Ex Parte Al-Kofahi et alDownload PDFPatent Trial and Appeal BoardDec 21, 201712806119 (P.T.A.B. Dec. 21, 2017) Copy Citation 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. 12/806,119 08/05/2010 Khalid Al-Kofahi 113027.000066US 1 6613 79804 7590 12/26/2017 Duncan Galloway Egan Greenwald, PLLC 9750 Ormsby Station Road, Suite 210 Louisville, KY 40223 EXAMINER GEBRESENBET, DINKU W ART UNIT PAPER NUMBER 2164 NOTIFICATION DATE DELIVERY MODE 12/26/2017 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): kduncan@dgeglaw.com c arnold @dgeglaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KHALID AL-KOFAHI, MARC NOEL LIGHT, and JOEL AARON HURWITZ Appeal 2017-008064 Application 12/806,119 Technology Center 2100 Before JAMES R. HUGHES, ERIC S. FRAHM, and MATTHEW J. McNEILL, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-008064 Application 12/806,119 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1—33. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ application relates to information retrieval in the context of searching for legal authority or other documents in connection with the delivery of services in the legal, corporate, or other professional sectors. Spec. 11. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A non-transitory computer useable medium having a set of executable code for enabling electronic communications between a word processing program of a client access device and an information services provider system (ISP), the set of executable code comprising: (a) a first set of computer program code for operatively connecting to the word processing program; (b) a second set of computer program code for operatively connecting to the information services provider system; (c) a third set of computer program code for accepting a user search request initiated by a user of the word processing program; (d) a fourth set of computer program code for transmitting the user search request to the information services provider system; (e) a fifth set of computer program code for receiving a set of search results, the set of search results comprising a primary set of case law search results and a secondary set of non-case law 2 Appeal 2017-008064 Application 12/806,119 search results, the primary set of case law search results comprising a first set of case documents, the secondary set of non-case law search results comprising a referencing text document set, the referencing text document set comprising a case law citation set, the case law citation set used to derive a set of referencing text results, and wherein the set of referencing text results comprises a second set of case documents used to supplement the primary set of case law search results; and (f) a sixth set of computer program code for displaying within the word processing program at least a portion of the second set of case documents from the set of referencing text results. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Arumainayagam et al. US 2006/0195430 A1 Aug. 31, 2006 Dahn US 2010/0030749 Al Feb. 4, 2010 REJECTION The Examiner made the following rejection: Claims 1—33 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Arumainayagam and Dahn. ANALYSIS Claims 1—5, 7—12, 14—19, 21—29, 32, and 33 Appellants contend the combination of Arumainayagam and Dahn fails to disclose “code for receiving a set of search results, the set of search results comprising a . . . secondary set of non-case law search results comprising a referencing text document set, the referencing text document 3 Appeal 2017-008064 Application 12/806,119 set comprising a case law citation set, the case law citation set used to derive a set of referencing text results, and wherein the set of referencing text results comprises a second set of case documents used to supplement the primary set of case law search results,” and “code for displaying within the word processing program at least a portion of the second set of case documents from the set of referencing text results,” as recited in claim 1. App. Br. 9-17. Specifically, Appellants argue Dahn does not disclose “a secondary set of non-case law search results used to derive a second set of case documents as claimed.” App. Br. 15—16. According to Appellants, Dahn’s “starter documents are used only as a beginning, a ‘start,’ in identifying the recommended cases. The starter documents and recommended cases are not two distinct sets of results like the first set of case documents and the second set of case documents as claimed.” Reply Br. 3. We are not persuaded by Appellants’ arguments. Dahn discloses an “online information-retrieval (or legal research) system 100.” Dahn 113; Fig. Al. Dahn’s system “identif[ies] a starter set of documents based on the received query” by “executing the query against the primary databases and identifying documents, such as case law documents, that satisfy the query criteria.” Then, Dahn’s system “identif[ies] a larger set of recommended cases (documents) based on the starter set of cases.” Dahn H 31—32. The step of identifying recommended cases includes “searching the metadata databases based on the citations in and to the starter cases, based on secondary legal documents that are associated with the starter cases, legal classes (West KeyNumber classifications) associated with the starter cases, and statutes query to obtain a set of relevant legal classes.” Dahn 132. Thus, Dahn discloses using, for 4 Appeal 2017-008064 Application 12/806,119 example, citations to the starter cases or secondary legal documents associated with the starter cases to determine the further recommended cases, which we find teaches the claim 1 limitation of “the secondary set of non-case law search results comprising a referencing text document set, the referencing text document set comprising a case law citation set, the case law citation set used to derive a set of referencing text results, and wherein the set of referencing text results comprises a second set of case documents used to supplement the primary set of case law search results.” Dahn further discloses “displaying a listing of one or more of the top ranked recommended case law documents” (Dahn 149 ), which we find meets the