SIGRAM SCHINDLER BETEILIGUNGSGESELLSCHAFT MBHDownload PDFPatent Trials and Appeals BoardApr 6, 20212020001341 (P.T.A.B. Apr. 6, 2021) Copy Citation 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. 14/615,869 02/06/2015 Sigram SCHINDLER 2654-0018US01 8453 137713 7590 04/06/2021 Potomac Law Group, PLLC 8229 Boone Boulevard Suite 430 Vienna, VA 22182 EXAMINER SMITH, PAULINHO E ART UNIT PAPER NUMBER 2125 NOTIFICATION DATE DELIVERY MODE 04/06/2021 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): eofficeaction@appcoll.com patents@potomaclaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Ex parte SIGRAM SCHINDLER _______________ Appeal 2020-001341 Application 14/615,869 Technology Center 2100 _______________ Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and JOYCE CRAIG, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1 through 30. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). According to Appellant, SIGRAM SCHINDLER BETEILIGUNGSGESELLSCHAFT MBH is the real party in interest. Appeal Br. 2. Appeal 2020-001341 Application 14/615,869 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to a computer-implemented method of generating, customizing and providing Legal Argument Chains by an Innovative Expert System. Abstract. Claim 1 is reproduced below. 1. computer-implemented method of generating, customizing and providing "Legal Argument Chains, "LAC.Z"), Z=1,2,3, ... , by an Innovation Expert System, ("IES"), a Legal Argument Chain ("LAC.Z") comprising a plurality of fragmented arguments input by a user via a user interface and used for determining whether a claimed invention satisfies Substantive Patent Law ("SPL"), the Innovation Expert System ("IES") comprising at least one processor, a memory for storing executable code for the processor, an input-output (1/0) device configured for human interaction with an Innovation Expert System ("IES") user, and •) a User Interface Entity ("UIE.Y") for enabling access to all legal argument chains ("LAC.Z"), •) wherein a Legal Argument Chain ("LAC.Z") is presented by executing at least one user interface entity ("UIE.Y"), •) wherein a user interface entity ("UIE.Y") comprises a set of storage cells, a knowledge representation user interface entity ("KR-UIE.Y") for enabling access to stored knowledge from the PTR-DS and a human interaction user interface entity ("HI- UIE.Y") for facilitating the invoking of an interaction, •) a Global Bibliography ("GloBi") accessible to the processor; •) the Innovation Expert System ("IES") being capable of running in a config-mode or a realtime-mode, and the Innovation Expert System ("IES") further comprising test determinants of: •) a given legal standard or model, referred to as a First Order Logic Finite Legal Norm ("FFLN") in a given notation, Appeal 2020-001341 Application 14/615,869 3 •) a given Pair of a Technical TeachingFFLN (''TT.QFFLN"), of a Claimed Invention ("Cl") disclosed in a patent application's specification, and a set of prior art teachings referred to as a Reference Set ("RSFFLN"), the pair being referred to as Pair of Technical Teaching and Reference Set ("PTRFFLN"l, hereinafter referred to as "PTR" •) a given Data Structure for the Pair of Technical Teaching and Reference Set ("PTR-DS"), wherein: Some Innovation ("SI") being the Technical Teaching ("TT.0") of the Pair of Technical Teaching and Reference Set ("PTR") and a FSTP-Test such that "SI" passes the FSTP-Test and the data structure ("PTR-DS") being the evidence that Pair of Technical Teaching and Reference Set ("PTR") satisfies First Order Logic Finite Legal Norm ("FFLN") by the FSTP-Test, and •) a given Arguable Subtest ("AST") of latter FSTP-Test, whereby the Arguable Subtests ("AST.Z") comprising a blueprint for the Legal Argument Chains ("LAC.Z") wherein the Legal Argument Chains ("LAC.Z") conveys information stored in an arguable Subtests ("AST") in a multimedia presentation format, wherein the Arguable Subtests ("AST") are stored by a knowledge representation user interface entity ("KR- UIE.Y"), for use by an Innovation Expert System ("IES") user or the Innovation Expert System ("IES"), the method comprising: repeatedly invoking the following Action A) in a config- mode or Action B) in a realtime-mode of the Innovation Expert System ("IES"): A) automatically prompting§. user, in order to enable the plurality of user interface entities ("UIE.Y") to present in B) Legal Argument Chains ("LAC.Z") in realtime mode, to invoke the Innovation Expert System ("IES") to i. automatically