2020001731 (P.T.A.B. Jul. 2, 2021)

LEXISNEXIS, A DIVISION OF REED ELSEVIER INC.

Patent Trials and Appeals BoardJul 2, 2021

2020001731 (P.T.A.B. Jul. 2, 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. 13/770,198 02/19/2013 John Alexander Dalessio 31547-173 / LEN0046PA 3221 146524 7590 07/02/2021 Dinsmore & Shohl LLP 255 E. Fifth Street Suite 1900 Cincinnati, OH 45202 EXAMINER HEFFERN, JAMES E ART UNIT PAPER NUMBER 2158 NOTIFICATION DATE DELIVERY MODE 07/02/2021 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): CincyPAIR@dinsmore.com elise.merkel@dinsmore.com jennifer.baker@dinsmore.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN ALEXANDER DALESSIO, GAURAV MEHRA, SANJAY SHARMA, MAHESH PENDYALA, and RAMJI SREENIVASAN Appeal 2020-001731 Application 13/770,198 Technology Center 2100 ____________ Before DENISE M. POTHIER, JOHN A. EVANS, and TERRENCE W. McMILLIN, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge EVANS. Opinion Concurring filed by Administrative Patent Judge POTHIER. EVANS, Administrative Patent Judge. DECISION ON APPEAL1 Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final decision to reject Claims 1–3, 6, 7, 9, 10, and 13–25. Appeal Br. 15– 21 (Claims App’x.). We have jurisdiction under 35 U.S.C. § 6. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies LexisNexis, A Division of Reed Elsevier Inc., as the real party in interest. Appeal Br. 2. Appeal 2020-001731 Application 13/770,198 2 We AFFIRM.2 STATEMENT OF THE CASE CLAIMED SUBJECT MATTER The claims relate to “[s]ystems and methods for ranking a plurality of documents based on user activity.” Abstract. PRIOR DECISION. On October 30, 2017, the present Panel of the Board rendered a Decision in Appeal 2016-007899, affirming the Examiner’s rejections of prior claims in this Application. CLAIMS Claims 1, 15, and 18 are independent. Claim 1 is illustrative and reproduced below: 1. A method for ranking a plurality of documents based on user activity, the method comprising: receiving, automatically by a computer, first user activity data indicative of a first user activity and second user activity data indicative of a second user activity, wherein a first user activity point value is associated with the first user activity and a second user activity point value is associated with the second user activity; identifying a first data item including at least one of one or more search terms based on the first user activity data; identifying a second data item including at least one of the one or more search terms based on the second user activity data; 2 Throughout this Decision, we refer to the Appeal Brief filed August 14, 2019 (“Appeal Br.”); the Reply Brief filed January 3, 2020 (“Reply Br.”); the Final Office Action mailed January 17, 2019 (“Final Act.”); the Examiner’s Answer mailed November 6, 2019 (“Ans.”); and the Specification filed February 19, 2013 (“Spec.”). Appeal 2020-001731 Application 13/770,198 3 updating a first score of the first data item based on the first user activity point value; updating a second score of the second data item based on the second user activity point value; summing the first user activity point value and the second user activity point value to obtain an aggregate user activity point value; determining whether the aggregate user activity point value exceeds an activation threshold; and in response to determining that the aggregate user activity point value exceeds the activation threshold, activating a research assistant tool to (i) identify the plurality of documents based on the first data item and the second data item; and (ii) rank the plurality of documents based on the first score and the second score such that the plurality of documents are only identified and ranked when the aggregate user activity point value exceeds the activation threshold. PRIOR ART Name3 Reference Date Dumais US 2007/0016553 A1 Jan. 18, 2007 Acharya US 2007/0094255 A1 Apr. 26, 2007 Pedersen US 2007/0130145 A1 June. 7, 2007 Sisk US 2008/0195596 A1 Aug. 14, 2008 Yang US 2009/0024605 A1 Jan. 22, 2009 Dean US 7,716,225 B1 May 11, 2010 Zhang US 2010/0268708 A1 Oct. 21, 2010 Lu US 2010/0332520 A1 Dec. 30, 2010 Sinha US 2012/0296919 A1 Nov. 22, 2012 McDonnell US 8,972,391 B1 Mar. 3, 2015 3 All citations herein to the references are by reference to the first named inventor/author only. Appeal 2020-001731 Application 13/770,198 4 REJECTION4 AT ISSUE5 1. Claims 1, 2, 10, 15, 18, 19, 24, and 25 stand rejected under pre- AIA 35 U.S.C. § 103(a) as obvious over Pedersen, Dean, and McDonnell. Final Act. 4–14. 2. Claims 3, 17, and 20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over Pedersen, Dean, McDonnell, and Zhang. Final Act. 14–15. 3. Claim 9 stands rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over Pedersen, Dean, McDonnell, and Acharya. Final Act. 16. 4. Claim 14 stands rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over Pedersen, Dean, McDonnell, Acharya, and Sinha. Final Act. 17–19. 5. Claim 6 stands rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over Pedersen, Dean, McDonnell, Zhang, and Dumais. Final Act. 19–20. 