Ex Parte Howald et al

Patent Trial and Appeal Board

Oct 31, 2018

14460202 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/460,202 08/14/2014 Blake Rowald
25764 7590 11/02/2018
Faegre Baker Daniels LLP
PA TENT DOCKETING - INTELLECTUAL PROPERTY
2200 WELLS FARGO CENTER
90 SOUTH SEVENTH STREET
MINNEAPOLIS, MN 55402-3901
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.
473715.000037 1068
EXAMINER
ALLEN, NICHOLAS E
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
PatentDocketing@FaegreBD.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BLAKE HOW ALD, ISABELLE MOULINIER,
ANDREW MUSHETT, JOHN OHLE, and CHRIS SCHULTZ
Appeal2018-002173
Application 14/460,202 1
Technology Center 2100
Before JEAN R. HOMERE, KARA L. SZPONDOWSKI, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-22, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Technology
The application relates to "legal research" and "associating portions of
advocational documents [ such as legal briefs] with portions of tribunal
decisions in view of common or similar characteristics that are identified
between the associated entities." Spec. ~~ 3, 19.
1 According to Appellants, the real party in interest is Thomson Reuters
Global Resources. App. Br. 2.
Appeal2018-002173
Application 14/460,202
Illustrative Claim
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1. A computer-implemented method for establishing linkages
between an advocational document and a decision, wherein the
advocational document and decision each include a plurality of
portions, the method comprising:
for a selected portion of the advocational document,
identifying one or more ad vocational document items of interest
within the advocational document;
for each of one or more portions of the decision,
identifying one or more decision items of interest;
for each of the one or more portions of the decision,
comparing the one or more items of interest of the selected
portion of the advocational document with the one or more
decision items of interest to generate a plurality of match scores,
wherein each match score is affiliated with one of the portions of
the decision;
determining which of said match scores is a best match
score based upon predetermined criteria;
determining that the best match score is above a pre-
determined threshold; and
associating the selected portion with the portion of the
decision affiliated with the best match score in response to
determining that the best match score is above the pre-
determined threshold.
Rejection
Claims 1-22 stand rejected under 35 U.S.C. § I03(a) as obvious over
the combination of Zhang et al. (US 2012/0054240 Al; Mar. 1, 2012),
Rhoads et al. (US 2006/0248440 Al; Nov. 2, 2006), and Sharma et al. (US
2012/0166425 Al; June 28, 2012). Final Act. 2.
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Application 14/460,202
ISSUES
1. Did the Examiner err in finding Sharma teaches or suggests
"associating the selected portion with the portion of the decision affiliated
with the best match score in response to determining that the best match
score is above the pre-determined threshold," as recited in claim 1?
2. Did the Examiner err in finding the combination of Rhoads and
Sharma teaches or suggests "conveying the entire advocational document to
the requestor upon determining that the at least one portion of one or more
advocational documents associated with the portion of the decision selected
by the requestor exists," as recited in claim 10?
3. Did the Examiner err in finding Rhoads or Sharma teaches or
suggests to "forward to the requestor a list of two or more advocational
documents each having at least one portion associated with the portion of the
decision selected by the requestor," as recited in claim 20?
ANALYSIS
Claims 1 and 14
Claim 1 recites "determining that the best match score is above a pre-
determined threshold" and "associating the selected portion with the portion
of the decision affiliated with the best match score in response to
determining that the best match score is above the pre-determined
threshold." Independent claim 14 recites commensurate limitations.
The Examiner relies upon Sharma for teaching a pre-determined
threshold and the entire "associating" step. Final Act. 5---6. For the
"associating" step, the Examiner quotes Sharma at paragraph 43, which
discusses filtering search results and tracking viewed documents, and
paragraph 38, which discusses the databases that the server can connect to.
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Application 14/460,202
Ans. 7-8. The Examiner then states, "Sharma et al. teaches a document[]
can be various pieces of information which would have been filter[ ed] and
associated to one another using scoring and thresholds." Id. at 8.
Appellants argue that "the filters described in Sharma are unrelated to
determining relevance between documents" and instead "are filters that
apply to search queries-not thresholds relating to determining relevance