claim 1 limitation of “code for displaying within the word processing program at least a portion of the second set of case documents.” We are not persuaded by Appellants’ argument that “Dahn does not disclose supplementing case documents (first step) from a primary (case law) set of search results with case documents (second set) derived from a secondary reference (non-case law) set of search results.” App. Br. 15; see also Reply Br. 2—3. Dahn’s Figure A2 shows two distinct steps: step 2030, labeled “IDENTIFY STARTER DOCUMENTS BASED ON QUERY”; and step 2040, labeled “IDENTIFY RECOMMENDED DOCUMENTS BASED ON METADATA.” Moreover, as mentioned above, Dahn teaches identifying the recommended cases by searching metadata databases based on secondary legal documents (i.e., “non-case law”) associated with the starter cases. Dahn 132. We are also not persuaded by Appellants’ argument that combining Dahn with Arumainayagam would not have resulted in the claimed invention, and that no teaching, suggestion, or motivation in the references 5 Appeal 2017-008064 Application 12/806,119 would have led one of ordinary skill in the art to the claimed invention. App. Br. 16—17. In this argument, Appellants do not specifically explain what features of the claimed invention are not taught by the combination of references, aside from those features addressed above with respect to Appellants’ arguments regarding Dahn. Further, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Here, combining Dahn with Arumainayagam, which are both related to performing searches for legal authority, improves Arumainayagam by providing an expanded search for additional cases beyond an initial set of search result cases based on secondary legal sources associated with the initial set of cases. See Dahn 31—32. Appellants have not shown this combination would have been “uniquely challenging or difficult for one of ordinary skill in the art.” Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (2007). We are, therefore, not persuaded the Examiner erred in rejecting claim 1, and claims 2—5, 7—12, 14—19, 21—29, 32, and 33 not specifically argued separately. Claims 6, 13, and 20 Appellants contend the Examiner’s combination fails to disclose “computer program code for combining the set of referencing text results and the primary set of case law results,” as recited in claim 6. We are not persuaded by Appellants’ arguments. 6 Appeal 2017-008064 Application 12/806,119 Dahn teaches, in Figure A3, displaying both the “Sources,” which correspond to Dahn’s starter cases that we find are part of the claimed “primary set of case law results” (see Dahn 135), and other cases corresponding Dahn’s recommended cases that we find meet the claim 6 limitation “the set of referencing text results.” See Dahn 149. We find Dahn’s displaying these groups of cases together discloses the claim 6 limitation “combining the set of referencing text results and the primary set of case law results.” We are, therefore, not persuaded the Examiner erred in rejecting claim 6, and claims 13 and 20 not specifically argued separately. Claim 30 Appellants contend the Examiner’s combination fails to disclose “computer program code adapted to rank with respect to relevancy to data associated with the user search request at least a portion of one or both of the primary set of search results and the set of referencing text results,” as recited in claim 30. We are not persuaded by Appellants’ arguments. In the Answer, the Examiner cites to Dahn’s disclosure of “ranking the recommended cases.” Ans. 14; Dahn 133. We find Dahn’s recommended cases meet the limitation of a “set of referencing text results,” as recited in claim 30. Accordingly, we find Dahn’s ranking of recommended cases discloses the claim 30 limitation of “code adapted to rank ... at least a portion of one or both of the primary set of search results and the set of referencing text results.” Appellants’ Reply Brief does not present specific arguments regarding the Examiner’s reliance on Dahn for the disputed limitation of claim 30. 7 Appeal 2017-008064 Application 12/806,119 We are, therefore, not persuaded the Examiner erred in rejecting claim 30. Claim 31 Appellants contend the Examiner’s combination fails to disclose “computer program code for transmitting for display within a user interface of the word processing program ranked subsets of each of the primary set of search results and the set of referencing text results.” Specifically, Appellants argue “both references are completely void of any teaching related to ranking only a subset of those results.” App. Br. 18—19. We are not persuaded by Appellants’ argument. Dahn discloses identifying the starter cases by first “executing the query against the primary databases and identifying documents, such as case law documents, that satisfy the query criteria,” and then selecting “[a] number of the starter set of documents, for example 2—5, based on relevance to the query.” Dahn 131. Accordingly, Dahn’s starter cases are a ranked subset of the documents that satisfy an initial query, i.e., a ranked subset of “the primary set of search results,” as recited in claim 31. Dahn further discloses displaying “Sources,” which are the starter cases (see Dahn 135), in a results presentation. Dahn, Figure A3. Dahn also discloses “ranking the recommended cases” (Dahn 133) and “displaying a listing of one or more of the top ranked recommended case law documents.” Dahn 149. Accordingly, Dahn discloses displaying a ranked subset of recommended cases, i.e. a ranked subset of “the set of referencing text results,” as recited in claim 31. Thus, we find Dahn discloses transmitting for display “ranked subsets of each of the primary set 8 Appeal 2017-008064 Application 12/806,119 of search results and the set of referencing text results,” as recited in claim 31. We are, therefore, not persuaded the Examiner erred in rejecting claim 31. CONCLUSION The Examiner did not err in rejecting claims 1—33 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner’s decision to reject claims 1—33. 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. § 41.50(f). AFFIRMED 9 Copy with citationCopy as parenthetical citation