6. Claims 7 and 16 stand rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over Pedersen, Dean, McDonnell, and Yang. Final Act. 20–21. 7. Claim 13 stands rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over Pedersen, Dean, McDonnell, and Sisk. Final Act. 21–23. 4 The present application is being examined under the pre-AIA first to invent provisions. Final Act. 2. 5 The Examiner has withdrawn the rejection of Claims 21–23 under 35 U.S.C. § 112(a) as lacking written description. Ans. 3. Appeal 2020-001731 Application 13/770,198 5 8. Claims 21–23 stand rejected under pre-AIA 35 U.S.C. §103(a) as obvious over Pedersen, Dean, McDonnell, and Lu. Final Act. 23–27. ANALYSIS We have reviewed the rejection of Claims 1–3, 6, 7, 9, 10, and 13–25 in light of Appellant’s arguments that the Examiner erred. We have considered in this Decision only those arguments Appellant actually raised in the Brief. Any other arguments which Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We are not persuaded that Appellant identifies reversible error. Upon consideration of the arguments presented in the Appeal Brief and the Reply Brief, we agree with the Examiner that all the pending claims are unpatentable under 35 U.S.C. § 103. We adopt as our own the findings and reasons set forth in the rejections from which this appeal is taken and in the Examiner’s Answer, to the extent consistent with our analysis below. We provide the following explanation to highlight and address specific arguments and findings primarily for emphasis. We consider Appellant’s arguments as they are presented in the Appeal and Reply Briefs. INDEPENDENT CLAIMS 1 AND 18: OBVIOUS OVER PEDERSEN, DEAN, AND MCDONNELL. Appellant argues the combination of Pedersen, Dean, and McDonnell fails to render obvious independent Claims 1 and 18. Appeal Br. 9–10. Appellant further argues dependent claims 2, 3, 6, 7, 9, 10, 13, 14, 19, 20 Appeal 2020-001731 Application 13/770,198 6 and 23–25 are patentable in view of their dependence from independent Claims 1 or 18.6 Id. at 10. Therefore, we decide the appeal of the § 103 rejections on the basis of Claim 1 and refer to the rejected claims collectively herein as “the claims.” See 37 C.F.R. § 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Claim 1 recites, inter alia, in response to determining that the aggregate user activity point value exceeds the activation threshold, activating a research assistant tool to (i) identify the plurality of documents based on the first data item and the second data item; and (ii) rank the plurality of documents based on the first score and the second score such that the plurality of documents are only identified and ranked when the aggregate user activity point value exceeds the activation threshold. Independent Claim 18 contains commensurate recitations. The Examiner finds the combination of Pedersen and Dean essentially teaches the claims, except failing to teach the limitation quoted immediately above. Final Act. 7–8. The Examiner finds McDonnell in combination with Pederson and Dean teach this limitation. Final Act. 8, 10. Appellant contends McDonnell fails to teach the “activation threshold” aspect of the limitation. Appeal Br. 9. The Examiner finds McDonnell teaches a “threshold” associated with a category relevance score and how it is affected by an “aggregated selection” which meets the claimed “aggregate user activity point value.” Ans. 5 (citing McDonnell, col. 11, ll. 53–64). The Examiner further finds McDonnell discloses 6 Appellant does not traverse the secondary art applied against some of the dependent claims. See. Appeal Br. 10. Appeal 2020-001731 Application 13/770,198 7 the difference between the two rates must be greater than a predefined threshold for the search system to modify the resource’s score. If the difference is greater than the predefined threshold, the search system modifies the score of the resource to reflect the measure of category relevance (e.g., the expected selection rate) of the resource to the given query for the similarly interested search requesters. Id. (quoting McDonnell, col. 8, ll. 38–45). Appellant contends the cited passages of McDonnell fail to teach ranking documents upon a determination that a score exceeds a threshold. Reply Br. 2–3. McDonnell discloses: In some arrangements, the difference between the two rates must be greater than a predefined threshold for the search system to modify the resource’s score. If the difference is greater than the predefined threshold, the search system modifies the score of the resource to reflect the measure of category relevance (e.g., the expected selection rate) of the resource to the given query for the similarly interested search requesters. McDonnell, col. 8, ll. 38–45 (cited by the Examiner, see Ans. 5). We find this fairly suggests that in response to a score exceeding a threshold (e.g., the recited “activation threshold”), the system modifies the score (i.e., “ranks”) of selected documents (e.g., multiple scores), as found by the Examiner. See Ans. 4 (discussing “‘category relevance score” that is “associated with ‘resources’ and the score