Thomas R. Gruber et al.Download PDFPatent Trials and Appeals BoardNov 25, 201913913423 - (D) (P.T.A.B. Nov. 25, 2019) 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. 13/913,423 06/08/2013 Thomas R. Gruber P11357USX2/77870000128402 5652 150004 7590 11/25/2019 DENTONS US LLP - Apple 4655 Executive Dr Suite 700 San Diego, CA 92121 EXAMINER CHAVEZ, RODRIGO A ART UNIT PAPER NUMBER 2658 NOTIFICATION DATE DELIVERY MODE 11/25/2019 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): dentons_PAIR@firsttofile.com patents.us@dentons.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS R. GRUBER, HARRY J. SADDLER, LIA T. NAPOLITANO, EMILY CLARK SCHUBERT, and BRIAN CONRAD SUMNER Appeal 2018-001405 Application 13/913,423 Technology Center 2600 BEFORE MAHSHID D. SAADAT, CARL L. SILVERMAN, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL Apple Inc. (“Appellant”1) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1–32, which are all of the claims pending in the application. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Apple Inc. Appeal Br. 3. Appeal 2018-001405 Application 13/913,423 2 TECHNOLOGY The application relates to “a user interface . . . such as a virtual assistant [that] is automatically adapted for hands-free use.” Spec. ¶ 9. ILLUSTRATIVE CLAIM Claim 1 is illustrative and reproduced below with certain limitations at issue emphasized: 1. A method for providing information through a speech-enabled dialogue interface, comprising: identifying a plurality of data items for presentation to a user, the plurality of data items associated with a domain-specific item type and sorted according to a particular order; based on the domain-specific item type, generating a speech-based overview of the plurality of data items; for each of the plurality of data items, generating a respective speech-based, item-specific paraphrase for the data item based on respective content of the data item; and providing, to a user through the speech-enabled dialogue interface, the speech-based overview, followed by the respective speech-based, item-specific paraphrases for at least a subset of the plurality of data items in the particular order. REJECTIONS Claims 1, 11, 21, 31, and 32 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Nachman (US 2010/0169097 A1; July 1, 2010). Final Act. 3–5. Claims 2, 3, 12, 13, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nachman and Roy (US 2010/0121637 A1; May 13, 2010). Final Act. 5. Appeal 2018-001405 Application 13/913,423 3 Claims 4, 6, 7, 14, 16, 17, 24, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nachman and Byrne (US 7,920,682 B2; Apr. 5, 2011). Final Act. 7–11. Claims 5, 15, and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nachman, Byrne, and Shaw (US 2011/0116610 A1; May 19, 2011). Final Act. 11. Claims 8, 9, 18, 19, 28, and 29 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nachman and Clipsham (US 2007/0241885 A1; Oct. 18, 2007). Final Act. 12. Claims 10, 20, and 30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nachman, Clipsham, and Byrne. Final Act. 14. ANALYSIS Claims 1, 11, 21, 31, and 32 (Anticipation) Independent claims 1, 11, and 21 recite “for each of the plurality of data items, generating a respective speech-based, item-specific paraphrase for the data item.” The Examiner relies on Nachman as disclosing this limitation. Final Act. 4. Nachman discloses “an interface to traverse a list via audible mapping.” Nachman ¶ 1. In particular, Nachman discloses several techniques for audibly reciting a list. For example, in some embodiments, each item in a list is given “a fixed length of time” (e.g., 3 seconds) and each item is fit into that fixed length of time by either “truncating the recitation of the list item” (e.g., stop reading after 3 seconds) or “time-compressing the audible indicator to be a specified length of time” (e.g., reading the item at a faster speed to fit within 3 seconds). Id. ¶¶ 28, 30. Appeal 2018-001405 Application 13/913,423 4 The Examiner finds that “by providing partial recitations[,] Nachman is essentially providing paraphrases” because “a partial recitation is a ‘restatement of a passage in another form’ or a ‘rewording’ of the passage.” Ans. 4, 5. Although we apply the broadest reasonable interpretation during examination, “[a]bove all, the broadest reasonable interpretation must be reasonable in light of the claims and specification.” PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016). Here, we agree with Appellant that a “verbatim recitation of the text of items in the list, either full or partial [e.g., truncated after 3 seconds],” “does not fall within the plain dictionary meaning of ‘paraphrase’—‘a restatement of a text or passage giving the meaning in another form, as for clearness; rewording.’” Reply Br. 12. Stopping playback of an item in a list after 3 seconds is neither “restating” nor “rewording.” The Examiner also relies on inherency. In particular, because the Specification discloses that “the overview paraphrases the list of items” (Spec. ¶ 194), the Examiner determines that “any overview necessarily contains a paraphrase” and hence is inherent. Ans. 5. At a high level, an overview of a list may well paraphrase that list. However, the independent claims here require an “item-specific paraphrase” for “each” data item. Thus, even if the overview inherently paraphrased the claimed “plurality” (i.e., the group as a whole), that fails to address the claims’ further requirement that each data item have its own item-specific paraphrase. Accordingly, we do not sustain the Examiner’s rejection of independent claims 1, 11, and 21, and their dependent claims 31 and 32. Appeal 2018-001405 Application 13/913,423 5 Claims 2–10, 12–20, and 22–30 (Obviousness) The obviousness rejections of the remaining dependent claims do not cure the deficiencies discussed above. Accordingly, we do not sustain the Examiner’s rejections of claims 2– 10, 12–20, and 22–30. DECISION The Examiner’s rejections are reversed, as summarized by the table below: Claims Rejected Statute References Affirmed Reversed 1, 11, 21, 31, 32 § 102 Nachman 1, 11, 21, 31, 32 2, 3, 12, 13, 22, 23 § 103 Nachman, Roy 2, 3, 12, 13, 22, 23 4, 6, 7, 14, 16, 17, 24, 26, 27 § 103 Nachman, Byrne 4, 6, 7, 14, 16, 17, 24, 26, 27 5, 15, 25 § 103 Nachman, Byrne, Shaw 5, 15, 25 8, 9, 18, 19, 28, 29 § 103 Nachman, Clipsham 8, 9, 18, 19, 28, 29 10, 20, 30 § 103 Nachman, Clipsham, Byrne 10, 20, 30 OVERALL 1–32 REVERSED Copy with citationCopy as parenthetical citation