Ex Parte Andrews et al

Patent Trial and Appeal Board

Nov 30, 2012

10186039 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/186,039 06/28/2002 Donna B. Andrews MFCP.97269 5264
45809 7590 12/03/2012
SHOOK, HARDY & BACON L.L.P.
(MICROSOFT CORPORATION)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
ADESANYA, OLUJIMI A
ART UNIT PAPER NUMBER
2658
MAIL DATE DELIVERY MODE
12/03/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte DONNA B. ANDREWS, DAVID S. KOON, GERARD
NEUFELD-KAISER, CHRISTINA STORM, SUSAN E. DZIADOSZ,
JENNY T. LAM, DAVID R. PARKER, JOHN M. TIPPETT, TJEERD
HOEK, MARK R. LIGAMERI, CHRISPTOPHER T. SAGER, KANWAL
VEDBRATZAR, GERALD PAUL JOYCE, MARC M. MILLER, TONY E.
SCHREINER, ERIC B. WATSON, ADRIAN C. KLEIN, VIDYA R.
NALLATHIMMAYYAGARI, and BEVERLY H. SOBELMAN
_____________

Appeal 2010-005267
Application 10/186,039
Technology Center 2600
______________

Before KAYLAN K. DESHPANDE, BRYAN F. MOORE, and MICHAEL
J. STRAUSS, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

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This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-4, 6-20, 22, 23, 25-48, and 81-98. Br. 2. Claims 5, 21,
24, 49-80 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). Id.
We AFFIRM the Examiner’s rejection of these claims.

INVENTION

The invention is directed to a system and method for enabling a
computer to more effectively perform an action in response to natural
language input from a user. See Spec. [0003].

Claim 1 is representative of the invention and is reproduced
below:
1. A method for directing a computer including at least one text
processor to perform an action in response to natural language user
input, comprising:
receiving into an address control interface of an Internet
browser application the user input from a user;
parsing the user input to determine for the user input an input
type, wherein said input type is at least one of a keyword type or a
content identifier type, wherein said keyword type is utilized when
said user input includes at least one of a plurality of commands to be
performed by said computer, wherein said content identifier type is
utilized when said user input references an item of content;
determining whether the input type corresponds to a single
recognized action performable by the computer and, if so, directing
the computer to perform the action, wherein said determining for said
keyword type includes accessing a client keyword cross-reference to
determine whether the user input contains a word in the client
keyword cross-reference, and wherein said determining for said
content identifier type includes identifying content and directing the
computer to access said content;
submitting, if the user input type does not correspond to a
single recognized action, the user input to the at least one natural
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language text processor to obtain at least one interpretation
corresponding to an action performable by the computer and, if the at
least one interpretation is obtained, returning the at least one
interpretation to the user, wherein said returning the at least one
interpretation includes:
merging the at least one interpretation into a single list of
selectable interpretations; and
displaying in said Internet browser application the single
list of selectable interpretations to the user; and
submitting, if the at least one interpretation is not obtained and
if the user input type does not correspond to a single recognized
action, the user input over the Internet to an Internet web search
engine to obtain from said Internet web search engine a listing of one
or more web pages and displaying in said Internet browser application
said listing to the user in an ordering determined by the relevancy of
said one or more web pages to said user input.

REFERENCES
Luciw US 5,608,624 Mar. 4, 1997
Bauer US 5,877,759 Mar. 2, 1999
Liddy US 5,963,940 Oct. 5, 1999
Kennewick US 2004/0044516 A1 Mar. 3, 2004
Elworthy US 6,937,975 B1 Aug. 30, 2005

REJECTIONS AT ISSUE
Claims 1-4, 6-13, 15-20, 22, 23, 25-29, 31-45, 47, 48, and 81-93, 95-
97 stand rejected under 35 U.S.C. 103(a) as being unpatentable over the
combination of Elworthy, Kennewick, Liddy, and Bauer. Ans. 3-17.
Claims 14, 30, 46, 94 and 98 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over the combination of Elworthy, Kennewick, Liddy,
Bauer and Luciw. Ans. 17-19.