is adjusted by user interaction with the resources . . . , which is then used in a ranking engine”). In view of the foregoing, we sustain the rejection of Claims 1–3, 6, 7, 9, 10, 13, 14, 18–20 and 23–25. INDEPENDENT CLAIM 15: OBVIOUS OVER PEDERSEN, DEAN, AND MCDONNELL. Appeal 2020-001731 Application 13/770,198 8 Appellant argues the combination of Pedersen, Dean, and McDonnell fails to render obvious independent Claim 15 in view of the recitation: receiving, automatically by a computer, first user activity data indicative of viewing a document . . . wherein a first user activity point value is associated with viewing the document . . . identifying a task to be performed based on the document viewed; identifying the plurality of documents based on the first data item, the second data item, and the identified task to be performed. Appeal Br. 11. The Examiner finds Pedersen discloses: There is practically no limit on how identified user activity can be used to relate or rank documents. FIG. 6 shows a general technique for relating documents based on user activity. A high level event is received 250, for example, an edit-document event. New relations arising from the event, or existing relations affected by the event are, respectively, or7 [sic] created or identified 252. How this is accomplished may depend on the type of user activity. For example, in the case of an edit- document event, existing relations of the edited document might be strengthened if those relations were based on a time or screen proximity event that has not ended. Or, in the case of an activate-document event, a relation with the correspondingly deactivated document may be created or strengthened. The one or more identified 252 relationships are then saved, deleted, or adjusted (strengthened or weakened) 254. Ans. 6 (citing Pedersen, ¶ 39). The Examiner finds this disclosure teaches the claimed recitations. Ans. 7. Appellant argues Claim 15 recites a prospective task, i.e., a task “to be performed,” whereas, Pedersen relates to a prior task, i.e., “previously performed.” Reply Br. 4. 7 This term, “or,” is present in the original, but appears superfluous. Appeal 2020-001731 Application 13/770,198 9 Pedersen discloses: “For example, in the case of an edit-document event, existing relations of the edited document might be strengthened if those relations were based on a time or screen proximity event that has not ended.” Pedersen, ¶ 39. Because Pederson discusses a “screen proximity event that has not ended” (id.), we are not persuaded Pedersen is as temporally-limited as Appellant suggests. In view of the foregoing, we sustain the rejection of Claim 15. CLAIM 21: OBVIOUS OVER PEDERSEN, DEAN, MCDONNELL, AND LU. Claim 21 depends from independent claim 15 and additionally recites, inter alia, “identifying a type of legal document being viewed; determining a legal task to be performed based on the type of legal document being viewed; and identifying the plurality of documents in response to determining the legal task to be performed.” The Examiner finds this limitation is taught by Lu. Final Act. 24. Appellant contends Lu teaches providing associations among legal document clusters, but not identifying a type of legal document and Lu discusses generating legal topics for documents, but not determining a legal task to be performed based on the type of legal document. Appeal Br. 12. The Examiner finds Lu discloses: “identifying one or more legal issues among case-law documents,” thus teaching the claimed “type of document” because “type” is defined broadly in the claim and identifying legal issues in documents would meet the limitations of the claim language for “type of document.” Ans. 7 (citing Lu, ¶ 47). Appellant contends: The mere augmenting of legal searches in Lu, ¶ 0028 does not teach or suggest “determining a user is viewing a legal brief; Appeal 2020-001731 Application 13/770,198 10 identifying a user objective as drafting a brief; and identifying one or more briefs as relevant documents when the user objective is identified as drafting the brief” as recited in each of claims 22-23. Reply Br. 6. Appellant’s Reply fails to address Lu, ¶ 47. Therefore, we are not persuaded the Examiner errs. In view of the foregoing, we sustain the rejection of Claim 21. CLAIMS 22 AND 23: OBVIOUS OVER PEDERSEN, DEAN, MCDONNELL, AND LU. Appellant contends paragraphs 28, 38, and 83 of Lu fail to teach “determining a user is viewing a legal brief; identifying a user objective as drafting a brief; and identifying one or more briefs as relevant documents when the user objective is identified as drafting the brief,” as argued above in connection with Claim 21. Appeal Br. 12–13; Reply Br. 6. The Examiner finds Lu discloses: “[t]he secondary databases may provide, for example, topical treatises, state practice guides, statutes, and/or law review articles to augment searches of case law database.” Ans. 9 (citing Lu, ¶ 28). Claims 22 and 23 further recite, inter alia, “determining a user is viewing a legal brief.” Lu discloses: the system 100 receives another signal generated by the user of access device 130 