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.
`
`90/011,010
`
`FILING DATE
`
`05/24/2010
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`5544352
`
`23373~08RJ{I
`
`2567
`
`08/0212010
`
`7590
`JONF. TUTTLE
`DORSEY & WHITNEY
`l330CONNECTICUT AVENUE,N.W.
`SUITE200
`WASHINGTON, DC 20036
`
`EXAMINER
`
`ART UNIT
`
`PAPER NUMBER
`
`DATE MAILED: 08/0212010
`
`I
`
`Please fmd below and/or attached an Office communication concerning this application or proceeding.
`
`PT0-90C (Rev. f0/03)
`
`EXHIBIT 2005
`
`Facebook,In~etaL
`v.
`Software Rights Archive, UC
`CASE IPR2013-00479
`
`

`

`... ~ UNITED STATES PATENT AND TRADEMARK OFFICE
`8-----------------------------------------------
`
`Commlssioner for Paten1s
`United States Patent and Trademark Office
`P.O. Box1450
`Alexandria, VA22313-1450
`.......,.,spto.gov
`
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`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`FISH & RICHARDSON, PC
`
`P.O. BOX 1022
`
`MINNEAPOLIS, MN 55440-1022
`
`................... !
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 901011.010.
`
`PATENT NO. 5544352.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`

`

`Order Granting I Denying Request For
`Ex Parte Reexamination
`
`Control No.
`
`90/011,010
`Examiner
`
`Patent Under Reexamination
`5544352
`Art Unit
`
`COLIN M. LAROSE
`
`3992
`
`w• The MAILING DATE of this communication appears on the cover sheet with the correspondence address--
`
`The request for ex parte reexamination filed 24 Mav 2010 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a)D PT0-892,
`
`b)0 PTO/SB/08,
`
`c)IZJ Other: PT0-1449
`
`1. [8] The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c) .
`
`.
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`2. D The request for ex parte reexamination is DENIED.
`
`This decision is hot appealable (35 U.S.C. 303(c)). Requester may seek review by petition to the
`Commissioner under 37 CFR 1.181 within ONE MONTH from the mailing date of this communication (37
`CFR 1.515(c)). EXTENSION OF TIME TO FILE SUCH A PETITION UNDER 37 CFR 1.181 ARE
`AVAILABLE ONLY BY PETITION TO SUSPEND OR WAIVE THE REGULATIONS UNDER
`37 CFR 1.183.
`
`In due course, a refund under 37 CFR 1.26 ( c) will be made to requester:
`a) D by Treasury check or,
`b) D by credit to Deposit Account No. __ , or
`c) 0 by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).
`
`l
`cc:Reauester ( if third oartv reauester)
`U.S. Patent and Trademark Office
`PTOL-471 (Rev. 08-06)
`
`l
`
`l
`
`I
`
`Office Action in Ex Parle Reexamination
`
`Part of Paper No. 20100729
`
`

`

`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`Page2
`
`ORDER GRANTING REEXAMINATION OF U.S. PATENT 5,544,352
`
`Request for Reexamination
`
`1.
`
`A third-party Request for Reexamination of claims 26-42, 44, and 45 was received on
`
`5/24/2010 based on the following prior art patents and/or publications:
`
`APPENDIXC
`
`APPENDIXD
`
`APPENDIXE
`
`APPENDIXF
`
`APPENDIXG
`
`APPE_NDIXH
`
`APPENDIX I
`
`APPENDIXJ
`
`Edward Fox, ''Extending the Boolean and Vector Space Models. of
`Information Retrieval with P-Nortn Queries and Multiple Concept Types."
`Cornell University, 1983 ("Fox")
`
`Ralph Gamer, et al., "A Computer-Oriented Graph. Th_eoretic Analysis Of
`Citation Index Structures," Three Drexel Information Science Research
`Studies, Ed. Flood, B., Drexel Press, 1967 ("Garner")
`
`Gerard Salton, ''Associative Document Retrieval Techniques Using
`Bibliographic Information," pp. 440-57, 1963 ("Sa/(on 1963")
`
`Donald B. Cleveland, "Ann-Dimensional Retrieval Model," Journal Of
`The American SoCiety For Information Science, October 1976, Vol. 27,
`'_No. 6, pp. 342-47 ("Cleveland'')
`
`Colin Tapper, "The Use Of Citation Vectors For Legal Information
`Retrieval," Journal of Law and Information. Science, Vol. 1, No .. .2, pp.
`131-61 (1982) ("Tapper'')
`
`Gerard Salton and Chris Buckley, "Approaches To Text Retrieval For
`Structured Documents," Dept. of Computer Science, Cornell University;
`January 1990 ("Salton 1990")
`
`.Fa:ili Can and.EsenA. O:ikanihan, "A Dynamic Cluster: Maintenance
`System for Information Retrieval," ACM, Vol. 6, p.123, 1987 (''Can'')
`
`Elizabeth Aversa, ''Research on Research: Customized. Citation Analysis
`for Governmental, Industria:!, and Academic Clients," Current Comments,
`p. 77, June 8, 1992 ("A versa~')
`
`