identify a knowledge representation user interface entity ("KR-UIE.Y") storing Appeal 2020-001341 Application 14/615,869 4 an Arguable Subtest ("AST") which is to be transformed into a Legal Argument Chain ("LAC.Z"), and ii.automatically identify a human interaction user interface entity ("HI-UIE.Y"), into which to input by a user, as part of Action A), what the content and the representations shall be of the Legal Argument Chain ("LAC.Z"), which will represent the transformation of the Arguable Subtest ("AST"), in a multimedia presentation format, on an 1/0 device of the Innovation Expert System ("IES"), and to iii. automatically input the Legal Argument Chains ("LAC.Z"), defined by the knowledge representation user interface entity ("KR-UIE.Y") and the human interaction user interface entity ("HI-UIE.Y"), into the Global Bibliography ("GloBi"); and B) i. automatically prompting the user to identify the Legal Argument Chains ("LAC.Z") in the Global Bibliography ("GloBi"), and ii. automatically presenting the Legal Argument Chains ("LAC.Z") in real-time, by executing the user interface entity ("UIE.Y"), based on the stored Arguable Subtests ("AST.Z"), and combining the fragmented Arguable Subtests ("AST.Z") to form the Legal Argument Chains ("LAC.Z"). Appeal Br. 22–24 (Claims Appendix). REJECTIONS2 The Examiner rejected claims 1 through 30 under 35 U.S.C. § 112 first paragraph, as failing to comply with the enablement requirement. Final 2 Throughout this Decision we refer to the Appeal Brief filed August 12, 2019 (“Appeal Br.”); Reply Brief filed December 9, 2019 (“Reply Br.”); Final Office Action mailed June 14, 2018 (“Final Act.”); and the Examiner’s Answer mailed October 9, 2019 (“Ans.”). Appeal 2020-001341 Application 14/615,869 5 Act. 2–4. The Examiner rejected claims 1 through 30 under 35 U.S.C. § 112 second paragraph, as being indefinite. Final Act. 4–5. The Examiner rejected claims 1, 3 through 6, 9 through 16, 18 through 21, and 24 through 30 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Szygenda (US 2008/0086507, published April 10, 2008), Manual of Patent Examining Procedure (MPEP), and Hexel (Powerpoint to the People: Suiting the Word to the Audience, Australian Computer Society, Inc. Vol. 28 Conference in Research and Practice in Information technology, 49–55 (2004)). Final Act. 6–17.3 The Examiner rejected claims 2, 3, 7, 8, 17, 18, 22, and 23 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Szygenda, MPEP, Hexel and Cisco (Sharing a Screen, Documents or Whiteboard in Cisco Unified Meeting Place, Release 7.0 OL-15609-01 (Dec. 9, 2009)). Final Act. 17–21. ANALYSIS We have reviewed Appellant’s arguments in the Appeal Brief, the Examiner’s rejections, and the Examiner’s response to Appellant’s arguments. Appellant’s arguments have not persuaded us of error in the Examiner’s rejection of claims 1 through 30 under 35 U.S.C. § 112 first paragraph and 35 U.S.C. § 112 second paragraph, and we sustain these rejections. However, we do not sustain the Examiner’s rejections of claims 1 through 30 under 35 U.S.C. § 103. 3 We note that page the 6 of the Final Action, contains a typographical error and identifies the Hexel’s article as titled “Sharing a Screen, Documents or Whiteboard in Cisco Unified Meeting Place.” Appeal 2020-001341 Application 14/615,869 6 Rejection based upon 35 U.S.C. § 112 first paragraph The Examiner rejects claims 1 through 30 as failing to comply with the enablement requirement. Final Act. 2–4. The Examiner rejects the claims in five (5) groups, we address the rejection as it applies to each group. Claims 1 and 16 With respect to independent claims 1 and 16 which recite several limitations directed to legal arguments chains LAC.Z and arguable subtest AST.Z, the Examiner finds that “the limitations cite production or manipulation a legal argument chain and arguable subtest but the claims and the specification fails to clearly define what a legal argument chain or arguable subtest is and how a system or a user goes about determining, creating, or manipulating a legal argument chain or arguable subtest.” Final Act 2–4. Appellant argues the Examiner’s rejection is in error as each of the terms and acronyms are disclosed in the Specification. Appeal Br. 10. Further Appellant states: Arguable Subtests are embodied in the 10 FSTP tests and serve as the blueprints for a legal argument chain. That is, the 10 FSTP tests serve as the blueprints for Arguable Subtests. See p. 5, lines 10-15. There are a finite number of Arguable