Microsoft Technology Licensing, LLCDownload PDFPatent Trials and Appeals BoardMar 18, 20222021000858 (P.T.A.B. Mar. 18, 2022) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/355,371 11/18/2016 Deepinder S. Gill MST-0145-01- US/400405USNP 9352 141674 7590 03/18/2022 Faegre Drinker Biddle & Reath LLP (Microsoft) 1500 K Street, N.W. Suite 1100 Washington, DC 20005 EXAMINER THIEU, BENJAMIN M ART UNIT PAPER NUMBER 2441 NOTIFICATION DATE DELIVERY MODE 03/18/2022 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): patentdocketingdvr@faegredrinker.com usdocket@microsoft.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DEEPINDER S. GILL, KARUNA KONERU, SURYANARAYANA SHASTRI, ARUN KUMAR, MANIKANTH IMMIDI, SIBABRATA PALADHI, and ANANTH JANAKIRAM BV Appeal 2021-000858 Application 15/355,371 Technology Center 2400 Before ERIC B. CHEN, MICHAEL J. STRAUSS, and JAMES B. ARPIN, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1-4, 6-12, 14-18, and 21-24. Final Act. 1.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42 (2012). Appellant identifies the real party in interest as Microsoft Technology Licensing, LLC. Appeal Br. 2. 2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed June 8, 2020) and Reply Brief (“Reply Br.”, filed November 16, 2020); the Final Office Action (“Final Act.,” mailed November 29, 2019), and the Examiner’s Answer (“Ans.,” mailed September 14, 2020); and the Specification (“Spec.,” filed November 11, 2016). Rather than repeat the Examiner’s findings and Appellant’s contentions in their entirety, we refer to these documents. Appeal 2021-000858 Application 15/355,371 2 STATEMENT OF THE CASE The claimed apparatus and method relate to “providing reminder completion assistance in a group conversation. The process comprises: analyzing the content and context of a group conversation; identifying a potential implicit action; and suggesting a reminder based on the implicit action.” Spec. ¶ 3. As noted above, claims 1-4, 6-12, 14-18, and 21-24 are on appeal. Claims 1, 9, and 16 are independent. Appeal Br. 18 (claim 1), 19 (claim 9), 20-21 (claim 16) (Claims App.). Claims 2-4, 6-8, and 21-23 depend from claim 1; claims 10-12, 14, and 15 depend from claim 9; and claims 17, 18, and 24 depend from claim 16. Id. at 18-22. Claims 5, 13, 19, and 20 are canceled. Id. at 18, 20, 21. Claim 1, reproduced below with disputed limitations emphasized, is illustrative. 1. A method, comprising: extracting user preference data from data associated with prior and current interactions of a user with applications accessed with a computing device and data associated with the computing device [(the “extracting” limitation)]; analyzing content of a group conversation, the group conversation including the user; based on the analysis of the content of the group conversation and the user preference data, identifying an implicit action [(the “identifying” limitation)]; and setting a reminder based on the implicit action. Id. at 18 (emphases added). Each of independent claims 9 and 16 recites limitations corresponding to the disputed limitations of claim 1. Id. at 19- 21. Appeal 2021-000858 Application 15/355,371 3 REFERENCES AND REJECTIONS The Examiner relies upon the following references: Name3 Reference Published Filed Singh US 2008/0082651 A1 Apr. 3, 2008 Sept. 28, 2006 Pasquero US 2013/0110940 A1 May 2, 2013 Oct. 27, 2011 Tomkins US 9,304,974 B1 Apr. 5, 2016 Dec. 31, 2013 McCray US 2017/0346769 A1 Nov. 30, 2017 May 27, 2016 The Examiner rejects: (1) claims 1-3, 6-11, 14, 15, and 21-23 under 35 U.S.C. § 103 as obvious over the combined teachings of Pasquero, McCray, and Singh (Final Act. 3-10); and (2) claims 4, 12, 16-18, and 24 under 35 U.S.C. § 103 over the combined teachings of Pasquero, McCray, Singh, and Tomkins (id. at 10- 15). We review the appealed rejection for error based upon the issues identified by Appellant, and in light of the contentions and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Arguments not made are forfeited.4 Unless otherwise indicated, we adopt the Examiner’s findings in the Final Office Action, the 3 All reference citations are to the first named inventor only. 4 See In re Google Tech. Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020) (“Because Google failed to present these claim construction arguments to the Board, Google forfeited both arguments.”); 37 C.F.R. § 41.37(c)(1)(iv) (2013) (“Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.”). Appeal 2021-000858 Application 15/355,371 4 Advisory Action, and the Answer as our own and add any additional findings of fact for emphasis. We address the rejections below. ANALYSIS The Examiner rejects claim 1 as obvious over the combined teachings of Pasquero, McCray, and Singh. Final Act. 3-5. With respect to claim 1, the Examiner finds Pasquero’s disclosure of providing a reminder from within an instant messaging application teaches or suggests a method that analyzes content of a group conversation, identifies an implicit action, and suggests a reminder based on the implicit action. Id. at 3 (citing Pasquero Abstr.; ¶¶ 38, 53-56, 60-62; Figs. 3, 6). The Examiner relies on McCray’s disclosure of determining an intent of a message received by a mobile device and setting a corresponding reminder message for teaching or suggesting “extracting one or more user preferences with a computing device; analyzing the group conversation including at least on interaction associated with the user; and based on the analysis and user preference, setting a reminder on the action.” Id. (citing McCray ¶¶ 9, 13, 27, 35; Figs. 1, 2, 4A-B). Nevertheless, the Examiner finds the combined teachings of Pasquero and McCray fail to disclose the entireties of (i) the extracting limitation of extracting user preference data from data associated with prior and current interactions of a user with applications accessed with a computing device and data associated with the computing device, and (ii) the identifying limitation of identifying a user action based on the content and user preference data. Id. at 4. The Examiner finds, however, that Singh’s disclosure of generating a task reminder based on (i) a task location and historical user travel information (i.e., a novelty rating) and (ii) a distance between the task location and the current position of the user teaches or Appeal 2021-000858 Application 15/355,371 5 suggests the extracting limitation. Id. at 4 (citing Singh Abst.; ¶¶ 7, 30, 33- 34; Fig. 5). Addressing the identifying limitation, the Examiner finds Singh teaches or suggests generating reminders for the user based on the location of the user device and the analyzed content message. Id. The Examiner further determines that sufficient reason existed to combine the teachings of the references. Id. at 4, 5. Appellant contends the Examiner errs in finding the combined teachings of Pasquero, McCray, and Singh teach or suggest extracting and identifying limitations of claim 1. Appeal Br. 7-10. Appellant presents two principle arguments: (i) first, Appellant argues that Singh fails to teach the extracting limitation because, according to Appellant, Singh’s novelty ratings are based on passively obtained historical travel information, not prior and current interactions with applications on the user’s mobile device (id. at 9)5; and (ii) second, Appellant argues, because the prior art fails to teach the extracting limitation, it likewise fails to teach the identifying limitation (id. at 10). We are not persuaded the Examiner errs for the reasons discussed below. 5 Although, in addressing Singh, the Appeal Brief states, “[t]he cited reference of Singh does teach that which Pasquero and McCray lack,” (Appeal Br. 9, 12, 14 (emphasis added)), the text that follows those statements alleges deficiencies of Singh’s teachings. Accordingly, we interpret the statements to include a clerical error, and Appellant intended to state that “Singh does not teach that which Pasquero and McCray lack.” Appeal 2021-000858 Application 15/355,371 6 Extracting User Preference Data In connection with the recited extracting limitation, Appellant argues, neither [Singh’s] historical travel information nor the novelty ratings are derived or generated using prior and current user interactions with applications on the user’s mobile communication device. Instead, the historical travel information appears to be based GPS information acquired passively by the user’s mobile communication device (e.g., without user interaction with an application). That is, Singh makes clear that: Each device 110 includes circuitry that can track a position of the device 110. For example, the device 110 can include a position locator system 112 that tracks the position of the device 110. The position locator system 112 can be the well known global positioning system (GPS) that utilizes satellites 140 (FIG. 1) to determine the device’s longitudinal and latitudinal position. Alternatively, the position locator system 112 can be configured to utilize one or more base stations 130 within communication range to determine the device’s location. See e.g., Singh at ¶ [0023]. Further, the novelty ratings referenced by Singh are based on the historical travel information and are, thus, also based on information from the position locator system (e.g., GPS). Accordingly, Singh does not provide any teaching related to “extracting user preference data from data associated with prior and current interactions of a user with applications accessed with a computing device” as claimed. Appeal Br. 9-10. The Examiner responds, directing attention to Appellant’s disclosure of “various user preference data that can be extracted” including a user’s