`

`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`Page 3
`
`Prosecution History of the '352 Patent
`
`2.
`
`On 9/23/1994, Examiner issued a non-final Office action in which all pending claims (1-
`
`20) were rejected under 35 U.S.C. § 103(a) based on Gallant (U.S. Patent 5,325,208) and Bodick
`
`(U.S. Patent 4,945,476).
`
`3.
`
`On 3/23/1995, Applicant responded to the Office action by making various claim
`
`amendments, including adding new numerous new claims-notably claims 28, 43, and 49
`
`(corresponding to patented claims 26, 41, and 45, respectively).
`
`In addition, Applicant submitted the following remarking regarding Gallant and Bodick
`
`(pp. 29-31 ):
`
`The Gallant Reference.
`
`The Gallant reference teaches away from applicant's invention. It discloses a
`
`method fo~ seP'tantic searching and applicant's invention is directed. at. the use of
`
`non-semantic search techniques. G~llant is at very best cumulative of the· prior art
`
`disclosed in the Information pisclosure Statement (filed on May 4, 1994) and, .as
`
`discussed in the Information DisClosure Statement, not particuiarly relevant to this
`.
`
`'
`
`invention.
`
`

`

`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`Page4
`
`Gallant is directed to a different type of searching than applicant's invention.
`
`It uses a text-by-text .method otherwise known as a semantic method. Semantic
`
`methods are based on the premise that documents with words in common are likely
`
`to be reli,i~ed. Gallant states ''rile foundation for the workings for the present
`
`invention is the dictionary of context vectors." Column 12, lines 6-7,
`
`"Uninteresting wprds are removed from consideration for the purposes of
`
`preparing an easily searchable data base. A context vector assigned to each word
`
`remaining in the record is identified from a dictionary of context vectors." Column
`
`3, lines 32-36. The Gallant reference is specifically focused on a method for
`
`generating a dictionary of context vectors for a core group of word stems, this is not
`
`applicant's invention.
`
`Applicant's invention does not use a dictionary of context vectors because
`
`applieant' s invention is not directed at word based searching, the meaning of specifi~
`
`words is generally unimportant to applicant's invention.
`
`The Examiner .is correct in noting that Gallant does not address the interface
`
`to be used with his system. Paper # 5, at page 4. In fact, Gallant does not appear to
`
`mention any interface at all, let alone use of a graphical user interface. Applicant
`
`respectfully traverses the assertion that GUI interfaces 'for d~tabases are well .known
`
`in the art as evideneed by Bodkk and traverses the assertion that it would have been
`
`obvious to one of .ordinary skill in the. art at the time of the invention to provide a
`
`GUI for the system of Ga:iiant.
`
`

`

`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`The Bodick Reference.
`
`Page 5
`
`Bodick is directed at a computerized aid. to th~ cognitive process of.:medic:;al
`
`diagnosis that·displays stored pictori~ information.which iS directly linked to text
`
`infon:nauon. Col. 3, lines 50-52. The si.de by side presentation of pictorial images
`and display .of text information for use in diagnosis is the focus of the Bodick
`r~ference. CoL 5, lines 45-46; Col 9 lines 45-50. And, the section of Bodick ·that is
`
`noted in. the office action states, 11Select the manner and format used to organlze
`alphanum~ric 'information and [stored] visual images.;; Col 3, lines 57-60 (emphasis
`
`added). Therefore, Bodick is not relevant to the claims of this application, a,s Bodick
`
`does not involve searching a database for objects. Further, the cited figure, Figure
`
`29, is a display used in editing, specifically, cutting a branc:h of a diagnosis tree
`
`created by an expert. Col. 9, lines 32-33 and Col. 21lines 20-21. The "manual"
`
`editing of a diagnosis tree created by a medical expert is not relevant ~to any of the
`
`claims.
`
`4.
`
`On 6/12/1995, the Examiner issued a Final Rejection in which independent claims 28 and
`
`43, and dependant claim 49, were indicated as allowable over the prior art of record for the
`
`following reasons (see pp. 6-7):
`
`The ·combination of limitations in the groups of claims. not found in the prio·r
`
`art of re.cord is·:
`
`In claims .. {14,49}: refer~nces to other objects used as identifiers ..
`
`