via communications link 129. This signal is indicative of the user accessing a document from the set of legal documents provided in response to the search request. and further discloses This is done by identifying a set of metadata associated with the accessed or selected document. Appeal 2020-001731 Application 13/770,198 11 Lu, ¶ 38 (cited by the Examiner). We find a person of ordinary skill would understand the metadata would identify the type of legal document, e.g., a brief, which had been accessed. Claims 22 and 23 recite, inter alia, “identifying a user objective as drafting a brief.” Lu discloses: “[l]egal professionals, such as paralegals, judges and lawyers, constantly apply the principle of stare decisis by using legal content to support their arguments and positions.” Lu, ¶ 5. We find a person of ordinary skill would understand that legal professionals “support their arguments and positions” in drafting briefs. Our reviewing court has held that nonfunctional descriptive material cannot lend patentability to an invention that would have otherwise been anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability); King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any new and unobvious functional relationship between the printed matter and the substrate.’”). For example, the present document is an “opinion” drafted by a judge in response, at least, to Appellant’s “briefs.” However, the legal research and relevant legal documents will be substantially the same whether to permit a judge to draft an opinion, or to permit a lawyer to draft a brief. Thus, whereas Claims 22 and 23 recite, inter alia, “identifying a user objective as drafting a brief,” the claimed method will be performed identically whether the user is drafting a brief or an opinion. Similarly, the method will “identify[] one or more briefs as relevant documents [whether] Appeal 2020-001731 Application 13/770,198 12 the user objective is identified as drafting [a] brief,” as claimed, or is identified as drafting an opinion. Because the claimed limitations do not affect the operation of the claimed method, the claimed limitations relate to non-functional descriptive material. Therefore, we agree with the Examiner that prior art Lu implicitly teaches the subject matter of Claims 22 and 23, but more importantly, we find the distinctions urged by Appellant inhere in nonfunctional descriptive material to which we afford no patentable weight. We, therefore, sustain the rejection of Claims 22 and 23. CLAIM 25: OBVIOUS OVER PEDERSEN, DEAN, AND MCDONNELL. Appellant contends the cited references fail to teach or fairly suggest “the first user activity point value is increased or decreased based on a number of search results of the search,” as recited in claim 25. Appeal Br. 13. The Examiner finds McDonnell teaches: [i]n particular, for a given query issued by a particular searcher with inferred categorical interests, the search system 1014 can refer to the search result selections of other searchers who issued the same query or similar queries and were interested in the same categories. The search system 1014 can increase the IR scores of the resources associated with the search results that were preferred by these similarly interested search requesters. Ans. 10 (quoting McDonnell, col. 7, ll. 36–53). Appellants emphasize: McDonnell relates to modifying information retrieval scores based upon noting similarities among users in their queries and their preferences for similar search results, which has nothing to do with having a first user activity point value increased or decreased based on a number of search results of the search, as recited in claim 25” Appeal 2020-001731 Application 13/770,198 13 Reply Br. 7. Appellant appears to allege McDonnell’s disclosure of increasing IR scores relates to an algorithm that differs from Appellant’s intended, but unclaimed algorithm. Claim 25 recites, inter alia, “the first user activity point value starts at an initial value.” The claim does not define the “initial value,” nor does Appellant refer to a Specification definition. Claim 25 further recites, inter alia, “the first user activity point value is increased or decreased based on a number of search results of the search.” The claim fails to define an algorithm by which the point value is either increased or decreased, nor does Appellant refer to a Specification definition. Appellant argues McDonnell’s disclosure of increasing an information retrieval score based on a similarity of user queries and search results fails to teach increasing or decreasing user activity points. However, McDonnell’s system increases or decreases an IR based on the search results that were preferred (e.g., a number of search results) or not preferred (e.g., another number of search results) respectively. McDonnell, col. 7, ll. 36–53, cited in Ans. 10. Also, in view of the lack of specificity in Claim 25, Appellant fails to point out the specific error in the Examiner’s findings in this regard. Appellant merely sets forth a claim recitation and argues: “[c]ontrary to the Examiner’s assertion, the cited portion of McDonnell does not teach or fairly suggest these features of claim 25.” Appeal Br. 14. Appellant does not argue how McDonnell’s disclosure fails to teach the claimed limitation. “A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.” In re Lovin, 652 F.3d 1349, 1351 (2011) (quoting 37 CFR § 41.37(c)(1)(vii)(2007) (“Even with respect to the independent claims, Lovin merely repeated the Appeal 2020-001731 Application 13/770,198 14 claim language and stated that the prior art did not contain those features.”). We are not persuaded the Examiner errs. In view of the foregoing, we sustain the rejection of Claim 25. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 10, 15, 18, 19, 24, 25 103 Pedersen, Dean, McDonnell 1, 2, 10, 15, 18, 19, 24, 25 3, 17, 20 103 Pedersen, Dean, McDonnell, Zhang 3, 17, 20 9 103 Pedersen, Dean, McDonnell, Acharya 9 14 103 Pedersen, Dean, McDonnell, Acharya, Sinha 14 6 103 Pedersen, Dean, McDonnell, Zhang, Dumais 6 7, 16 103 Pedersen, Dean, McDonnell, Yang 7, 16 13 103 Pedersen, Dean, McDonnell, Sisk 13 21–23 103 Pedersen, Dean, McDonnell, Lu 21–23 Overall Outcome 1–3, 6, 7, 9, 10, 13–25 Appeal 2020-001731 Application 13/770,198 15 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Appeal 2020-001731 Application 13/770,198 16 POTHIER, Administrative Patent Judge, concurring. I agree in affirming the rejections of claims 1–3, 6, 7, 9, 10, and 13– 25. However, I write separately concerning the obviousness rejection of claims 22 and 23 based on Pedersen, Dean, McDonnell, and Lu. Final Act. 25–27. Unlike the majority, I do not find it is necessary to determine whether the language in claims 22 and 23 is nonfunctional descriptive material. Claims 22 and 23 both recite “determining a user is viewing a legal brief; identifying a user objective as drafting a brief; and identifying one or more briefs as relevant documents when the user objective is identified as drafting the brief.” Appeal Br. 20 (Claims App.). The Specification provides little explanation of what the steps of “determining a user is viewing a legal brief” and “identifying a user objective as drafting a brief” involve but does state when the first user activity data is indicative of a user viewing a legal brief, the user objective may be identified as drafting a brief. When the user objective is identified as drafting a brief, other briefs may be identified as relevant documents because the user may be looking for additional briefs that may be helpful to the user in drafting a brief. (Spec. ¶ 32) (discussing block 308). The Specification further states: Still referring to block 308, in some embodiments, the server computing device 12b may identify metadata associated with the first user activity and identify the plurality of documents based on the identified metadata. For example, when the first user activity is viewing a court decision document, metadata may be associated with the viewed court decision document, such as a date of the decision, a jurisdiction, a court that issued the decision, a citation of the court decision document, and the Appeal 2020-001731 Application 13/770,198 17 like. In one embodiment in which the first user activity is viewing a court decision document from a particular jurisdiction, the particular jurisdiction may be identified from the metadata associated with the court decision document, and another court decision document associated with the same particular jurisdiction may be identified as one of the plurality of documents. Id. ¶ 33. Thus, in light of the Specification, the steps of “determining a user is viewing a legal brief” and “identifying a user objective as drafting a brief” include generating metadata associated with a user activity (i.e., viewing a legal brief) and identifying that metadata in order to identify further relevant documents (i.e., one or more briefs) as claims 22 and 23 recites. Similarly, Lu discloses generating a signal indicative of a user’s actions, such as viewing a legal document (Lu ¶ 38, cited in Final Act. 26), which at least suggests the step of “determining a user is viewing a legal brief” in claim 22. Lu further states it begins to process the generated signal by identifying a set of metadata associated with the accessed/viewed document, which is then used to pick a cluster of legal documents. Lu ¶ 38. Lu explains the available metadata includes defined headnotes (cases, some administrative decisions and brief) and the document’s jurisdiction (id. ¶ 71, 86) similar to the Specification’s metadata (e.g., Spec. ¶ 33). Thus, in light of the Specification, Lu’s process of identifying the described metadata related to viewing a legal document (e.g., a legal brief) in order to identify further legal documents (e.g., other briefs) at least suggests “identifying a user objective as drafting a brief” and “identifying one or more briefs as relevant documents when the user objective is identified as drafting the brief” as claims 22 and 23 recite. Appeal 2020-001731 Application 13/770,198 18 According, given the record, I would sustain the rejection of Claims 22 and 23 based on Pedersen, Dean, McDonnell, and Lu.