Subtests that exist, and can be executed on the PTR-dependent set of binary elementary disclosed inventive concepts. See p. 5, 16-27. The purpose of LACs is to convey the information stored in ASTs to a user in a multimedia presentation on the 1/0 devices of the IES. See p. 1, lines 15-18 and 24-25, p. 5, lines 10-15 and p. 6, lines 11- 36. The 10 FSTP tests are explicitly defined in Figures 2a and 2b. Further, p. 2, lines 4- 7 of the Specification outlines that "[t]esting a claimed invention under SPL means testing it under the 10 FSTP tests." Accordingly, Appeal 2020-001341 Application 14/615,869 7 because the 10 FSTP tests are all explicitly defined, and the ASTs are derived from the 10 FSTP tests, it follows that the ASTs must also be defined. The arguments for the Arguable Subtest derived from the 10 FSTP tests are input by a user via a user interface. An arguable subtest comprises the blueprint for legal argument chains and is stored in a knowledge representation user interface. The legal argument chain conveys information stored in the arguable subtests in a multimedia presentation format Appeal Br. 11. In response to Appellant’s arguments the Examiner states: There is no guidelines, instructions, or examples telling a user how to complete the 10 FSTP and then create ASTs from that. In addition page 5 lines 25 cites there are a few hundred ASTs for a PTR. Without clear direction and examples it would require undue experimentation for a user to try and determine what constitutes an AST, how to create, identify and use them, Ans. 6. Appellant has not persuaded us the Examiner erred in finding the claim 1 recitation of a computer implemented method of generating and providing legal argument chains and an arguable subtest of a FSTP test4 (acronym not defined in Appellant’s Specification or Briefs) are not enabled. “[T]o be enabling, the specification of a patent [application] must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)) (emphasis added). Determining the 4 The term FSTP is not defined in Appellant’s Specification or Briefs. However from our review of Applications 13/608,543, 14/294825, in which there are related appeals, we understand that this term means Facts, Screening and Transforming Processor. We also note that Appellant’s representative did not identify the Appeals in these Applications in their Appeal Brief as is required by 37 C.F.R. § 41.37 (c)(ii). Appeal 2020-001341 Application 14/615,869 8 need for “undue experimentation” is not “a single, simple factual determination, but rather is a conclusion reached by weighing many” factors. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Those factors (the Wands factors) include: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. Id. (citing In re Forman, 230 USPQ 546, 547 (BPAI 1986)). However, the Examiner need not discuss each Wands factor. See MPEP § 2164.01(a) (see also In Re Hills, 484 Fed. Appx 491, 495 (Fed. Cir. 2012) (nonprecedential) sustaining a rejection when “both the examiner’s analysis and the Board’s analysis were based on the factors most relevant to this case, that is, the lack of “direction or guidance presented” by the inventor, and the “absence of working examples” sufficient to connect the discussed theory to the recited claims”). We have reviewed the pages of Appellant’s originally filed Specification cited by Appellant in the Appeal Brief. The discussion on page 5 of the Specification identifies that arguable subtests (ASTs) are a blue print for and are transformed into legal argument chains (LAC), i.e. the discussion is of how the two relate to each other, but the discussion does not identify how to create arguable subtests or legal argument chains. Further, we have reviewed Figures 2(a) and (2) of Appellant’s originally filed Specification, which seems to be a list of claims, and do not find that it provides an example of 10 tests or defines arguable subtests as asserted by Appellant. As such we do not find that cited portions of Appellant’s Specification discloses how to generate legal argument chains (LAC) and Appeal 2020-001341 Application 14/615,869 9 arguable subtests (AST) to teach an artisan to make and use the invention claimed without undue experimentation. Therefore, with respect to independent claims 1, 16 and the claims which depend upon them, we concur with the Examiner that the Specification does not provide a disclosure as to how make or use the invention claimed. Claims 4 and 19 With respect to dependent claims 4 and 19, the Examiner rejects