`

`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`Page 6
`
`In claims {28·42}: numerical representations of relati.onships between ..
`
`objects, and an,aly;zing them to form a basis for search.
`.
`.
`
`In claims {43·46}: five numeric·at rep'resentations involving references·;
`
`patterning, euclidean distances,. and simil~rity .
`
`5.
`
`On 8/22/1995, Applicant submitted a response to the Final Rejection in which, inter alia,
`
`dependant claim 49 was rewritten in independent form:
`
`6.
`
`L{b%' [The] A method [of claim;17,"wherein the step of identifying comprises the
`st~ps of] for searching indexed okjects. wherein the index is stored. comprising the
`
`steps of:
`
`entering search commands:
`
`processing the .search commands with a processor;
`
`retrieving the stored index using the processor;
`
`

`

`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`Page 7
`
`analyzing the. index to identify a pool of object§, comprising the ·steps
`
`interpreting the processed searched commands as a selection of
`
`an object:
`
`identifying a group of objects that have a relationship to the
`
`selected object, wherein the step Of identifying comprises the steps of:
`
`identifying objects that are referred to by the selected object;
`
`and
`
`identifying objects that refer to the selected object
`
`quantifying the relationship of the selected object to each object
`
`in the group of objects: and
`
`ranking the objects in the group of oQjects in accordance to the
`
`quantified relationship to the. selected object: and
`
`presenting one or more objects from the group of objects in ranked
`
`order.
`
`7.
`
`On 9/15/1995, the Examiner issued a Notice of Allowability containing the following
`
`reasons for allowance (seep. 3):
`
`Various form$ of vectorized. concept searching are well known (as in
`
`Deerwester, Gallant, Bodick et al) and Cochran cited below applies non-semanticai'
`
`access to a database, (as shown in FIG 15, where Case Citation is used).
`
`The combination of searching with non-semantical relationships with
`
`vectorlzed concepts (as in claim 1) or with iterated paradigm definition (as in claim ·
`
`12) does not appear if) the prior art of record.
`
`

`

`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`Page 8
`
`Substantial New Question of Patentability
`
`· 8.
`
`The request for ex parte reexamination ("Request") alleges the following substantial new
`
`questions of patentability (SNQs) based on the above-identified prior art:
`
`1. Claims 26-42,44 and 45'·are unpatentable under 35 U.S.C. § l02(b) as
`antiCipated by Fox.
`
`2. Claims 26-32,34-40 and 45 an~ unpatentable under 35 U.S.C. § 1Q2(b) as
`anticipated by Garn,er.
`3. Claims 26-42,44 and 45 are unpatentable under 35 u.s.c. § 102(b) as
`anticipated bySalton 1963.
`
`4. Claims 26-42,.44 and 45 are unpatentable under 35' U.$.C. § 102(b) as
`anticipated by Tapper.
`
`5. Claims 26-37,40-42,44 and 45 are unpatentable under 35' U.S.C. § 102(b) as
`anticipated by Cleveland.
`
`6. Claims 33, 41, 42, and 44 are unpatentable under 35 U.S.C. § 103.(a:) a:s
`obvious over Fox .in view of Cleveland.
`
`7. Claims 33, 41,42, and 44 are unpatentable under 35 U~S.C. § 103(a):as
`obvious over Salton 1963 in view oJ Cteveland.
`
`8. Claims 33, 41, 42, and 44 are. unpatentable under 35 U.S.G. § 103(a) as
`obvious over Garner in view of Cleveland.
`
`9. Claims 33, 41, 42, and 44 ·are. unpatentable under 35 U.S~C. § 103(a) as
`obvious. over Tapper in view of Cleveland.
`
`

