SIGRAM SCHINDLER BETEILIGUNGSGESELLSCHAFT MBH

Patent Trials and Appeals Board

Apr 6, 2021

2020001341 (P.T.A.B. Apr. 6, 2021)

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.
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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,
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•) 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
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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.”).
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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.”
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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,
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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).
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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
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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
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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
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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
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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
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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.
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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.
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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.
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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
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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
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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.
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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
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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,
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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

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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