Ex Parte Vasey

Patent Trial and Appeal Board

Aug 24, 2017

10933466 (P.T.A.B. Aug. 24, 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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/933,466 09/03/2004 Philip E. Vasey 760-010 2829
34845 7590 08/28/2017
AnHersinn frorerki T T P
EXAMINER
2 Dundee Park Dr. CHOI, YUK TING
Suite 301A
Andover, MA 01810 ART UNIT PAPER NUMBER
2153
NOTIFICATION DATE DELIVERY MODE
08/28/2017 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):
handerson @ smmalaw.com
cmorrissette@smmalaw.com
jgorecki @ smmalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP E. VASEY
Appeal 2016-003391
Application 10/933,466
Technology Center 2100
Before DENISE M. POTHIER, JEFFREY S. SMITH, and
GLENN J. PERRY, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-003391
Application 10/933,466
STATEMENT OF THE CASE
This is an appeal1 under 35 U.S.C. § 134(a) from the rejection of
claims 22—32 and 46—57, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Illustrative Claim
22. An apparatus comprising:
at least one computer having a document generation
program stored on nontransitory computer-readable media, the
program configured to generate a fully or a partially customised
document from a template that includes:
compulsory content elements;
optional content elements;
rules governing inclusion of optional content elements
based on input information; and
rules governing use of symbol elements based on
evaluation of the rules governing inclusion of optional content
elements, a first rule governing use of a first symbol element
associated uniquely with and applied only to a first optional
content element, and a second rule governing use of the first
symbol element associated uniquely with and applied only to a
second optional content element;
the program configured to use the input information to
evaluate at least some of the rules governing inclusion of
optional content elements and to evaluate at least some of the
rules governing use of symbol elements based on evaluation of
the at least some of the rules governing inclusion of optional
content elements; and
1 We previously affirmed the Examiner’s rejections in this application in
Appeal No. 2010-005182, decided October 29, 2012.
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Appeal 2016-003391
Application 10/933,466
an interface that renders the fully or partially customized
document in tangible form.
Prior Art
Nunberg US 5,111,398 May 5, 1992
Filteau US 2002/0188896 A1 Dec. 12, 2002
Lin et al., Automatic Chinese Text Generation Based on Inference
Trees, Proc. Of ROCLING IV 215-236 (1991) (“Lin”).
Examiner’s Rejections
Claims 22—27, 46-49, and 52—55 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Filteau and Lin.
Claims 28—32, 50, 51, 56, and 57 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Filteau, Lin, and Nunberg.
ANALYSIS
We adopt the findings of fact made by the Examiner in the Final
Action and Examiner’s Answer as our own. We concur with the conclusions
reached by the Examiner for the reasons given in the Examiner’s Answer.
We briefly address Appellants’ arguments from the Reply Brief to complete
the record.
Section 103 rejection of claims 22—27, 46) 49, and 52—55
Appellants contend the Examiner has not established motivation for
including Lin’s punctuation rules program in Filteau’s template program for
generating a medical diagnostic report. Reply Br. 14—17; App. Br. 21—22.
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Appeal 2016-003391
Application 10/933,466
According to Appellants, Filteau does not need punctuation rules, because
the text in Filteau’s templates is already punctuated. Reply Br. 16.
The Examiner finds that a user of Filteau’s templates has to enter
manually a valid statement with correct punctuation elements in the report.
Final Act. 7—8 (citing Filteau | 87). The Examiner further finds including
Lin’s punctuation rules in the template program of Filteau reduces the
burden on the user of manually entering a statement with correct punctuation
in the template. Final Act. 8—9.
We agree with the Examiner. Appellants’ contention that the text in
Filteau’s templates is already punctuated correctly is inconsistent with
paragraph 87 of Filteau. Appellants have not provided persuasive evidence
or argument to rebut the Examiner’s finding that a user of Filteau’s template
has to enter manually text with correct punctuation. Appellants have also
not persuasively rebutted the Examiner’s finding that including Lin’s
punctuation rules in the template program of Lin reduces the user’s burden
of using correct punctuation when entering text into the template.
Appellants further contend that Lin does not teach “rules governing
use of symbol elements based on evaluation of rules governing inclusion of
optional content elements” as recited in claim 22. Reply Br. 17; App. Br.
19—20. According to Appellants, the Examiner cites Lin’s punctuation rules
to teach both the claimed “rules governing inclusion of optional content
elements,” and the claimed “rules governing use of symbol elements based