these claims as: the specification fails to disclose how a user or a system would determines or generates a legal argument chain (LAC.Z), then substructure the LAC.Z into legal argument steps(LACS.Z.SZ.S.), which are comprised of legal argument moves (LACM.Z.Mz.s). It also fails to clearly define what he difference is between the three terms. Final Act 3. Appellant argues that the Specification discloses that a legal argument chain may be structured into steps and moves. Appeal Br. 11 (citing Spec. p. 6, ll. 11–36). Further, Appellant states: Invoking a user interface entity causes at least one step to be executed, which executes at least one move. See p. 1, lines 26- 31. In other words, user interface entities are made of steps, and steps are made of moves. See p. 5, lines 28-34. As disclosed at p. 6, lines 11-36, the LAC.Z is structured in the same way as its corresponding UIE.Z. Thus, differences between steps and moves are clearly defined. Appeal Br. 12 In response to Appellant’s arguments, the Examiner states: While the specification cites that any LAC.z may be structured into its individual steps and moves - these may be induced by the structure of its peer AST.Z or by a user's needs or by both, this fails to enable one of ordinary skill to make or use steps Appeal 2020-001341 Application 14/615,869 10 and moves without undue experiment as there are no clear directions and examples to show user how to do so. The specification merely cites that is possible without explaining what exactly a step and move are, how they differ from one another, and how they relate to LAC.z. We know from the claim 1 that LAC.zs are made up fragmented arguments, however we do not how to structure these fragmented arguments into steps and moves. Ans. 7. Appellant has not persuaded us the Examiner erred in finding the claim 4 limitations directed to legal argument chains LAC.Z being sub- structured into legal arguments chain steps LACS.Z, which comprise legal argument chain moves LACM.Z.M, are not enabled. We have reviewed Appellant’s Specification, we concur with Appellant that page 6 identifies legal arguments chains as having steps and moves, and page 1 identifies that invoking a user interface executes a step which executes a move. But pages 1 and 6 do not contain either discussion or examples of what steps and moves are other than being executed by a user interface. We also note that it is not readily apparent how a legal argument chain, which in accordance with claim 1 comprises a plurality of argument fragments input by a user and used for determining whether an invention satisfies substantive patent law, is comprised of something that is executed by a user interface. Elements executed on a user interface are typically computer code, not arguments or argument fragments. As such we do not find that cited portions of Appellant’s Specification discloses how the legal argument chains are composed of steps and moves to teach an artisan to make and use the invention claimed without undue experimentation. Therefore, with respect to dependent claims 4 and 9, we concur with the Examiner that the Specification does not provide a disclosure as to how to make or use the Appeal 2020-001341 Application 14/615,869 11 invention claimed. Claims 7 and 22 With respect to dependent claims 7 and 22, the Examiner rejects these claims as the Specification fails to disclose how a user or the system determines the functionality of a human user interface, and interaction control user interface and a knowledge representation user interface. Final Act. 3 Further, the Examiner states “There is no directions in the Specification or examples to give guidance, requirements or limit on kind of functionality should be given to the interface entities, if each interface should different or the same functionality or what is even required for them to work.” Ans. 8. Appellant argues the limitations of claims 7 and 22 are enabled because: claim 7 provides three possible ways that functionality of the user interface entities can be determined: entirely by a user, entirely by the system, or by a combination of both the user and the system. One of skill in the art would recognize these as clear options, and would be aware of each of the possibilities. Appeal Br. 12. Appellant’s arguments have not persuaded us the Examiner erred in concluding that the claim 7 limitations directed to a user or the system determining the functionality of a human user interface, and interaction control user interface and a knowledge