between documents or pairing documents." App. Br. 9.
We agree with Appellants that the Examiner has not sufficiently
explained how the relied upon passages of Sharma relate to the "associating"
step. In this case, merely quoting the prior art without tying specific pieces
of those passages to the claim terms at issue is insufficient. For example, the
Examiner fails to explain how Shanna's filter (Ans. 7-8 (citing Sharma
,r 43)) relates to what the Examiner now identifies as Sharma's "pre-
determined threshold" (Ans. 5---6 (citing Sharma ,r 69)).
Accordingly, we do not sustain the Examiner's rejection of
independent claims 1 and 14, and their dependent claims 2-9 and 15-19.
Claim 10
Claim 10 recites "conveying the entire ad vocational document to the
requestor upon determining that the at least one portion of one or more
advocational documents associated with the portion of the decision selected
by the requestor exists."
The Examiner relies upon Rhoads for teaching the claimed condition
("upon determining that the at least one portion of one or more advocational
documents associated with the portion of the decision selected by the
requestor exists"). Final Act. 12. Specifically, the Examiner finds Rhoads
teaches "[t]he results of the search is a list of possible pieces of text from the
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Application 14/460,202
cited case, such as a headnote, which may be assigned to the citation in the
legal case and a belief score for each possible piece of text." Id. ( citing
Rhoads ,r 74).
The Examiner relies upon Sharma for teaching the entire "conveying"
step, stating that "[d]ocument node 230 may also contain a location of the
actual document to enable viewing of the document" and "may also contain
a link to a parent of the document node." Final Act. 12 (citing Sharma ,r 44).
Appellants argue that it is unclear how the Examiner's findings relate
to the claim language in the "conveying" step. App. Br. 10. According to
Appellants, "because paragraph [0044] [ of Sharma] refers to multiple
documents and nodes, it is unclear which documents and nodes the
Examiner reads on Appellant's claim features." Id.
The Examiner does not appear to address claim 10 or Appellants'
argument in the Answer.
We agree with Appellants that the Examiner has not sufficiently tied
the prior art to the claim language. In particular, it is unclear how either
Sharma or Rhoads teaches or suggests doing the "conveying" upon the
claimed condition ("upon determining that the at least one portion of one or
more advocational documents associated with the portion of the decision
selected by the requestor exists").
Accordingly, we do not sustain the Examiner's rejection of claim 10
and its dependent claims 11-13.
Claim 20
Claim 20 recites to "forward to the requestor a list of two or more
advocational documents each having at least one portion associated with the
portion of the decision selected by the requestor."
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Application 14/460,202
In the Final Office Action, the Examiner relies upon Rhoads for this
limitation because Rhoads teaches "[t]he results of the search is a list of
possible pieces of text from the cited case, such as a headnote, which may be
assigned to the citation in the legal case and a belief score for each possible
piece of text." App. Br. 22 (citing Rhoads ,r 74).
Appellants argue that Rhoads "teaches generating results showing
multiple passages from a single document-not passages from multiple
documents" as required by the claim. App. Br. 10-11 (emphasis added).
We agree with Appellants that Rhoads works with a singular
document, not plural. Rhoads ,r 74 (e.g., "within the cited document").
In the Answer, the Examiner quotes from Sharma's paragraph 38,
which discusses the databases that can be used, and paragraph 40, which
discusses some of the hardware that can be used to filter and display the
results. Ans. 9-10. The Examiner then determines that "[ m ]ultiple
documents would have been forwarded depending on a given query." Id. at
10.
Although we agree with the Examiner that Sharma teaches filtering
and displaying multiple search results, nevertheless the Examiner fails to
explain how those search results are "each having at least one portion
associated with the portion of the decision selected by the requestor," as
recited in claim 20. For example, Shanna's filters appear to be based on a
researcher entering a search keyword (e.g., "tract") rather than a researcher
selecting a portion of a decision. See Sharma ,r 43. To the extent the
Examiner seeks to combine Sharma with the other references, the Examiner
has not yet explained such combination.
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Accordingly, we do not sustain the Examiner's rejection of claim 20
and its dependent claims 21 and 22.
DECISION
For the reasons above, we reverse the rejection of claims 1-22.
REVERSED
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