`

`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`Page9
`
`10. Claims'34 and 35 are unpatentable under 35-U.S.C. § 103(a) as obvious over
`Fo:x in'view of Salton 1990.
`
`11. Claims 34 ·and 35 are unpatentable under 35 U.S.C. § .103(a:) as obvi()us over
`Salton 1.963 hi view of Salton 1990.
`
`12 .. Claill)s 34 and 35 are unpatentable under 35 U.S.C. §.l03(a) as obvious over
`Garner in View of Salton 1990.
`
`13. Claims 34 and 35 are unpatentable under 35 U.S.C. §' 103(a) as obvious over
`Tapper in vi'ew of Salton 1990.
`
`14. Chlims 34and.35 are unpatentable under 35U.S.C. § 103(~) as obviQus over
`Cleveland 'in view of Salton 1990.
`
`15. Claim 37' is unpatentable under 35 U.S.C . .§ l03(a) as .obvious over Salton.
`1963 in view of Aversa.
`
`16. Claim 37 is unpatentable under 35 U.S.C. § 103(a) as obvio.us ove:r Garner in
`~View of Aversa.
`
`17. Claill) 37 is unpatentable under 35 U.S~C. .. § 103(a) as obviol!S O\,'er Tgpp~r in
`view of A.versa.
`
`18. Claim.37Js unpatentable under 35 U.S.C~ § 103(a) asobviot~sover Clrtveland
`.in view QfAversa.
`
`19. Claims 3.8_, 39 and 40 are unpatentable under 35 U.S.C. §. 103(a)·aS obvious
`over Salton 1963 in view of Can.
`
`· 20. Claims 38~ 39 and 40 are unpatentable under 35 U.S. C. § l03(a) as obvious
`over Garner in. view of Can.
`
`21, Claims 38, 39 and 40 are. unpatentable under 35 u.s.c~ § 103.(a) a~ obvious
`over Tapper in view·of Can.
`
`22. Claims :38,39 and 40 are unpatentable·under 35·u.s~c. § 103(a)-as obvious
`over Cleveland in view of Can.
`
`

`

`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`9.
`
`SNQ 1-Fox for claims 26-42,44, and 45
`
`Page 10
`
`The Request (pp. 18-27) alleges that Fox, which is directed to extending the Boolean and
`
`vector space models of information retrieval with p-norm queries and multiple concept types,
`
`raises a substantial new question of patentability for independent claims 26, 41, and 45.
`
`Specifically, the Request identifies Fox as teaching the limitations that previously distinguished
`
`the claims from Gallant and Bodick during the initial examination:
`
`Claim 26
`
`Fox discloses creating a first numerical representation for each identified ·object in the
`database based·upon the object: s direct relationship with other objects in the database. and. storing
`the first numerical representations in a computer. For exampl~, at page 181 Fox discloses
`
`describing direct citations using "source-cited document number pairs," which is a numerical
`
`representation pfa direct r~lationship 'between the members ofthe pair (sp·~cifically the source
`
`document and the· cited document). Fox explains that these numerical representations were
`
`stored in vectors and matrices as part of indexing and then "processed'' by a computer for use in
`searching {page 181 ), as described with respect. to the "analyzing" step below. Fo:x also
`describes representing direct relationships inalinkrnatrix In (see e.g. page 169);
`
`if D,.....,.tJi
`l
`1 if D;~D,
`lni.J -· 1 if' ;,~.i, by definition
`0 Ot·h~rwis.c.
`
`

`

`Application/Control Number: 90/011 ,010
`Art Unit: 3992
`
`Page 11
`
`Fox discloses a.nalyzing the first numerical representations for indirect relationships
`existing between. or among objects in the database, which the PTO believed to be missingfrom
`
`the prior art of record during examination of claim 26. For example, Fox teaches analyzing the
`"source-cited document pairs" for co-citation relationships (pages 164-173 & 181) and
`
`bibliographic coupling. These two citation patterns are indirect relationships,
`
`Bibliographic coupling is defi_ned on page 167: "(6-18) Band Care bibliographically
`
`coupled ... if some document, say E, is referred to 'by both B and C." This relatioll$hip is shown
`
`below; As is apparent, B and C are not directly linked, but rather are indirectly linked by E.
`
`Claim 41
`
`Independent claim 41 is directed. to an indexing method and recites a number of method
`
`steps. relating to aspects of the· indexing (e.g., the data indexing program (62)) desc.ri.bed in the
`
`;352. patent specification. As explc,lined below and detailed in Exhibit l? Fox discloses each of
`
`these claim elements and thus anticipates claim 41. In particular, as summarized in Table 1-B
`
`below and explained in:more detail further below, Fox discloses the elements thatw.ere the basis
`
`of the PTO's allowance of claim 41, characterized by the PTO as "five numerical representations
`
`invoivingreferences, patterning, Euclidean distances, and similarity."
`
`Table 1-B
`
`first :numerical
`represent.at_io_n
`
`Document numbers and "Did" (Document ID) for id~ntification: Fqx
`at, e.g., page 154, 167-168, 181
`
`second numerical
`representation
`
`~·source-cited document numberpairs," (Page 191)
`In matrix and component vectors (e.g. page 169, 170-172):
`
`third numerical
`representation
`
`be and cc matrices and component vectors (e. g. page 167-173)
`
`fourth numerical
`representation
`
`Fox at, e.g., page 205: calculating "Euclidean distance between linked
`items!' based on the usc of subvcctors
`
`fifth numerical
`representation
`
`Fox at, e.g.; page 213-18, determining similarityand,providing a
`cluster number based on similarity
`
`

