Ex Parte Freisthler et al

Patent Trial and Appeal Board

Nov 22, 2016

13104154 (P.T.A.B. Nov. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/104,154 05/10/2011
24256 7590 11/23/2016
DINSMORE & SHOHL LLP
255 East Fifth Street, Suite 1900
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Andrew Freisthler
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
31547-116/LEN0024PA 1657
EXAMINER
JUNG, SEUNG WOON
ART UNIT PAPER NUMBER
2144
MAILDATE DELIVERY MODE
11/23/2016 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 ANDREW FREISTHLER, MARTIN R. KILMER, MARK
DAVID WASSON, and E. SCOTT WETZEL
Appeal2015-007787
Application 13/104,154
Technology Center 2100
Before ST. JOHN COURTENAY III, MARC S. HOFF, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Invention
The disclosed and claimed invention on appeal generally relates to
"linking electronic items into matters, and particularly to linking electronic
legal documents and other legal and non-legal electronic data." Spec. i-f 2.
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Application 13/104,154
Representative Claim
1. A method for linking items into a matter comprising:
retrieving an electronic document from a source;
determining whether the electronic document is
associated with a predetermined matter;
in response to determining that the electronic document
is associated with the predetermined matter, linking the
electronic document to the predetermined matter, such that
accessing the electronic document will provide access to other
documents linked to the predetermined matter;
[L] in response to determining that the electronic
document is not associated with the predetermined first matter,
create a second matter and link the electronic document to the
second matter, such that accessing the electronic document will
provide other documents linked to the second matter;
receiving a request for the electronic document; and
in response to receiving the request for the electronic
document, providing a user option to provide access to the other
documents linked to the predetermined matter.
(Contested limitation Lis emphasized.)
Rejections
A. Claims 1, 4, 5, 7, 8, 11, 12, 14, 15, 18, and 19 are rejected under
35 U.S.C. § 102(b) as being anticipated by KEMP (US
2009/0144246 Al; published June 4, 2009) (hereinafter, Kemp).
B. Claims 2, 6, 9, 13, 16, and 20 are rejected under 35 U.S.C. § 103(a)
as being obvious over the combined teachings and suggestions of
Kemp in view of van Stegeren et al. (US 2003/0074351 Al;
published Apr. 17, 2003) (hereinafter, Stegeren).
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Application 13/104,154
C. Claims 3, 10, and 17 are rejected under 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of
Kemp, Stegeren, and Hong (US 2008/0201632 Al; published Aug.
21, 2008) (hereinafter, Hong).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We find Appellants' arguments persuasive for at least the reasons
discussed infra. We highlight and address specific findings and arguments
for emphasis in our analysis below.
Rejection A of Independent Claim 1under35 U.S.C. § 102(b)
Issue: Under 35 U.S.C. § 102(b), did the Examiner err in finding the
Kemp reference expressly or inherently describes contested limitation
L, 1 within the meaning of independent claim 1, under a broad but reasonable
interpretation? 2
1 We note that the contested negative limitation L was added by amendment
to claim 1, but was recited in original claim 8 at the time the application was
filed.
2 We give contested claim limitations the broadest reasonable interpretation
consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997); Cf with Spec. i-f 59 ("While particular embodiments have
been illustrated and described herein, it should be understood that various
other changes and modifications may be made without departing from the
spirit and scope of the claimed subject matter. Moreover, although various
aspects of the claimed subject matter have been described herein, such
aspects need not be utilized in combination. It is therefore intended that the
appended claims cover all such changes and modifications that are within
the scope of the claimed subject matter.").
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Application 13/104,154
Regarding independent method claim 1, Appellants contend, inter
alia, that Kemp is different than claim 1:
because normalizing the "matter" and "result" does not involve
creating a new matter. Specifically, nowhere does Kemp even
suggest that a new matter is created. Kemp defines a "matter"
as "a question before the court" (paragraph [0096]). Kemp does
not teach or suggest that a new question before the court is
created in response to a determination that a current electronic
document is not associated with a current question before the
court. However, even if the Examiner is arguing that Kemp's
reference to a "matter" is the same as the "matter" in claim 1
(which is clearly an incorrect assessment), Kemp still does not
create a new "matter" because normalizing a document does
not create anything new. Kemp instead teaches that
normalizing a document alters an existing document. At best,
normalizing a document could create a new document that is
part of the same matter. Creating a new document is different
than creating a new "matter" because a document is still
associated with the same opinion and other organizational
structure as before normalizing. For at least these reasons, the
Office Action fails to establish a proper rejection under 35
U.S.C. § 102(b), which requires explicit or inherent disclosure
of every claim element. Because Kemp fails to provide that
disclosure, claim 1 is allowable.
(App. Br. 7). (Emphasis added).
The Examiner disagrees, and adopts a broader interpretation of the
claim term "predetermined matter" (Ans. 2):
Appellant[s] have not limited "an electronic document" as a
legal document, so "a predetermined matter" could be any
matter associated to the electronic document. In Kemp
reference, i-f [001 OJ describes "associations between documents
may be, e.g., indexed to create a citator ... a citator ... may
record the form and/ or substance of the association ... some or
all of this information may be expressed in standard terms ...
Such standard terms, or "standard expression" ... ". The
"associations" of Kemp reference is comparable to the "matter"
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Application 13/104,154
which language is included in "a predetermined first matter"
and "a second matter" in claim 1. Further, Kemp called the
"matter" or "standard expression" as "Point of Law" or "Points
of Law" (iT [0102]).
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987) (citations omitted). Analysis of whether a claim is
