHARD A. HENNESSY, TAP AS KANUNGO,
JEFFREY T. KREULEN, DAVID C. MARTIN, JAMES J. RHODES,
W. SCOTT SP ANGLER, and HERSCHEL J.R. WEINTRAUB
Appeal2015-002000
Application 11/281,291 1
Technology Center 2100
Before ROBERT E. NAPPI, LINZY T. McCARTNEY, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 2, 6, 8, 11, 12, 16, 18, 21, and 27.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 1.
Appeal2015-002000
Application 11/281,291
THE CLAIMED INVENTION
Appellants' claimed invention relates to using text analytics on a
technical reference to identify a set of related references, and providing a
ranking of the set of related documents and/ or associated
metadata/structured information. See Spec. i-fi-f l, 23. Claim 1 is illustrative
of the subject matter of the appeal and is reproduced below with emphasis
added to highlight the dispositive disputed limitation.
1. A document processing system, comprising:
a textual analytics system that analyzes unstructured data
contained in a source document to generate a set of structured
information about the source document and extracts the set of
structured information about the source document;
a compare system that identifies and aggregates a set of
documents related to the source document by comparing the set
of structured information with metadata stored in a metadata
database, wherein the metadata stored in the metadata database
is indexed from a set of technical reference publications,
wherein a technical reference publication is identified as
related to the source document and added to the set of
documents related to the source document when the set of
structured information extracted from the source document
matches an associated metadata of the technical reference
publication;
an annotation system for annotating the source document,
wherein the annotation system annotates the source document
with the structured information extracted from the source
document, and wherein the annotation system further annotates
the source document with metadata associated with each
technical reference publication in the set of related documents;
and
a ranking system for ranking the metadata in the
annotated source document,
wherein in a case in which more than one technical
reference in the set of related documents is associated with a
2
Appeal2015-002000
Application 11/281,291
piece of metadata, the piece of metadata is assigned a higher
rank of importance relative to a piece of metadata which is
associated with fewer technical references in the set of related
documents.
REJECTION ON APPEAL 2
The Examiner rejected claims 1, 2, 6, 8, 11, 12, 16, 18, 21, and 27
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Short et al. (US 2004/0117405 Al; June 17, 2004) (hereinafter "Short"),
Zeng et al. (US 2005/0234952 Al; Oct. 20, 2005) (hereinafter "Zeng"), and
Liang (US 2005/0160107 Al; July 21, 2005), collectively referred to as the
"combination."
DISPOSITIVE ISSUE ON APPEAL
For this appeal, the dispositive issue is whether the Examiner erred in
finding the combination teaches or suggests "a ranking system for ranking
the metadata in the annotated source document, wherein in a case in which
more than one technical reference in the set of related documents is
associated with a piece of metadata, the piece of metadata is assigned a
higher rank of importance relative to a piece of metadata which is associated
with fewer technical references in the set of related documents," as recited in
claim 1 and similarly recited in claims 11, 21, and 27.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
contentions that the Examiner erred. We find Appellants' arguments with
2 The Examiner withdrew the rejection of claims 1, 11, 21, and 2 7 under 3 5
U.S.C. § 112, first paragraph. Ans. 2.
3
Appeal2015-002000
Application 11/281,291
respect to the dispositive issue persuasive.
Appellants argue the combination, and Liang in particular, fails to
teach or suggest this disputed limitation of claim 1. App. Br. 15; Reply Br.
2--4. Specifically, Appellants argue Liang instead teaches ranking an index
page, which may have different ranks for each category or subcategory. See
id. (citing Liang i-f 73). According to Appellants, "[ n ]owhere does Liang
teach ranking metadata at all." Id. Appellants thus contend Liang fails to
teach ranking metadata and assigning a piece of metadata a higher rank of
importance relative to a piece of metadata which is associated with fewer
technical references in the set of related documents, as required by claim 1.
Id.; Reply Br. 3.
The Examiner finds Liang teaches the disputed limitation. Ans. 3--4.
The Examiner finds Liang teaches rankings of an indexed page can differ for
different categories or subcategories because different indexed pages may be
contained in the search results of each category or subcategory. Ans. 4
(citing Liang i-f 73). The Examiner also finds the Specification teaches
"categories" of references and/or metadata that are deemed more important
than others can be ranked. Id. (citing Spec. i-fi-1 30, 32). The Examiner thus
finds Liang teaches the disputed limitation.
In addition, the Examiner also finds Liang teaches providing "a user
interface to allow the user to change the ranking criteria or ranking formula.
Such a user interface may further display names of or links to the first set of
categories, and names of or links to files [in] highest ranked categories as a
default." Ans. 4 (citing Liang i-f 66). The Examiner then finds rankings of
the links can be based on link popularity of categories and subcategories.
4
Appeal2015-002000
Application 11/281,291
Ans. 4 (citing Liang iii! 66, 70, 72-73). The Examiner again thus finds
Liang teaches the disputed limitation. Id.
We find Appellants' arguments persuasive. We agree with Appellants
that the cited portions of Liang fail to teach or suggest the disputed
limitation. Liang teaches ranking categories (groups of matching files) on
multiple dimensions - such as link popularity, the number of words related
to a topic, etc. See Liang iii! 66, 70, 72-73. In contrast, the claims require
ranking of metadata. See, e.g., App. Br. 22 (reciting claim 1 ). Furthermore,
Liang fails to teach ranking values within a dimension based on the number
of files in the category. Liang iii! 66, 70, 72-73. Accordingly, we do not
sustain the rejection of claim 1, nor claims 11, 21, and 27, which similarly
recite the disputed limitation, as well as claims 2, 6, 8, 12, 16, and 18, which
depend therefrom, and, thus, also incorporate this limitation.
DECISION3
We reverse the Examiner's§ 103 rejection of claims 1, 2, 6, 8, 11, 12,
16, 18, 21, and 27.
REVERSED
3 Appellants raise the Examiner's comments regarding 35 U.S.C. § 101. See
App. Br. 9-12; Reply Br. 6-7. Such comments are not before the Board
because the Examiner's comments do not amount to a rejection of the claims
under 35 U.S.C. § 101. See Ans. 2-3 (noting that there are no§ 101
rejections). Review of the comments is accomplished via petition to the
Director under 3 7 C.F .R. § 1.181, not by appeal to the Board. See Ex parte
Frye, 94 USPQ2d 1072, 1077-78 (BPAI 2010) (precedential).
5