representation user interface, are not enabled. Appellant in the Appeal Brief did not direct our attention to any portion of the Originally Filed Specification as providing support for the disputed limitations of claim 7. Nor has Appellant identified any support for the assertion that the skilled artisan would recognize how to do this. We Appeal 2020-001341 Application 14/615,869 12 have reviewed Appellant’s Figures and Specification and concur with the Examiner that the Specification does not provide directions or examples which give guidance, or establish requirements of functionality given to the interface entities. Page 1 of Appellant’s Specifications identifies the existence of the three user interfaces (human interaction, an interaction control and knowledge representation) but provides no description of how the functionality of the interfaces is determined and how a user or an expert system make the determination. Therefore, with respect to dependent claims 7 and 22, we concur with the Examiner that the Specification does not provide sufficient disclosure explaining how to make and use the invention claimed. Claims 11 and 26 With respect to dependent claims 11 and 26, the Examiner rejects these claims as the Specification fails to disclose how a user goes about augmenting a fist order logic finite legal norm (FFLN) and how is this done while preserving the finite first order logic (FOL) property. Final Act. 4. Further, the Examiner states that there are known methods for preserving first order logic, but that the Specification does not provide guidance on how to do so and thus provides “a burden of undue experimentation to make or use the invention to one or ordinary skill in the art.” Ans. 8. Appellant argues the limitations of claims 11 and 26 are enabled as: Those of skill in the art would recognize that there are known methods for preserving first order logic. For example, adding additional logical connectives both augments (e.g., adds to) the FFLN and maintains the FOL characteristics. Appeal Br. 12 Appellant’s arguments have not persuaded us the Examiner erred in Appeal 2020-001341 Application 14/615,869 13 finding the claim 11 limitations directed to a first order logic finite legal norm is augmented by the user preserving its finite first order logic property. Appellant in the Appeal Brief, did not direct our attention to any portion of the originally filed Specification as providing support for the disputed limitations of claim 11. Nor has Appellant identified any support for the assertion that the skilled artisan would recognize how to do this. We have reviewed Appellant’s Figures and Specification and concur with the Examiner that the Specification does not provide directions or examples which give guidance, preserving the finite first order logic property. Therefore, with respect to dependent claims 11 and 26, we concur with the Examiner that the Specification does not provide sufficient disclosure explaining how to make and use the invention claimed. Claims 15 and 30 With respect to dependent claims 15 and 30, the Examiner rejects these claims as the Specification fails to disclose how a user or the system would automatically identify any arguable subtest (AST) in a data structure for the pair of technical teachings and reference set (PTR-DS), and the Specification does not identify what a non-translated arguable subtest (AST) is. Final Act. 4. Further, the Examiner acknowledges that the Specification identifies that arguable subtests (ASTs) are derived from legal argument chain (LAC), but finds that the Specification provides no details as to how this is done but rather merely states to do it. Ans. 8–9. Appellant argues the limitations of claims 15 and 30 are enabled: As set forth in the specification, the nature of the PTR-DS allows the IES to identify the ASTs. See paragraph p. 5, lines 2- 9. The structure of the PTR-DS is set forth in the applications incorporated by reference in the present application. Appeal 2020-001341 Application 14/615,869 14 Appeal Br. 12. Appellant has not persuaded us the Examiner erred in finding the claim 15 limitations directed to automatically identify an arguable subtest (AST) in a data structure for the pair of technical teachings and reference set (PTR-DS) are not enabled. We have reviewed Appellant’s Specification and we concur with the Examiner that it provides no guidance or examples of how arguable subtest are identified in a data structure of the pair of technical teachings as claimed. The passage