`

`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`Page 12
`
`Claim 45
`
`Fox further discloses identifying "objects that are referred to by" and ''that refer to" the
`selected objects. Specifically, for each document, the In matrix identifies documents to which it
`is linked. Fox explains that the In matrix is symmetric and includes a "1 if the lh doc. refers· to
`the /h, or vice versa," (page .170) thus clearly identifying documents. that "are referr.ed to by" and
`th~t "referto" each document. Thus, the Fox reference discloses identifYl1lg Qbjectst.hat4re
`referred to by 'the selected object and identifying objects that refer to the selected object, which
`the PTO believed to be: missing from the prior art during examination of issued claim 45. Fox
`
`also describes "cycling" at page 163 which includes "beginning with one or more articles present
`
`in a citation inde.x go backward to the. citing documents, go forward by consideri,ng their
`
`references, go back using the new larger set, etc." This process also includes iqentifying objects
`
`that are referred to by the selected object and objects that.refer to the selected object.
`
`Since Fox appears to provide new technological teachings that were missing in the prior
`
`art during the initial examination of the '352 patent and was not previously considered during the
`
`initial examination, Fox does raise a substantial new question of patentability for claims 26-42,
`
`44, and 45.
`
`10.
`
`SNO 2-Garner for claims 26-32, 34-40, and 45
`
`The Request (pp. 53-61) alleges that Garner, which is directed to a computer oriented,
`
`graph theoretic analysis of citation index structures, raises a substantial new question of
`
`patentability for claims 26-32, 34-40, and 45. Specifically, the Request identifies Garner as
`
`teaching the limitations that previously distinguished the claims from Gallant and Bodick during
`
`the initial examination:
`
`

`

`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`Page 13
`
`Claim 26
`
`Garner discloses the feature that the PTO believed to be missing from the prior art
`during examination of issued claim 26 - namely, analyzing the ;firstnumerical
`
`representations for indirect relationships existing between or amon"g objects in. the
`database. Garner discloses this feature, for example, at pages 10-12, 25, 29-30 and 39, Figs.
`3.2, 3.3 and5.3, .and.Table 2 and Table 4. For example, at page 29, Garner discusses an ''A2
`matrix," which "clearly illustrates all papers which have the T2 relationship." Fig. 5".3 of Garner,
`reproduced below, shows theA2 matrix and how it is obtained by analyzing the first nutnerica1
`representation (A) for indirect relationships between objects:
`
`A:_
`
`I
`
`0
`
`J 0
`0 0
`(1 0
`o. 0 0 0
`J 0 0. 0
`
`0
`
`()
`
`l
`I
`0
`() 0 0 0
`
`0
`(
`
`t>O'?
`0 1)0
`
`-
`
`()
`
`().
`
`()
`
`()
`
`() () 0
`t>oo
`
`0 0
`I
`
`I
`
`()
`
`0
`
`Fig. 5. 3 --Square of the Asao·ciation Matrix
`
`(Garner- Fig. 5.3)
`
`Claim 45
`
`Garner discloses ''analyzing" the index to identify a pqol of objects, which <:X)mprises
`"interpreting;'' "identifying;'' "quantifying" and "ranking" sub-steps~ as claimed. As detailed·in
`Exhibit 3, the Garner reference discloses these features, for example, at pages 5, 7, 8, 10-20, 24-
`30, 37 and 39, Figs. 3.1, 3.2, 303, 3.4, 3.8, 5.1, 5,2 and 5.3, and Table 1, Table2 andTable 4. In
`particular, the Garner reference discloses identifying· objects tl~atare referred to by the selected
`object and identifying objects that refer to the selected object, which the PTO believed to be
`missing from the prior art during examination of issued claim 4 5. These "identifying" features
`can be found, for example, at pages 5, 10, 12, 14, 17-18, 39, Figs. 3, 1, 3.4j 3.8, 5.1 and 5.2, and
`
`

