Ex Parte Al-Kofahi et al

Patent Trial and Appeal Board

Dec 21, 2017

12806119 (P.T.A.B. Dec. 21, 2017)

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
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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
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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
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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
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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.
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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.
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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
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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
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