home and work locations. Ans. 3 (citing Spec. ¶¶ 16, 20). The Examiner finds: Singh discloses the ability to extract and store user preference Appeal 2021-000858 Application 15/355,371 7 data (i.e. current and historical travel information (Singh; Fig. 2; [0020, 0023]). As a user is utilizing their device, the user preference data (i.e. current and historical/prior travel location), can be extracted and stored (Singh; [0024]). Based upon the stored user-specific information, identified task information, and the extracted preference data (i.e. current and historical/prior travel information), reminders can be generated for the user (Singh; Fig. 5; [0027, 0030-0034]). Id. at 4. Thus, according to the Examiner, “Singh does disclose the cited features in view of the [S]pecification which enables the system to extract the user preferences based on the current and past interactions of the user device.” Id. Appellant responds, arguing “while Appellant’s specification makes clear that a user preference may include a location, such as a user’s work location or a user’s home location, nowhere does Appellant’s specification indicate that a mere disclosure of a location turns the location into a user preference.” Reply Br. 2. According to Appellant “under a broadest reasonable interpretation, interpreting current or historical travel information as user preference data would essentially disregard the ordinary meaning of the claimed term ‘user preference’ as understood by one having ordinary skill in the art.” Id. at 2-3. Appellant further reasserts the argument that Singh’s GPS information is acquired passively, not based on interactions of a user with an application. Id. at 3. Appellant’s argument is unpersuasive of reversible Examiner error. Appellant’s Specification discloses, user signals may include, for example, the user’s browsing history, the user’s search history, the user’s application usage, user information stored on local or cloud drives, the user’s location, the user’s contact list, who the user has been or is currently chatting with, and who the user has called or is Appeal 2021-000858 Application 15/355,371 8 currently calling. Next, user preferences are extracted from the user signals (stage 220). Using machine learning, data mining, or statistical reasoning, for example, the user’s preferences are extracted. Examples of user preferences may be, for example, the user’s home location, work location, family members, and contacts from his contact list. The user preferences are then stored (stage 230). Spec. ¶ 20 (emphases added). Thus, a broad, but reasonable, interpretation of a user preference includes a location. Even interpreting the argued step of extracting user preference data to require that the data be acquired by interaction of a user with applications, Appellant fails to provide a definition for a user interaction or description of what is required of the recited interactions. Furthermore, we do not ascertain from the Specification any description of the argued interactions of a user. Thus, based on the disclosed examples and under a broad, but reasonable, interpretation, the recited interactions include use of the device by a user by, for example, activating a mobile communication device, initiating/running a reminder application, or by transporting the device to a location whereby a GPS geolocating capability identifies a location. We are not persuaded by Appellant’s argument that “interpreting current or historical travel information as user preference data would essentially disregard the ordinary meaning of the claimed term ‘user preference’ as understood by one having ordinary skill in the art” (Reply Br. 2-3) because Appellant’s argument is not supported by sufficient evidence. It is well settled that mere attorney’s arguments and conclusory statements, which are unsupported by factual evidence, are given little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). An argument made by Appeal 2021-000858 Application 15/355,371 9 counsel in a brief does not substitute for evidence lacking in the record. Estee Lauder, Inc. v. L’Oréal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). Attorney argument is not evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can such argument take the place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977). Singh discloses several user activities associated with using a task reminder including “storing user specified task information that includes a task and a task location” (Singh, Abstr.); transporting a mobile device to a current position of the user and thereby accumulate historical travel information (id. ¶¶ 7-8); “the exemplary process begins when user-specified task information 224 is received and stored in the data store 220” (id. ¶ 31); “user 120 specifies . . . task information 224 using a network