Ex Parte Carroll

Patent Trial and Appeal Board

Sep 2, 2014

12125171 (P.T.A.B. Sep. 2, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/125,171 05/22/2008 Martin D. Carroll Carroll 9 4059
46304 7590 09/03/2014
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
EXAMINER
COBY, FRANTZ
ART UNIT PAPER NUMBER
2156
MAIL DATE DELIVERY MODE
09/03/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARTIN D. CARROLL
____________________

Appeal 2012-004653
Application 12/125,171
Technology Center 2100
____________________

Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1–21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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Application 12/125,171
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THE INVENTION
The claims are directed to electronic document processing with
automatic generation of links to cited references. Abst. Claim 1, reproduced
below, is representative of the claimed subject matter:
1. A processor-implemented method comprising the steps of:
detecting a reference citation in a first electronic
document;
processing the reference citation to determine a plurality
of links that provide access to a second electronic document
identified by the reference citation;
selecting at least one of the plurality of links based on
preference information; and
displaying the selected link and at least a portion of the
first electronic document.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lawrence
Rosenoff
US 6,289,342 B1
US 7,003,719 B1
Sep. 11, 2001
Feb. 21, 2006

REJECTIONS1
The Examiner rejected claims 1–21 under 35 U.S.C. § 103(a) as being
unpatentable over Lawrence and Rosenoff. Ans. 4–17.

1 Appellant argues the rejections of independent claims 1, 16 and 19 on the
basis of claim 1 and the rejection of claim 6 separately. Separate
patentability is not argued for claims 2–5, 7–15, 17–18, 20, and 21.
Therefore, based on Appellant’s arguments, we decide the appeal of claims
1–5 and 7–21 based on claim 1 alone, and the appeal of claim 6 separately.
See 37 C.F.R. § 41.37(c)(1)(vii).

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APPELLANT’S CONTENTIONS
1. Rosenoff’s identification of plural sources of a document resulting in
provision of a single URL based on user settings fails to teach or suggest
determining a plurality of links and selecting at least one of the links
based on preference information as required by claim 1. App. Br. 6–7.
2. Because Rosenoff’s library could contain multiple types of documents, a
URL pointing to that library fails to teach a search query restricted to a
particular designated document type as required by claim 6. App. Br. 8.
3. With respect to claim 6, the Examiner’s interpretation of document type
to include a content type (e.g., legal vs. scientific) is improper in view of
usage in the Specification referring to a file format such as PDF. App.
Br. 8–9.

ISSUES ON APPEAL
Based on Appellant’s arguments in the Appeal Brief (App. Br. 5–9),
the issues presented on appeal are:
1. Whether the Examiner erred in finding Rosenoff’s libraries of
documents and respective candidate URLs teach or suggest the plural
links of claim 1 and Rosenoff’s designation of a desired destination of
the URL based on a user setting teaches the selection of one of those
links based on preference information.
2. Whether the Examiner erred in interpreting the document type of
claim 6 to include and thereby be taught by Rosenoff’s database
library of legal documents.