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ISSUE
Did the Examiner err in combining Elworthy, Kennewick, Liddy, and
Bauer?

ANALYSIS
We discern no error in the Examiner’s rejection of claims 1-4, 6-20,
22, 23, 25-48, and 81-98. Appellants argue all claims together based on
asserting that the references were improperly combined, rather than arguing
specific claim limitation, therefore all of the rejected claims fall together.
Appellants argue that “[t]he present rejection impermissibly relies on
hindsight reasoning that discounts the novel combination of processing steps
recited by the Appellants' claims.” App. Br. 11. Appellants also argue
“Final Office Action provides no explanation how the prior art as a whole
contains some implicit or explicit reason, suggestion or motivation for a
person of ordinary skill to combine or modify the references in the proposed
way.” Id (emphasis omitted). Finally, Appellants argue the “cited
references are not within the field of Appellants’ endeavor and are not
reasonably pertinent to the problem with which Appellants were concerned.”
Id. In other words, Appellants argue that the cited references are not
analogous art. We are not persuaded by these arguments.
As to hindsight, it must be recognized that any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning. But so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made,
and does not include knowledge gleaned only from the applicant’s
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disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971).

Upon reviewing the record before us, we find that the Examiner’s
stated suggestions for modifying Elworthy, Kennewick, Liddy, and Bauer
come from within the references themselves and the knowledge of one of
ordinary skill in the art at the time of the claimed invention. That is, we find
that an ordinarily skilled artisan in the art, at the time of the claimed
invention, would have combined Elworthy, Kennewick, Liddy, and Bauer
because the proffered combination would “speed[] up processing time and/or
accuracy” Ans. 4-5 (citing Kennewick, [0107]) and would “display the
results in a more compact manner, allowing the user to view the results all at
once rather than looking through numerous lists, and assisting the user in
making a quicker decision on which interpretation to select” Ans. 6 (citing
Liddy, Fig. 19, element 420a, col. 34, line 67 - col. 35, lines 1-2)
(“permitting the system to adjust to changing ambient light patterns.”) and
one would be motivated to consult the Internet web search engine only when
necessary, such as when the user input type does not correspond to a single
recognized action. Ans 7. (citing Bauer col. 12, line 53 - col. 13, line 8). We
note that Appellants admit that Elworthy, Kennewick, and Liddy relate to
processing natural language input and Bauer relates to the submission of an
input to a search engine. Br. 11-12.
We also find that Elworthy, Kennewick, Liddy, and Bauer are
analogous art. “Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
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inventor's endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.” In re Klein, 647
F.3d 1343, 1348 (Fed. Cir. 2011).
Appellants assert the prior art does not relate to the field of endeavor
of the invention, i.e. universal user input processing. Br. 12. Because
Appellants admit that Elworthy, Kennewick, and Liddy relate to processing
natural language input and Bauer relates to the submission of an input to a
search engine (Br. 11-12), those references are within the Appellants’ stated
field of endeavor, universal user input processing, because Elworthy,
Kennewick, and Liddy relate to natural language inputs and natural language
inputs are a type of input that a universal input processor would handle.
Additionally, Bauer is concerned with managing multiple inputs, such as
voice, pen, or keyboard input (Bauer, col. 12:35-51), to a search engine, thus
Bauer deals with a universal input. See Comaper Corp. v. Antec, Inc., 596
F.3d 1343, 1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658-59
(Fed. Cir. 1992)). Therefore, we find that the cited references are analogous
prior art.
For the reason stated above, we find no error in the Examiner’s
decision to reject claims 1-4, 6-20, 22, 23, 25-48, 51, 65-68, and 70-98 under
35 U.S.C. 103(a).
DECISION
The Examiner’s decision to reject claims 1-4, 6-20, 22, 23, 25-48, and
81-98 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2011).
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AFFIRMED

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