on page 5 of the Specification, cited in Appellant’s arguments, on page 12 of the Appeal Brief, merely identifies that arguable subtests are derived from but not how they are derived. As such, we do not find that cited portions of Appellant’s Specification discloses the disputed limitation in a manner to teach an artisan to make and use the invention claimed without undue experimentation. Therefore, with respect to dependent claims 15 and 30, we concur with the Examiner that the Specification does not provide sufficient disclosure explaining how to make and use the invention claimed. Rejection based upon 35 U.S.C. § 112 second paragraph The Examiner concludes that the terms “legal argument chains”, “Arguable Subtest of this FSTP-Test”, “Global Bibliography, GloBi”, “First Order Logic Finite Legal Norm, FFLN”, “Technical Teaching in FFLN, TT.O”, “Some Innovation in FFLN, SI”, “FSTP-Test”, “Legal Argument Chain Steps”, and “Legal Argument Chain Moves” render claims 1 through 30 indefinite as it is unclear what the terms mean and encompass. Final Act. Appeal 2020-001341 Application 14/615,869 15 5.5 Appellant addressed the terms individually; we address each of the elements in the order presented. Initially, we note that Appellant has not addressed the Examiner’s rejection as it applies to the term “Some Innovation in FFLN, SI.” Accordingly, we sustain the Examiner’s rejection as it relates to this term pro forma. Appellant argues the Examiner’s rejection is improper as the terms and acronyms in the claims are fully defined in the Specification or in the applications incorporated by reference into the present application. Appeal Br. 13. With respect to the terms “Legal argument chain”, “Legal Argument Chain Steps” and “Legal Argument Chain Moves”, Appellant states: the specification discloses that any LAC.Z may be structured into its individual steps and moves - these may be induced by the structure of its peer AST.Z or by a user's needs or by both. In any case this structure of a LAC.Z is reflected by any one of its peer UIE.Z (i.e., by its L-UIE.Z, where L can be HI, IC, or KR). Accordingly, the legal argument chain is clearly defined to be structured into individual steps and moves. See p. 6, lines 11-36. Invoking a user interface entity causes at least one step to be executed, which executes at least one move. See p. 1, lines 26-31. In other words, user interface entities are made of steps, and steps are made of moves. See p. 5, lines 30-37. As disclosed at p. 6, lines 11-36, the LAC.Z is structured in the same way as its corresponding UIE.Z. Thus, differences between steps and moves are clearly defined. Appeal Br. 13–14 The Examiner provides a detailed response on pages 9 through 11 of the Answer repeating that the Specification fails to provide a definition of the terms. Further, the Examiner states “[t]he specification merely cites that 5 The Examiner withdrew the rejection based upon the term “global Biography” and FSTP-test. Ans. 11, 12. Appeal 2020-001341 Application 14/615,869 16 is possible without explaining what exactly a step and move are, how they differ from one another, and how they relate to ‘Legal Argument Chains.’” Ans. 9. We have reviewed the Appellant’s arguments and the cited portions of Appellant’ Specification and are not persuaded of error in the Examiner’s determination that the terms “Legal argument chain”, “Legal Argument Chain Steps” and “Legal Argument Chain Moves” are not defined and therefore indefinite. The Office “determines the scope of claims . . . 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.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). Applying the broadest reasonable interpretation of a claim, then, the Office establishes a prima facie case of indefiniteness with a rejection explaining how the metes and bounds of a pending claim are not clear because the claim contains words or phrases whose meaning is unclear. See In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014). Independent claims 1 and 16 recite a method of generating “legal argument chains” and dependent claims 4 and 19 recite that the legal argument chains are structured in components comprising “legal argument chain steps” and “legal argument chain moves.” As discussed above with respect to the Examiner’s enablement rejection of these claims, Appellant’s Specification does not discuss: how to generate legal argument chains; what the legal argument moves and steps are other than being executed by a user interface. We similarly do not