`

`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`Page 14
`
`Table 1. lh particular, at page 10, Garner discloses that that "[t]he.expression Tx will mean 'the
`set of papers which .have citeq the set of papers x." Moreover, at page 17, Gqrner describes that
`
`"a paper that does the citing, and ... the paper that is cited." In Fig, 3.1 of Garner~ reproduced
`
`below, citing relationships are indicated by line segments "connecting the paper that is Cited xo
`and the papers that do the citing, paper a, pap:er b, and paper c." Garner at 10. Thus, Garner
`clearly discloses ('identifying a group of objects using references to other objects used as
`identifiers," as characterized by the PTO during examination of the application that res\llted in
`
`the '352 patent.
`
`Fig. 3. 1-- .Example of Citing Function Txo
`
`(Garner Fig. 3.1)
`
`Since Garner appears to provide new technological teachings that were missing in the
`
`prior art during the initial examination of the '352 patent and was not previously considered
`
`during the initial examination, Garner does raise a substantial new question of patentability for
`
`claims 26-32, 34-40, and 45.
`
`11.
`
`SNQ 3-Salton 1963 for claims 26-42, 44, and 45
`
`The Request (pp. 35-46) alleges that Salton 1963, which is directed to associative
`
`document retrieval techniques using bibliographic information, raises a substantial new question
`
`of patentability for claims 26-42,44, and 45. Specifically, the Request identifies Salton 1963 as
`
`

`

`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`Page 15
`
`teaching the limitations that previously distinguished the claims from Gallant and Bodick during
`
`the initial examination:
`
`Claim 26
`
`As is 1;1.lso evident from Fig. 4, Salton 1963 discloses creating a first numerical
`
`representation for each identified object in the database based upon the object's direct
`relationship with other objects in the database. Fig. 4 describes this element which is a matrix
`comprised ofrow vectors of X for documents. X/ is a numerical representation indicating the
`direct r_elationship between document Di and Dj .. Salton 1963 also discloses this feature,. for
`example, in footnote 1 at page 446 (discussing a "citation index" .and a "reference index"), and at
`page 447 (discussing a collection of documents "characterized by the property of being cited by
`one or more of:the other documents .in the same collection" and .explaining that "each document
`can then be represented by an m-dimensionallogical ·vector Xi").
`
`Salton 1963 discloses storing the first numerical representations for use in computerized
`searching; as claimed. Salton 1963 disCloses this feature, for example, at :page 446 (see footnote
`1 discussing a "citation index" and. a "reference index"), page 447 (see, e.g., Fig. 4 reprod,uced
`above; see also ''Comparison of Citation Similarities with Index Term Similarities") and page
`450 (see, e.g., Fig. 5. reproduced above) of the reference.
`
`Ofpatticular importance, Salton 1963 clearly discloses analyzing·thejirst numerical
`
`representations for indirect relationships existing between or among objects in the database,
`
`which the PTO believed to be missing from the prior art of record during e~aminatlon pf
`claim· 26. Fig. 5: (page 450), which is reproduced below, shows a summary ofthe procedure for
`analyzing the first numerical representation for indirect relationships (including computing
`citation similarities and "citation links of length two, three, ..• and so on"):
`
`

`

`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`Page 16
`
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`
`(Salton 1963·- Fig. 5)
`
`Claim 41
`
`Independent .claim 41 is directed to an-indexing method and. recites a nu.mber ofmethod
`
`steps relating to aspects ofthe indexing (e.g., the data :indexing program (62)) described in the-
`
`' 352 patent specification, As expiained below and detailed in Exhibit 1, Salton 1963 discloses.
`
`each of these claim elements and thus anticipates claim 41. In particular,. as: summarized in ·
`
`Table 1-B below and. explained in more detail further below, Salton 1963 discloses.the elements
`that. were the basis ofthe PTO's allowance ofclaim 41, .characterized by the PTO as "five
`
`numerical representations involving references, patterning, Euclidean distanc.es, and similarity."
`
`