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Application 12/125,171
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Ans. 4–17) and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Appeal Brief (Ans. 17–20) and concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.
Appellant contends “Rosenoff discloses only arrangements which
build one hyperlink for a given citation.” App. Br. 6. Appellant argues
Rosenoff’s “‘desired destination of the URL based on a user setting’ refers to
a location of a library of legal documents (e.g., a CD-ROM library or an
online database library) rather than to a link to any given document.” App.
Br. 7. It is not until the desired destination is specified that Rosenoff’s link-
builder returns a single properly formatted URL to a given legal document.
Id. Therefore, according to Appellant, Rosenoff fails to determine a
plurality of links that provide access to an identified document and selecting
one of the plurality of links based on preference information as recited by
claim 1. Id.
The Examiner responds by finding the link of claim 1 is not limited to
a URL nor must it point directly to a given document. Ans. 18. Instead, the
Examiner finds Rosenoff’s plurality of URL destinations directed to
respective libraries effectively indicate a plurality of candidate links for
accessing a particular legal document. Ans. 17. Then, based on a user
setting, a desired destination of the URL is selected from among the plurality
of URL destinations (i.e., libraries) and a properly formatted URL is
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produced. Ans. 17–18. Because claim 1 only requires the links to “provide
access to [an identified] electronic document” and not a URL directly
addressing the document, the Examiner finds Rosenoff’s disclosure of URL
destinations directed to the respective libraries teaches providing access to
the document as required by claim 1. Id.
We agree with the Examiner and find Appellant’s argument
unpersuasive of error. “[T]he PTO gives claims their ‘broadest reasonable
interpretation.’” In re Bigio, 381 F.3d 1320, 1324, (Fed. Cir. 2004) (quoting
In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). We find reasonable the
Examiner’s interpretation of links to include Rosenoff’s plurality of URL
destinations directed to respective legal document libraries. We also agree
with the Examiner the recitation “provide access” does not require directly
linking to a given document but can also include providing links or pointers
to locations (e.g., libraries) that contain the document. Therefore, we find
Appellant’s contention 1 unpersuasive of Examiner error. Accordingly, we
sustain the rejection of independent claim 1 and, for similar reasons, the
rejection of independent claims 16 and 19 under 35 U.S.C. § 103(a) over
Lawrence and Rosenoff together with the rejection of dependent claims 2–5,
7–15, 17–18, 20, and 21 not separately argued.
In connection with claim 6, Appellant contends Rosenoff’s desired
destination of a URL is directed to a library of documents that may contain
documents other than those having a designated content type. App. Br. 8.
Therefore, Appellant argues, Rosenoff’s URL is not restricted and fails to
teach a search query restricted to a particular document type as required by
claim 6. Id.
The Examiner responds by finding a library is restricted to documents
of the type included in the library:
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[E]ven if arguendo a destination of a URL (e.g., www.westdoc.com)
could include both federal case law and Wall Street Journal articles,
the URL still restricts it to a certain type of document which includes
federal case law and Wall Street Journal articles. At a minimum, this
destination of the URL does not give access to other types of
documents, for example, patent publications.
Ans. 19.
We agree with the Examiner. Under a broad but reasonable
interpretation of document type, Rosenoff’s database library that contains
legal documents (Rosenoff col. 14, ll. 42–43) includes a restricted document
type. Therefore, we also agree Rosenoff’s destination of the URL teaches or
suggests a search query restricted to particular designated document type.
We are also not persuaded of error by Appellant’s contention 3. In
particular, we disagree with Appellant that “it is clear [from the
Specification] that ‘document type’ [as recited in claim 6] refers to a format
(e.g., a file format such as PDF), rather than a content type (e.g., legal vs.
scientific), of a document.” App. Br. 9. While Appellant provides citations
to case law supporting limiting claim interpretation, we note:
the mode of claim interpretation that is used by courts in
litigation . . . is not the mode of claim interpretation that is
applicable during prosecution of a pending application before
the PTO. . . . The reason is simply that during patent
prosecution when claims can be amended, ambiguities should be
recognized, scope and breadth of language explored, and
clarification imposed. . . . [T]his way . . . uncertainties of claim
scope [can] be removed, as much as possible, during the
administrative process.

In re Zletz, 893 F.2d 319, 321–22 (Fed. Cir. 1989). See also In re Am. Acad.
of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Taylor, 484 F.
App'x. 540, 543 (Fed Cir. 2012) (non-precedential) (declining to limit claim
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scope during prosecution based on argument). Accordingly, during
examination of a patent application, pending claims are given their broadest
reasonable construction consistent with the specification. Am. Acad., 367
F.3d at 1364; In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969). Because
“applicants may amend claims to narrow their scope, a broad construction
during prosecution creates no unfairness to the applicant or patentee.” In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citing
Am. Acad., 367 F.3d at 1364). Therefore, we find reasonable the Examiner’s
finding that “there is no indication in the Specification that a document type
must be a format type such as PDF” (Ans. 19) and agree with the Examiner
that Rosenoff teaches the disputed limitations of claim 6 (Ans. 20).
Therefore, we sustain the rejection of claim 6 under 35 U.S.C. § 103(a) over
Lawrence and Rosenoff.

CONCLUSIONS
We find:
1. The Examiner did not err in finding Rosenoff’s libraries of documents
and respective candidate URLs teach or suggest the plural links of
claim 1 and Rosenoff’s designation of a desired destination of the
URL based on a user setting teaches selection of one of those links
based on preference information.
2. The Examiner did not err in interpreting the document type of claim 6
to include and thereby be taught by Rosenoff’s database library of
legal documents.
3. The Examiner did not err in rejecting claims 1–21 under 35 U.S.C.
§ 103(a) over Lawrence and Rosenoff.

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DECISION
The Examiner’s decision to reject claims 1– 21 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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