find that Appellant’s Specification provides a definition of what constitutes a legal arguments chain, such that the metes and bounds of the claim term can be determined. While the legal arguments chain’s moves and steps are discussed in Appellant’s Specification as being Appeal 2020-001341 Application 14/615,869 17 executed by a user interface and substructures of the legal arguments chain, the metes and bounds of these terms similarly cannot be determined as the discussion of them relies upon the undefined term “legal argument chain.” Spec. p. 1, ll. 26, 31, p.6, ll. 11–36. As such, Appellant’s augments have not persuaded us the Examiner erred in concluding the recitation of the terms “Legal argument chain”, “Legal Argument Chain Steps” and “Legal Argument Chain Moves” renders independent claims 1, 16 and the claims dependent thereupon indefinite. With respect to the terms “Arguable Subtest” and “arguable subtest of this FSTP–Test of PTR”, Appellant states: the 10 FSTP tests serve as the blueprints for Arguable Subtests. See p. 5, lines 10-15. There are a finite number of Arguable Subtests that exist, and can be executed on the PTR-dependent binary elementary disclosed inventive concepts. See p. 5, lines 16-27. The purpose of LACs is to convey the information stored in ASTs to a user in a multimedia presentation on the I/0 devices of the IES. See p. 1, lines 15-18 and 24-25, p. 5, lines 10-15 and p. 6, lines 11- 36. The 10 FSTP tests are explicitly defined in Figures 2a and 2b. Further, p. 2, lines 4- 7 outlines that “[t]esting a claimed invention under SPL means testing it under the 10 FSTP tests.” Appeal Br. 14. The Examiner provides a detailed response on pages 10 of the Answer repeating that the Specification fails to provide a definition of the terms. Further, the Examiner states “[i]t's not clear if ASTs are some information used in the 10 FSTP test, some result from the 10 FSTP test, or something things dealing with 10 FSTP test.” Ans. 10. We have reviewed the Appellant’s arguments and the cited portions of Appellant’ Specification and are not persuaded of error in the Examiner’s Appeal 2020-001341 Application 14/615,869 18 conclusion that the term “arguable subtest of this FSTP–Test” is not defined and therefore is indefinite. As discussed above, with respect to the Examiner’s enablement rejection, Appellant’s Specification identifies that the Arguable subtests are a blue print for, and are transformed into, legal argument chains but does not identify how to create arguable subtests or legal argument chains. Further, Appellant’s arguments (quoted above) that the FSTP test is explicitly defined in Figs 2a and 2b and thus the testing under the SPL means testing under the 10 FSTP tests are not well taken. As discussed above with respect to the enablement rejection of Figures 2a and 2b of Appellant’s originally filed Specification appear to be a list of claims and do not find that the figures provide an example of 10 tests or define arguable subtest as asserted by Appellant. Thus, we do not find that Appellant’s Specification provides a definition or explanation of what constitutes an arguable subtest of this FSTP–Test chain, such that the metes and bounds of the claim term can be determined. As such, Appellant’s augments have not persuaded us the Examiner erred in concluding the recitation of the terms “arguable subtest of this FSTP–Test of PTR” renders independent claims 1, 16 and the claims dependent thereupon indefinite. With respect to the terms “First Order Logic Finite Legal Norm (FFLN)” Appellant argues that this “is the set of legal principles under which the claimed invention (sic) is being analyzed. As is set forth in the Specification, the FFLN can be, for example substantive patent law (SPL) or substantive Copyright Law (SCL). Specification at p. 1, lines 19-23.” Appeal Br. 14. The Examiner provides a detailed response on pages 11 of the Answer repeating that the Specification fails to provide a definition of the terms. Appeal 2020-001341 Application 14/615,869 19 Further, the Examiner states: the definition cited by the appellant as page 1 lines 19-23 of the specification cites that SPL may be generalize to any “First Order Logic Finite Legal Norm”. This would indicate to the examiner that “FFLN” is not the SPL or SCL but something that SPL or SCL must be translated or formatted into. However what that format is not clearly defined as “FFLN” is not defined in the specification to indicate what the format must be, includes, excludes or what