Ex Parte Vasey

Patent Trial and Appeal Board

Nov 13, 2013

11669204 (P.T.A.B. Nov. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PHILIP E. VASEY
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Appeal 2011-005652
Application 11/669,204
Technology Center 2100
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Before MAHSHID D. SAADAT, BRUCE R. WINSOR, and
KERRY BEGLEY, Administrative Patent Judges.

BEGLEY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005652
Application 11/669,204

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This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1-11. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b). We reverse.

STATEMENT OF CASE
The disclosed invention is directed to generating a customized
document using master documents, which contain portions of document
content and reference a separate dictionary file. (Abstract; Spec. 1:8-22,
8:1-9.) The dictionary file includes variables, the identities of which
determine whether particular content from the master documents is
incorporated into the customized document. (Abstract; Spec. 1:8-22, 6:21-
7:10, 8:1-9.)
The present application includes claims 1-11, each of which are at
issue on appeal. (App. Br. 2.) Claims 1, 8, 9, and 10 are independent
claims. Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A document generation system including software stored
on a computer-readable medium which, when employed as a
computer component, generates a customised document using a
plurality of master documents, the system comprising:
an interface for receiving input from a user in response to
at least one question;
a dictionary file stored in tangible form, the dictionary
file being referenced by each one of the plurality of master
documents; and
a processor that retrieves the dictionary file referenced by
each one of the master documents, the dictionary file
comprising definitions used in ones of the plurality of master
documents, the definitions including a list of variables which
represent information needed to determine whether
corresponding text is to be included in the customized
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document in order to achieve a specific meaning, the processor
generating the customized document in tangible form based on
the input from the user, text from ones of the master documents,
and the definitions from the dictionary file, by utilizing the user
input to provide the information needed to determine whether
text is to be included in the customized document.

REJECTION AT ISSUE1
Claims 1-11 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Fujimaki, U.S. Publication No. 2008/0005154 A1
(published Jan. 3, 2008) (hereinafter “Fujimaki”) in view of Marques, U.S.
Publication No. 2001/0013047 A1 (published Aug. 9, 2001) (hereinafter
“Marques”). (Ans. 3-12.)

ISSUE
The dispositive issue2 in this appeal is: Did the Examiner err in
rejecting claims 1-11 as obvious under 35 U.S.C. § 103(a) over Fujimaki and

1 Appellant also contests the Examiner’s objection to the Specification
under 35 U.S.C. § 112, paragraph one, as failing to provide proper
antecedent basis for the claimed subject matter. (See App. Br. 17-18; Final
Rejection 2 (May 4, 2010).) Objections are petitionable matters, subject to
review by petition to the Director of the U.S. Patent and Trademark Office
rather than by appeal to this Board. See MPEP § 706.01 (“The practical
difference between a rejection and an objection is that a rejection, involving
the merits of the claim, is subject to review by the [PTAB], while an
objection, if persisted, may be reviewed only by way of petition to the
Director of the USPTO. Similarly, the Board will not hear or decide issues
pertaining to objections . . . which are not properly before the Board.”); id.
§ 1201 (“The Board will not ordinarily hear a question that should be
decided by the Director on petition.”). Because the present objection is a
petitionable matter unrelated to the sole rejection on appeal, it is not before
us.
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Marques because Marques fails to teach or suggest “definitions including a
list of variables which represent information needed to determine whether
corresponding text is to be included in the customized document in order to
achieve a specific meaning,” as recited in independent claims 1, 8, 9, and
10?
ANALYSIS
The Examiner’s Final Rejection finds that Marques, in paragraphs
0020 through 0030, teaches “definitions including a list of variables which
represent information needed to determine whether corresponding text is to
be included in the customized document in order to achieve a specific
meaning,” as recited in independent claims 1, 8, 9, and 10. (Final Rejection
4-5, 7-11; Ans. 5-6, 9-12.) On appeal, Appellant disputes that Marques
teaches “variables” that satisfy the requirements of this limitation. (App. Br.
19; Reply Br. 23-24.) We agree with Appellant’s assertion of error.
The Examiner has not identified, in either the Final Rejection or the
Answer, which item in the document categorization and retrieval system
disclosed in Marques the Examiner finds to correspond with the recited
“variables.” (See Ans. 5-6, 9-12, 14; Final Rejection 4-5, 7-11.) Further,
based on our review, none of the items in the system disclosed in Marques
teach or suggest information necessary to determine whether particular text
must be included in a document “in order to achieve a specific meaning,” as
required of the recited “variables.” See Marques at [57], ¶¶ 0001, 0007-
0010, 0020-0030. Marques’s system merely gathers and returns documents

2 Appellant’s arguments raise additional issues. Because the identified
issue is dispositive, however, we do not reach the additional issues.
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responsive to a particular category or query; it does not create customized
documents achieving “specific meaning[s].” See id.
Accordingly, on this record, we conclude that the Examiner erred in
finding that Marques teaches “definitions including a list of variables which
represent information needed to determine whether corresponding text is to
be included in the customized document in order to achieve a specific
meaning,” as recited in independent claims 1, 8, 9, and 10. We further
conclude that the Examiner has not demonstrated that Marques suggests this
limitation. We therefore do not sustain the rejection of independent claims
1, 8, 9, and 10 and dependent claims 2-7 and 11, which were not separately
argued with particularity.

DECISION
For the foregoing reasons, we reverse the Examiner’s rejection of
claims 1-11 as unpatentable under 35 U.S.C. § 103(a) over Fujimaki in view
of Marques.

REVERSED

msc