Ex Parte Krishnan et al

Patent Trial and Appeal Board

Jul 11, 2018

13630105 (P.T.A.B. Jul. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/630, 105 09/28/2012
136582 7590 07/13/2018
STEVENS & SHOWALTER, LLP
Box AVAYA Inc.
7019 Corporate Way
Dayton, OH 45459-4238
FIRST NAMED INVENTOR
Parameshwaran Krishnan
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
512097-US-NP/AVA048PA 7687
EXAMINER
PEREZ FUENTES, LUIS M
ART UNIT PAPER NUMBER
2481
NOTIFICATION DATE DELIVERY MODE
07/13/2018 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):
pto@sspatlaw.com
pair_avaya@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte P ARAMESHW ARAN KRISHNAN and
AVRAM LEVI
Appeal2017-008475
Application 13/630, 105 1
Technology Center 2400
Before BRUCE R. WINSOR, JON M. JURGOV AN, and
NABEEL U. KHAN, Administrative Patent Judges.
JURGOV AN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, constituting the only claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part and enter new grounds of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b ). 2
1 Appellants identify Avaya, Inc. as the real party in interest. (App. Br. 2.)
2 Our Decision refers to the Specification ("Spec.") filed September 28,
2012, the Final Office Action ("Final Act.") mailed June 30, 2016, the
Appeal Brief ("App. Br.") filed November 23, 2016, the Examiner's Answer
("Ans.") mailed March 23, 2017, and the Reply Brief ("Reply Br.") filed
May 23, 2017.
Appeal2017-008475
Application 13/630,105
CLAIMED INVENTION
The claims are directed to identifying a visitor and his/her associated
value to an enterprise, and providing suggestions for conducting a
conversation with the visitor to a person ( e.g., salesperson) affiliated with
the enterprise. Spec. ,r,r 44, 51-53, and 55. Claim 1, which is representative
of the claimed invention, is reproduced below:
1. A method to provide contextual services, comprising:
capturing, by a surveillance device, a potentially
identifying characteristic of a first person within a predetermined
distance of a monitored space, wherein the monitored space
corresponds to a location of a second person affiliated with an
enterprise;
receiving, by a computer, the potentially identifying
characteristic from the surveillance device;
comparing, by the computer, the potentially identifying
characteristic with a plurality of different identifying
characteristics stored in a database, the database comprising at
least one respective identifying characteristic for each of a
plurality of potential visitors to the monitored space;
identifying, by the computer, an identity of the first person
based on the potentially identifying characteristic matching one
of the respective identifying characteristics in the database, to
produce an identified visitor;
providing, by the computer to a communication device
associated with the second person, an information related to the
identified visitor, wherein the information comprises a value of
the identified visitor, wherein the value indicates value of the
identified visitor to the enterprise, in a business sense, based
upon a business intelligence;
capturing, by the surveillance device, aspects of a
conversation between the second person and the identified
visitor; and
providing, by the computer to the communication device
associated with the second person, one or more real-time
suggestions for conducting the conversation.
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App. Br. 19 ("Claims App.").
REJECTIONS
Claims 1 and 14 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement. Final Act. 2.
Claims 1, 14, and 20 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter applicant regards as the invention. Final Act. 2, 4,
5.
Claims 1-20 stand rejected under 35 U.S.C. § I03(a) as obvious based
on Kanevsky (US 7,548,874 B2, June 16, 2009) and Von Kaenel (US
2010/0114941 Al, May 6, 2010). Final Act. 5-9.
ANALYSIS
§ 112 First Paragraph Rejection
The Examiner rejected, for lacking enablement, the claimed "value of
the identified visitor [ to the enterprise], based on business sense, that
depends upon a business intelligence." Final Act. 2. Appellants address this
rejection for the first time in their Reply Brief because they "inadvertently
overlooked" the rejection in the Final Office Action. Reply Br. 2-3.
Appellants were required to make a showing of good cause for their
arguments regarding the § 112, first paragraph rejection to be considered at
this late stage of the appeal. 37 C.F.R. § 41.4I(b)(2). Absent a showing of
good cause, we do not consider these arguments because the Examiner has
not had an opportunity to consider and respond to them. Ex parte Borden,
93 USPQ2d 1473, 1475 (BPAI 2010) (informative).
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Accordingly, we summarily sustain the rejection of claims 1 and 14
under§ 112, first paragraph. However, our determination is without
prejudice to filing a request for continued prosecution or a continuation
application and presenting arguments or amendments to address this claim
limitation in further prosecution.
Implicit in the rejection of independent claims 1 and 14 under§ 112,
first paragraph, is the rejection of their dependent claims 2-13 and 15-20 as
they incorporate all of the limitations of the independent claims. However,
the Final Office Action made no explicit rejection of the dependent claims,
so we enter a new ground of rejection pursuant to our authority under 37
C.F.R. § 41.50(b) as to the dependent claims only.
§ 112 Second Paragraph Rejection
The Examiner rejects claims 1 and 14 under 35 U.S.C. § 112, second
paragraph as being indefinite for reciting "value of the identified visitor,
based on business sense, that depends upon a business intelligence."