patentable over the prior art under 35 U.S.C. § 102 begins with a
determination of the scope of the claim. We determine the scope of the
claims in patent applications not solely on the basis of the claim language,
but upon giving claims their broadest reasonable construction in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Here, we find no definition of the claim term "matter" in Appellants'
Specification; nor have Appellants argued a particular definition. 3
However, we find that several Merriam-Webster dictionary definitions are
applicable here, in considering how the claim term "matter" would have
been understood to an artisan according to its plain meaning: e.g., (1) a
subject under consideration, (2) a subject of disagreement or litigation, (3)
the events or circumstances of a particular situation, and/or, ( 4) the subject
or substance of a discourse or writing.4
3 Appellants do argue "the term 'matter' as defined in Kemp is different than
the 'matter' as used in claim 1." (App. Br. 7).
4 See 37 C.F.R. § 41.30 regarding dictionaries, "which may be cited before
the Board."
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We note that claim 1 recites, in pertinent part: "determining whether
the electronic document is associated with a predetermined matter; ...
[and] in response to determining that the electronic document is not
associated with the predetermined first matter, create a second matter .... "
(Emphasis added).
We observe dependent claim 6 further limits claim 1: "The method of
claim 1, wherein the electronic document comprises an identifier, wherein
determining whether the electronic document is associated with the
predetermined matter comprises normalizing the identifier and normalizing
a field within the identifier."
In applying the doctrine of claim differentiation, 5 we note that claim 1
is broader than claim 6; however, falling within the scope of Appellants'
claim 1, at least one way of "determining whether the electronic document is
associated with the predetermined matter" (Claim 1) "comprises
normalizing the identifier and normalizing a field within the identifier."
(Claim 6) (Emphasis added).
5 "When different words or phrases are used in separate claims, a difference
in meaning is presumed." Nystrom v. TREX Co., Inc., 424 F.3d 1136, 1143
(Fed. Cir. 2005). Under the doctrine of claim differentiation, "the presence
of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent
claim." Phillips v. AWH Corp, 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en
bane). This presumption is "especially strong when the limitation in dispute
is the only meaningful difference between an independent and dependent
claim, and one party is urging that the limitation in the dependent claim
should be read into the independent claim." SunRace Roots Enterprise Co.,
Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
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As pointed to by the Examiner (Final Act. 6; Ans. 4), Kemp (ii 96)
also describes normalized forms:
In block 368 [Fig. 9], the matter and result of the opinion are
recorded in normalized form according to an embodiment of
the invention. Here, the "matter" may refer to the question
before the court, in response to which the court issued the
opinion, and the "result" may refer to the court's resolution of
that question. Besides finding this information, however, block
368 may in an embodiment of the invention include recording
the information in standard terms. (Emphasis added).
However, Appellants urge, "Kemp is [] different than claim 1 because
normalizing the 'matter' and 'result' does not involve creating a new
matter." (App. Br. 7) (Emphasis added).
We note the distinction between certain claim 1 terms:
"a predetermined matter," and creating "a second matter . .. and link[ing]
the electronic document to the second matter .... " (Emphasis added).
Under a broad but reasonable interpretation, in the former
''predetermined matter," the matter must already exist. In the latter case,
"a second matter" (i.e., a new matter) is created "in response to determining
that the electronic document is not associated with the predetermined [i.e.,
first existing] matter." (Claim 1) (Emphasis added).
One way (but not the only way) of "linking" (or associating) "the
electronic document to the second matter" within the broad scope of claim 1
is by "normalizing," as recited in dependent claim 6.
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Because the Examiner relies on the normalization described in Kemp
(Fig. 9, block 368, i-f 96 6) for anticipating the creation of "a second matter"
(Final Act. 6; claim 1 ), on this record, we are persuaded the Examiner erred,
because we conclude that normalizing is consistent under BRI with linking
or associating an electronic document with an existing matter (see
Appellants' claim 6; Spec. i-f 4 7).
We find the Examiner has not fully developed the record to establish
how Kemp's "normalization" (Kemp, Fig. 9, step 368) creates a new matter,
as argued by Appellants. (App. Br. 7). Because the Examiner has not
established that contested limitation L is expressly or inherently described in
Kemp, we reverse the anticipation rejection of claim 1.
Because contested limitation L is also recited in remaining
independent claims 8 and 15, we reverse anticipation rejection A of claims 8
and 15. Because we have reversed§ 102 rejection A of each independent
claim, we also reverse rejection A of each associated respective dependent
claim (claims 4, 5, 7, 11, 12, 14, 18, and 19).
Rejections B and C
Regarding the remaining claims rejected under § 103 rejections B and
C, we reverse these rejections for the same reasons discussed above with
respect to claim 1, as discussed above. In particular, the Examiner has not
shown how the additionally cited secondary references overcome the
6 Kemp (i-f 96-97) describes normalization, according to one embodiment,
with respect to recording the information using standard terms: "Such
normalization may also include revision of archaic terminology: 'Plaintiff
nonsuit' may, for example, become 'case dismissed."' (Emphasis added).
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aforementioned deficiencies regarding the Kemp reference, as discussed
above regarding anticipation rejection A of the independent claims.
Conclusion
For at least the aforementioned reasons, on this record, we are
persuaded by Appellants' arguments the Examiner erred regarding rejections
A, B, and C, of all claims before us on appeal.
DECISION
We reverse the Examiner's decision rejecting claims 1-20.
REVERSED
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