on evaluation of the rules governing inclusion of optional content elements.”
Reply Br. 18.
The Examiner relies on Filteau to teach “rules governing inclusion of
optional content elements.” Final Act. 7, Ans. 5—7. The Examiner relies on
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Appeal 2016-003391
Application 10/933,466
Lin to teach “rules governing use of symbol elements based on evaluation of
the rules governing inclusion of optional content elements.” Final Act. 8,
Ans. 5—7. Appellants’ contention against Lin alone does not rebut the
Examiner’s finding that the combination of Filteau and Lin teaches “rules
governing inclusion of optional content elements” and “rules governing use
of symbol elements based on evaluation of the rules governing inclusion of
optional content elements” as claimed.
Appellants contend Lin teaches punctuation rules such as a period at
the end of a sentence, but does not evaluate the rules using input information
to determine inclusion of optional content elements, because Lin does not
control inclusion of content elements. Reply Br. 18—19. However, the
Examiner relies on Filteau to teach inclusion of optional elements. Final
Act. 7, Ans. 5—7.
Appellants contend that Filteau does not teach compulsory content
elements. Reply Br. 19—21; App. Br. 15—16. The Examiner finds that a
patient’s identifying information in Filteau is compulsory content for the
medical diagnostic report generated by Filteau’s diagnostic program. Final
Act. 7. Appellants have not persuasively explained why a patient’s
identifying information would not be compulsory content for the patient’s
diagnostic report.
Appellants contend that Lin teaches providing punctuation to clauses
in a document, but does not decide whether to include or exclude clauses in
the document based on evaluation of rules. Reply Br. 22. However, the
Examiner relies on Filteau to teach the rules governing inclusion of optional
content, as discussed above.
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Appeal 2016-003391
Application 10/933,466
Appellants contend Lin does not teach “a first rule governing use of a
first symbol element associated uniquely with and applied only to a first
optional element, and a second rule governing use of the first symbol
element associated uniquely with and applied only to a second optional
element” as claimed. Reply Br. 22. Page 10, lines 17—22 of Appellants’
Specification discloses that the last clause in any document is terminated
with a full stop; the penultimate clause is terminated with and; all other
clauses up to the penultimate clause are terminated with a comma. Page 11,
lines 14—30 of Appellants’ Specification discloses that these rules can be
extended to include punctuation of optional phrases. We interpret this
limitation, when read in light of Appellants’ Specification, as encompassing
a rule for inserting a period after the last phrase of a sentence, and inserting a
comma after a phrase other than the last phrase of a sentence taught by the
punctuation rules on pages 230-31 of Lin, as applied to the optional content
inserted into Filteau’s template, such as box 892 of Figure 8D.
Appellants contend that Filteau does not teach “rules governing
inclusion of optional content elements based on input information” as
claimed. Reply Br. 22—23; App. Br. 16—18. According to Appellants, the
template of Filteau does not prompt the user for input. Reply Br. 23.
Appellants’ contention is inconsistent with box 892 shown in Figure 8D of
Filteau, which says “additional text can be entered here.”
For claims 24, 47, and 53, Appellants contend manual insertion of
punctuation by a user is not suggestive of a computer inserting a symbol
element based on a rule. Reply Br. 23; App. Br. 23. However, Lin teaches a
computer inserting a symbol element based on a rule.
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Application 10/933,466
For claims 25, 48, and 54, Appellants contend the “predetermined
portion” and “first rule” are not shown in the cited references. Reply Br. 23;
App. Br. 23. However, quoting the claim language and alleging the quoted
claim language is not in the prior art is not considered a separate argument
for the patentability of these claims. See In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011).
We sustain the rejection of claims 22—27, 46-49, and 52—55 under 35
U.S.C. § 103(a) as unpatentable over Filteau and Lin.
Section 103 rejection of claims 28—32, 50, 51, 56, and 57
Appellants do not separately argue the patentability of claims 28—32,
50, 51, 56, and 57, which fall with the claims from which they depend (i.e.,
independent claims 22, 46, or 52).
DECISION
The rejection of claims 22—27, 46-49, and 52—55 under 35 U.S.C.
§ 103(a) as unpatentable over Filteau and Lin is affirmed.
The rejection of claims 28—32, 50, 51, 56, and 57 under 35 U.S.C.
§ 103(a) as unpatentable over Filteau, Lin, and Nunberg 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). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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