Appellants do not address this ground of rejection in their Appeal Brief, but
attempt to do so in their Reply Brief without a showing of good cause.
Reply Br. 3-5. Again, we do not consider such argument to which the
Examiner has not had an opportunity to respond. Accordingly, we
summarily sustain the Examiner's rejection on this ground. 37 C.F.R.
§ 41.41 (b )(2 ). However, our determination is without prejudice to
submitting arguments or amendments to address this limitation in further
prosecution.
Claim 1 recites "comparing, by the computer, the potentially
identifying characteristic with a plurality of identifying characteristics stored
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in a database." See claim 1, supra. Independent claim 14 recites a similar
limitation. The Examiner states this claim limitation "lacks antecedent basis
regarding claim to draw functionality showing data comparison" and
determines that the Specification does not disclose any "data comparison."
Final Act. 4 ( citing Spec.,r,r 40, 44, 57). In the Answer, the Examiner states
the limitation is "not sufficiently precise and definite resulting in no
boundaries and/or clarity of the claim feature." Ans. 8. The Examiner also
states that "one skilled would not immediately be technically enabled as to
what the ["potentially identifying characteristic" or "real-time suggestions
for conducting aspects of the conversation"] functionality would yield a
[computer], and would have to resort to a large amount of experimentation
absent the guidance of the particular functions found."
We interpret the Examiner's statements to mean that the claimed
"comparing ... the potentially identifying characteristic" is not mentioned in
the Specification, so the claims do not particularly point out and distinctly
claim the subject matter applicant regards as the invention, as required by 35
U.S.C. § 112, second paragraph. 3 Appellants cite to paragraphs 51 and 55 of
the Specification as providing support for this limitation. App. Br. 5, 9.
Paragraph 55 states "[t]he analysis engine may also collect the voice samples
and match them to the voiceprint in the database." The word "match" in this
sentence implies comparison between voice samples and voice prints. In
this regard, the MPEP provides
3 From the context, we interpret the Examiner's use of "antecedent basis" to
refer to an earlier mention in the Specification, not to the failure to mention a
recited term earlier in a claim.
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[T]he failure to provide explicit antecedent basis for terms does
not always render a claim indefinite. If the scope of a claim
would be reasonable ascertainable by those skill in the art, then
the claim is not indefinite.
MPEP § 2173.05(e) (citingExpartePorter, 25 USPQ2d 114, 1145 (BPAI
1992) ("controlled stream of fluid" provided reasonable antecedent basis for
"the controlled fluid.") We conclude a person of ordinary skill reading the
Specification would understand voice samples are compared with voice
prints in the database to match them. Accordingly, we do not sustain the
Examiner's rejection with respect to the comparison step in claim 1.
The Examiner's comments (Ans. 8-9) concerning "potentially
identifying characteristic" and "real-time suggestions for conducting aspects
of the conversation" not being enabled and requiring a large amount of
experimentation are issues that arise under 35 U.S.C. § 112, first paragraph,
not second paragraph. We do not address the Examiner's§ 112, first
paragraph findings concerning these claim limitations because Appellants
have not been provided sufficient notice of this ground of rejection as
required under 35 U.S.C. § 132(a).
The Examiner also rejects the limitation "aspects of the conversation"
in claim 1 because the Specification does not mention the limitation, and the
limitation lacks clarity as to what "aspects" means in a technical sense.
Final Act. 4. Appellants rely on paragraphs 51 and 57 of the Specification to
support this limitation. App. Br. 6, 10; Reply Br. 6-7. Language in a claim
is unclear if it is "ambiguous, vague, incoherent, opaque, or otherwise
unclear in describing and defining the claimed invention .... " In re
Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). The specification may
support claimed terminology for purposes of 35 U.S.C. § 112, second
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paragraph by providing examples of what is meant by the claimed term.
Sonix Technology Co., Ltd. v. Publications Int 'l, Ltd., 844 F.3d 1370, 1379
(Fed. Cir. 2017).
Reviewing paragraph 57 of the Specification, we find several
examples of what is meant by the claimed "aspects of the conversation" set
forth there. Such examples include "providing too much information,"
"asking unusual questions," and "business offers." We find these examples
in paragraph 57 render the claimed limitation definite. Accordingly, we do
not sustain the Examiner's rejection on this basis.
Claim 1 recites "providing, by the computer to the communication
device associated with the second person, one or more real-time suggestions
for conducting the conversation." App. Br. 19. The Examiner states that the
Specification "lacks information about how to generate and use this
particular feature," and finds "it is clear that it is a 'human operator' the sole
responsible to generate and provide suggestions, and not a 'computer
algorithm."' Final Act. 4. The Examiner also states this limitation lacks
"technical fundamentals ... and/or patentable weight as per 'collecting',
'parsing' and 'comparing' audio-visual data may be easily accomplish by a
simple human operation, and being well-known features in the art, way
before the invention was made." Ans. 8-9.