`

`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`Page 17
`
`Table 1-B
`
`first numerical
`representation
`
`Salton 1963 at, e.g., 447 (m-dimensionallogical vector X1
`); 446; n.l ("A
`citation index . .. ")
`
`sec<)nd numerical
`representation
`
`Salton 1963 at, e.g., 450 (including Fig. 5): CITED and CITING
`similarity matrices; citation incidence matrix X
`
`third numerical
`representation
`
`Salton 1963 at, e.g., 448 ("matrices X', X'', etc., exhibiting respectively
`the cxistenqe of paths of length two, three, and so on"); 4.50 (discussing
`additional citation similarity matrices)
`
`fourth numerical
`representation
`
`Salton 1963 at, e,g., 448: "the cosine measure can again be used to
`obtain a row or column similarity matrix R' from cit'!-tion .matrix X', or
`R" from X", and so on."
`
`fifth numerical
`representation
`
`Salton 1963 at, e.g., 450-451 (including Fig. 5-6): "Eight cross-
`correlation operations were performed by correlating each of the eight
`citation similarity ma:tricies with the term document similarity matrix
`TDCMP."
`
`Claim 45
`
`Salton 1_963 discloses "analyzing" the index to identify a pool of objects, whiqh
`
`comprises "interpreting," "identifying," "quantifying" and ''ranking" sub-steps, as claimed. As
`
`detailed in Exhibit 1, the Salton 1963 reference discloses each of these features-, for example, at
`pages 442-452. In p.articular, the Salton 1963 reference discloses identifying objects that are
`referred to by the selected object and identifying objects that refer to the selected object, which
`the PTO believed to be missing from the prior art during examination ofissued claim 45. These
`
`"identifying" features can be found, for example, at page 445 (discussing ··•usable content
`
`indicators"), page 446 (see n.l, discussing a "citation index" and a "reference index") and page
`
`450 (discussing the calc.ulation.of"CITED and CITING similarity matrices/' a "TDCMP
`
`similarity matrix" and "CTD2, CTD3, CTD4, and CNG2, CNG3, and CNG4" shntlarity
`
`matrices).
`
`

`

`Application/Control Number: 90/011 ,010
`Art Unit: 3992
`
`Page 18
`
`Since Salton 1963 appears to provide new technological teachings that were missing in
`
`the prior art during the initial examination of the '352 patent and was not previously considered
`
`during the initial examination, Salton 1963 does raise a substantial new question of patentability
`
`for claims 26-42, 44, and 45.
`
`12.
`
`SNO 4-Tapper for claims 26-42,44, and 45
`
`The Request (pp. 71-77) alleges that Tapper, which is directed to the use of citation
`
`vectors for legal' information retrieval, raises a substantial new question of patentability for
`
`claims 26-42, 44, and 45. Specifically, the Request identifies Tapper as teaching the limitations
`
`that previously distinguished the claims from Gallant and Bodick during the initial examination:
`
`

`

`Application/Control Number: 90/011 ,010
`Art Unit: 3992
`
`Page 19
`
`Claim 26
`
`Tapper discloses creating a first numerical representation for each identified object: in the
`database based upon the object's direct relationshi~ with other objects in the database, and
`storing the frrst numerical representations for use in computerized searching, as required by
`claim 26. Discussion of these features can be found throughout Tapper. For example, at page
`135, Tapper discusses "citation vectors." At page 136, .Tapper discusses "a computerised System
`of cita:tion vectors," "synonymity" and "page referencing." Because Tapper contemplates a
`"computerised legal information retrieval system," it necessarily teaches "storing the first
`numerical representations forusein computerized searching," as claimed (p~ge '135).
`Notably, Tapper discloses the feature that the PTO believed to t>e missing from the
`prior art during examination of issued claim 26 - namely, analyzing the. first numerical
`representations for indirect' relationships existing between or among objects in the
`d~tabase. Tapper discloses this feature, for example, at pages 142,..43- (see discussion of
`'·'Correlation algorithm"), 143-44 (see discussion of"Clusteranalysis"), 147 (see Table 2), 148
`(discussing the "7, 5Y' document pair in Table 2), 150 (see Table 3), 153 (see discussion of
`"Coherence") and 160.
`In particular, at page 142, Tapper discloses that "even a small area of common