enabled device, such as the mobile communication device 110, and sends the task information 224 to reminder module 310” (id. ¶ 32). Thus, Singh’s disclosure of providing location and task data in response to user interactions with a user application (i.e., user transport of the device and inputting task information) teaches or suggests data associated with interactions of a user with applications accessed with a computing device and data associated with the computing device. Moreover, Singh’s disclosure of historical user travel information (Singh, Abstr., ¶ 24) and a current position of a user (id. at Abstr. ¶ 27) teaches or suggests data associated with prior and current interactions of a user with applications accessed (e.g., a task reminder including GPS geolocating). Accordingly, the Examiner does not err in finding that Singh teaches or suggests the argued extracting limitation. Identifying an Implicit Action In connection with the recited identifying limitation, Appellant argues, Appeal 2021-000858 Application 15/355,371 10 because the combination of Pasquero, McCray, and Singh does not teach at least “[the extracting limitation],” the combination of Pasquero, McCray, and Singh likewise fails to teach at least [the identifying limitation of] “based on the analysis of the content of the group conversation and the user preference data, identifying an implicit action” as recited in claim 1. (emphasis added). That is, while McCray may teach that a reminder is set based on an intent within the message, none of the cited references teach where such intent, or implicit action, is identified, or set, based on an analysis of both the content of the group conversation and the extracted user preference data. Appeal Br. 10. The Examiner responds, as follows: Singh discloses the ability to extract and store user preference data (i.e. current and historical travel information (Singh; Fig. 2; [0020, 0023]). As a user is utilizing their device, the user preference data (i.e. current and historical location), can be extracted and stored (Singh; [0024]). Based upon the stored user-specific information, identified task information, and the extracted preference data (i.e. current and historical travel information), reminders can be generated for the user (Singh; Fig. 5; [0027, 0030-0034]). Ans. 6-7. Accordingly, the Examiner finds, “the combination of Pasquero in view of McCray and Singh enables the system to ‘based on the analysis of the content of the group conversation and the user preference data, identifying an implicit action’.” Id. at 7. Appellant replies, reiterating and summarizing their argument that “nowhere does Singh teach identifying an implicit action based on user [p]reference data.” Reply Br. 4. Appellant’s argument is not persuasive because it is based on false premise, that is, Appellant’s earlier unpersuasive argument alleging a failure of Singh to teach or suggest user preference data. Because Appellant does Appeal 2021-000858 Application 15/355,371 11 not otherwise present sufficient argument or evidence addressing the Examiner’s finding that Pasquero, McCray, and Singh, as combined, teach or suggest the disputed identifying limitation; we are not persuaded of reversible Examiner error. For the reasons discussed above, we sustain the rejection of independent claim 1 and the rejections of its dependent claims 2-4, 6-8, and 21-23 which are not argued separately with particularity. Appeal Br. 10, 16. Appellant’s arguments in connection with independent claim 9 (id. at 10-13) and independent claim 16 (id. at 13-16) are substantively duplicative of those made and found unpersuasive in connection with claim 1 for the reasons discussed above. Accordingly, we further sustain the rejections of independent claims 9 and 16 together with the rejections of their respective dependent claims 10-12, 14, and 15 and dependent claims 17, 18, and 24; which are not argued separately with particularity. Id. at 13, 16. DECISION 1. The Examiner does not err in rejecting: a. claims 1-3, 6-11, 14, 15, and 21-23 under 35 U.S.C. § 103 as obvious over the combined teachings of Pasquero, McCray, and Singh; and b. claims 4, 12, 16-18, and 24 under 35 U.S.C. § 103 over the combined teachings of Pasquero, McCray, Singh, and Tomkins. 2. Thus, on this record, claims 1-4, 6-12, 14-18, and 21-24 are not patentable. Appeal 2021-000858 Application 15/355,371 12 CONCLUSION We affirm the Examiner’s rejections of claims 1-4, 6-12, 14-18, 21- 24. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 6-11, 14, 15, 21-23 103 Pasquero, McCray, Singh 1-3, 6-11, 14, 15, 21-23 4, 12, 16-18, 24 103 Pasquero, McCray, Singh, Tomkins 4, 12, 16-18, 24 Overall Outcome 1-4, 6-12, 14-18, 21-24 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) (2013). AFFIRMED Copy with citationCopy as parenthetical citation