The Examiner's articulation of the rejection is not strictly limited to
§ 112, second paragraph, but appears to invoke concepts under§§ 101-103
and 112, first paragraph. We limit our discussion here to only the parts of
the rejection pertaining to§ 112, second paragraph, as that is what the
Examiner identified as the statutory basis for the rejection pursuant to 35
U.S.C. § 132(a).
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Appellants cite to paragraph 44 of the Specification as providing
support for the claimed limitation. App. Br. 6, 8; Reply Br. 7-8. Paragraph
44 mentions "information, feedback, and warnings" constituting "one or
more real-time suggestions for conducting the conversation" as claimed.
Furthermore, the Specification states the claimed "suggestions" may
originate from a human or device or both. See Spec. ,r 52 ("Value may be
determined ... based upon business intelligence and analysis provided by
the analysis engine"); Spec. ,r 57 ("The analysis could be entirely automated,
or may be escalated to a human supervisor during or after an initial match");
("supervisory review may determine whether booth staffers may be
providing too much information, and may provide a real-time warning");
("A supervisor or expert may be able to guide the booth staffer's discussion
with the visitor."); and Fig. 1 (showing client devices 160, 170 connected by
network 150). We find these and other statements in the Specification
render the claimed limitation definite for purpose of 35 U.S.C. § 112, second
paragraph.
The Examiner states that the Specification lacks information about
how to generate and/or use the feature of "data collection, based at least in
part on privacy concerns." Final Act. 4. Reviewing the Claims Appendix
(App. Br. 19-22), we find no claim with such language. Although the Final
Action mentions claim 20 (Final Act. 4), this claim recites "the surveillance
device comprises an RFID detector" (App. Br. 22) and does not relate to
data collection based on privacy concerns. Also, the Examiner's rejection
appears to be based on concepts drawn from§ 112, first paragraph, not
§ 112, second paragraph. Accordingly, we do not sustain the Examiner's
rejection of claim 20 on this basis.
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Implicit in the rejection of independent claims 1 and 14 under§ 112,
second paragraph, is the rejection of their dependent claims 2-13 and 15-20
as they incorporate all of the limitations of the independent claims.
However, the rejection of the dependent claims due to the defects in
independent claims 1 and 14 was not made explicit in the Final Office
Action, so we enter a new ground of rejection pursuant to our authority
under 37 C.F.R. § 4I.50(b) as to the dependent claims only.
§ 103 (a) Rejection
Appellants state that claim 1 recites capturing potentially identifying
characteristics of a visitor, and separately recites capturing a conversation
once that visitor is an identified visitor. App. Br. 14. Accordingly,
Appellants argue Kanevsky does not teach or suggest "capturing, by the
surveillance device, aspects of a conversation between the second person
and the identified visitor," as recited in claim 1. Id.
Appellants also argue claim 1 specifically relates to a conversation
that is taking place between a second person and the identified visitor and
that what is provided by the computer is one or more real-time suggestions
for conducting that conversation. Id. at 14--15. Appellants contend causing
the display of a directed advertisement, as taught by Kanevsky, does not
teach or suggest "providing, by the computer to the communication device
associated with the second person, one or more real-time suggestions for
conducting the conversation," as recited in claim 1. Appellants further
contend Von Kaenel was not relied on by the Examiner as teaching these
claim limitations, and, in any case, fails to remedy Kanvesky's
shortcomings.
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We agree with Appellants that Kanevsky does not disclose the
claimed limitations. App. Br. 13-15; Reply Br. 8-10. Kanevsky mentions
the use of a biometric sensor 205 and microphone 206 to identify a user
(7:8-28). However, the cited parts of Kanevsky do not mention capturing
aspects of a conversation by a surveillance device after a user is identified,
or providing real-time suggestions for conducting the conversation, as
claimed. "Rejections on obviousness cannot be sustained with mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." KSR Int'!. Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Thus, we agree
with Appellants that the Examiner has not shown these claim limitations to
be taught or suggested by the prior art.
Having decided this issue on this basis, we do not reach Appellants'
remaining argument that the Examiner has failed to show motivation to
combine the references.
DECISION
We summarily affirm the Examiner's rejection of claims 1 and 14
under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement.
We enter a new ground of rejection for dependent claims 2-13 and
15-20 under 35 U.S.C. § 112, first paragraph, due to their dependency from
rejected independent claims.
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We summarily affirm the Examiner's rejection of claims 1 and 14
under 35 U.S.C. § 112, second paragraph, but reverse the separate rejection
of claim 20.
We enter a new ground of rejection of dependent claims 2-13 and 15-
20 under 35 U.S.C. § 112, second paragraph, due to their dependency from
rejected independent claims.
We reverse the Examiner's rejection of claims 1-20 under 35 U.S.C.
§ 103(a).
Regarding the affirmed rejection(s), 37 C.F.R. § 4I.52(a)(l) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F .R. § 41.50(b )(1 ), in order to preserve the right to
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seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejection, the effective date of the affinnance is deferred until
conclusion of the prosecution before the Examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.
As to the affirmed rejections that are not new grounds, no time period
for taking any subsequent action in connection with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. §§ 4I.50(f),
4I.52(b ).
AFFIRMED-IN-PART
37 C.F.R. § 4I.50(b)
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