Ex Parte Vasey

Patent Trial and Appeal BoardOct 25, 2012

10933466 (P.T.A.B. Oct. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PHILIP E. VASEY ____________ Appeal 2010-005182 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 2010-005182 Application 10/933,466 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 22-45, which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Illustrative Claim 22. A document generation system for generating a customised document using content elements selected by rules operating on input information, and symbol elements, the system comprising: at least one computer having a document generation program installed thereon; wherein the system is capable of generating a fully or a partially customised document by evaluating the rules to select some of the content elements; and wherein the system further comprises means to associate further rules with the symbol elements, including means by which a user specifies use of selected symbol elements with selected content elements as a function of order of appearance of those content elements in series in only a portion of a particular document; and an interface that renders the fully or partially customized document in tangible form. Prior Art Nunberg US 5,111,398 May 5, 1992 Foy US 2002/0046235 A1 Apr. 18, 2002 Examiner’s Rejections Claims 22-45 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Foy and Nunberg. Appeal 2010-005182 Application 10/933,466 3 ANALYSIS Appellant makes several arguments in the Appeal Brief based on limitations not recited in claim 22. See App. Br. 38-42. For example, Appellant argues that the presently recited invention is intended for different purposes where predictability and controllability are paramount to grammatical correctness. App. Br. 38. However, the purposes argued by Appellant are not recited in claim 22 and therefore do not serve to distinguish claim 22 over the combination of Foy and Nunberg. As another example, Appellant argues that the combination of Foy and Nunberg applies rules to symbol elements but never associates particular rules with particular symbol elements before the rules are applied. App. Br. 40. However, associating particular rules with particular symbol elements before the rules are applied is not recited in claim 22, and we find no basis for reading this limitation into claim 22. Appellant further contends that the combination does not teach customization on a sub-document level with user-defined rules. App. Br. 41. The Examiner finds that customization on a sub- document level with user-defined rules is not recited in claim 22. Ans. 11- 12. We agree with the Examiner. Appellant argues the combination does not teach “including means by which a user specifies use of selected symbol elements with selected content elements as a function of order of appearance of those content elements in series in only a portion of a particular document” as recited in claim 22. Reply Br. 43. Appellant also contends that Nunberg, at column 15, lines 25- 30, teaches rules that implicitly prohibit the appearance of a parenthetical paragraph, sentence, or clause at the beginning of a document, paragraph, or phrase, respectively, but does not teach that parenthesis or any other symbol Appeal 2010-005182 Application 10/933,466 4 elements are included, excluded, or treated in some user defined manner. Reply Br. 45. These arguments are presented for the first time in the Reply Brief. Appellants could have presented these arguments in the Appeal Brief, such that we would have had benefit of the Examiner’s evaluation of the argument in the responsive Answer. Appellants do not explain what good cause there might be to consider the new argument. Appellants’ new arguments are thus untimely and has, accordingly, not been considered. See Ex parte Borden, 93 USPQ2d 1473 (BPAI 2010) (informative). Further, we find that Nunberg teaches rules that interpret text as words or sentences, and treat each grouping together. See Ans. 3 (citing col. 1, ll. 45-54). Nunberg teaches categorizing text units such as words, phrases, clauses, quotations, parentheticals, sentences, and paragraphs into textual types independent of content. Grammar rules such as punctuational structure are applied to the textual types. See Ans. 3 (citing col. 5, ll. 42-50; col. 10, ll. 20-25); Ans. 4 (citing col. 15, ll. 25-30; col. 28, ll. 30-40). Appellant has not provided persuasive evidence or argument to distinguish “only a portion of a particular document” from the textual types such as a sentence or a paragraph. See App. Br. 41; Reply Br. 43-44. Therefore, capitalizing a word at the beginning of a sentence as taught in column 10, lines 20-25, teaches use of selected symbol elements as a function of order of appearance in only a portion of a document within the meaning of claim 22. Further, prohibiting a parenthetical clause at the beginning of a document as taught at column 15, lines 25-30, ipso facto excludes parenthetical symbols and the associated content at the beginning of a document, which “specifies use of selected symbol elements with selected Appeal 2010-005182 Application 10/933,466 5 content elements as a function of order of appearance of those content elements in series in only a portion of a particular document” within the meaning of claim 22. The Examiner finds that Nunberg teaches that the user specifies use of selected symbol elements. Ans. 3-4 (citing col. 15, ll. 25-30; col. 28, ll. 30- 40). Appellant has not provided persuasive evidence or argument to rebut the Examiner’s findings. We agree with the Examiner for the reasons given by the Examiner in the Answer. We also find that that column 6, lines 28 through 39 in Nunberg teaches “user specifies use of selected symbol elements.” We find that the combination of Foy and Nunberg teaches “including means by which a user specifies use of selected symbol elements with selected content elements as a function of order of appearance of those content elements in series in only a portion of a particular document” as recited in claim 22. We sustain the rejection of claim 22 under 35 U.S.C. § 103. Appellant presents arguments for patentability of independent claims 33-38 and 42-45 similar to those presented for claim 22, which we find unpersuasive. Appellant has not presented arguments for separate patentability of claims 23-32 and 39-41, which fall with claims 22 and 38. Appeal 2010-005182 Application 10/933,466 6 DECISION The rejection of claims 22-45 under 35 U.S.C. § 103(a) as being unpatentable over Foy 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 babc