is acceptable. Ans. 11. We have reviewed Appellant’s arguments and the cited portions of Appellant’ Specification and are not persuaded of error in the Examiner’s conclusion that the term “First Order Logic Finite Legal Norm (FFLN)” is not defined and therefore is indefinite. Each of independent claims 1 and 16 recite a limitation directed to a legal standard or model which is referred to as a First Order Logic Finite Legal Norm. As the Examiner sates when interpreted in light of the Specification the First Order Logic Finite Legal Norm is not the substantive patent law (SPL) and substantive copyright law (SCL) but rather something based upon those laws and that the format or definition constitutes a standard or model based upon those laws is not defined. Thus, we do not find that Appellant’s Specification provides a definition or explanation of what constitutes an arguable subtest of this FSTP–Test chain, such that the metes and bounds of the claim term can be determined. As such, Appellant’s augments have not persuaded us the Examiner erred in concluding the recitation of the terms “First Order Logic Finite Legal Norm” renders independent claims 1, 16 and the claims dependent thereupon indefinite. With respect to the term “Technical Teaching in FFLN”, Appellant Appeal 2020-001341 Application 14/615,869 20 argues that term refers to a description of the technical teaching TT.O. Appeal Br. 14 (citing application 13/923,630 which is incorporated by reference). The Examiner in response disagrees: that “Technical teaching in FFLN” means the same things “TT.O”. Based on the claim 1 which states “a given legal standard or model, referred to as first order logic finite legal norm (FFLN) in a given notation” would indicated that “technical teaching in FFLN” defers from that “TT.O” as it is in a given legal notation form while TT.O is not. In addition application 13/923,630 makes no mention of “technical teaching in FFLN” or “FFLN” at all. Thus the examiner rejects the statement that they are the same and maintains that the term “technical teachings in FFLN” is indefinite as it is not clear what legal notation is required. Ans. 11–12. We have reviewed the Appellant’s arguments and are not persuaded of error in the Examiner’s conclusion that the term “Technical Teaching in FFLN” is not defined and therefore is indefinite. Independent claims 1 and 16 recite a given legal standard is given a notation of given pair or technical teaching FFLN. Appellant’s arguments have addressed the term technical teaching but have not addressed the basis for the Examiner’s rejection of the technical teaching in the FFLN as claimed. As such, Appellant’s augments have not persuaded us the Examiner erred in concluding the recitation of the terms “Technical Training” in the FFLN as renders independent claims 1, 16 and the claims dependent thereupon indefinite. As Appellant’s arguments have not persuaded us of error in the Examiner’s indefiniteness of independent claims 1 and 16, we sustain the Examiner’s rejection of independent claims 1, 16 and claims 2 through 15, Appeal 2020-001341 Application 14/615,869 21 and 17 through 30 which depend upon claims 1 and 16. Rejection of claims 1 through 30 under 35 U.S.C. § 103 As discussed above, we sustain the Examiner’s rejection of claims 1 through 30 as being indefinite, thus to consider the Examiner’s rejection would require speculation as to the scope of the claims. Our reviewing court has said that it is wrong to rely upon speculative assumptions as to the meaning of claims when considering a rejection over prior art. In re Steele, 305 F.2d 859, 863 (CCPA 1962). Accordingly, we do not sustain the Examiner’s rejections of claims 1 through 30 under 35 U.S.C. § 103(a), because ascertaining the scope of the claims would require speculation on our part. We decline to engage in speculation. DECISION In summary: Claim Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–30 112(first paragraph) Enablement 1–30 1–30 112(second paragraph) Indefinites 1–30 1, 3–6, 9–16, 18–21, 24– 30 103(a) Szygenda, MPEP, Hexel 1, 3–6, 9– 16, 18–21, 24–30 2, 3, 7, 8, 17, 18, 22, 23 103(a) Szygenda, MPEP Hexel, Cisco 2, 3, 7, 8, 17, 18, 22, 23 Overall Outcome 1–30 Appeal 2020-001341 Application 14/615,869 22 Because we have sustained at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner’s rejection. See 37 C.F.R. § 41.50(a)(1). 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. § 1.136(a)(1)(iv) (2018). AFFIRMED Copy with citationCopy as parenthetical citation