Apple Inc.

Patent Trials and Appeals Board

Aug 11, 2021

2021002672 (P.T.A.B. Aug. 11, 2021)

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.
15/994,795 05/31/2018 Garett NELL P30331USC1/77870000245201 8472
150004 7590 08/11/2021
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
SONIFRANK, RICHA MISHRA
ART UNIT PAPER NUMBER
2674
NOTIFICATION DATE DELIVERY MODE
08/11/2021 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
patent.docket@dentons.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 GARETT NELL, ROSHNI MALANI,
SEAN P. BROWN, and BENJAMIN L. BRUMBAUGH
___________

Appeal 2021-002672
Application 15/994,795
Technology Center 2600

____________

Before MAHSHID D. SAADAT, CARL W. WHITEHEAD JR. and
ERIC B. CHEN, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Appellant2 is appealing the final rejection of claims 1–4, 6–20 and
22–44 under 35 U.S.C. § 134(a). See Appeal Brief 6. Claims 1, 17 and 33

1 Rather than reiterate Appellant’s arguments and the Examiner’s
determinations, we refer to the Appeal Brief (filed November 11, 2020), the
Reply Brief (filed March 12, 2021), the Final Action (mailed April 20,
2020), and the Answer (mailed January 15, 2021), for the respective details.

2 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42(a) (“The
word ‘applicant’ when used in this title refers to the inventor or all of the
joint inventors, or to the person applying for a patent as provided in
§§ 1.43, 1.45, or 1.46.”). Appellant identifies Apple, Inc. as the real party in
Appeal 2021-002672
Application 15/994,795

2

are independent. Claims 5 and 21 are canceled. See Claims Appendix. An
oral hearing was held July 21, 2021. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Introduction
According to Appellant, the claimed invention relates to “intelligent
automated assistants in a home environment.” Specification ¶ 3.

Independent Claim (disputed limitations emphasized)
1. A method for operating a digital assistant, the method
comprising:
at an electronic device with a processor and memory:
receiving discourse input representing a user request,
wherein the discourse input defines a criterion using one or
more ambiguous terms;
determining whether the discourse input relates to a
device of an established location;
in response to determining that the discourse input relates
to a device of an established location, retrieving a data structure
representing a set of devices of the established location;
determining, using the data structure and the discourse
input, a user intent corresponding to: an action to be performed
on a characteristic of a first device of the set of devices based
on a characteristic of a second device of the set of devices
included in the discourse input, wherein determining the user
intent includes determining one or more quantitative threshold
values corresponding to the one or more ambiguous terms
defining the criterion based at least on historical data
associated with the established location; and
storing the action and the first device in association with
the second device, wherein the action is performed on the

interest. Appeal Brief 3.

Appeal 2021-002672
Application 15/994,795

3

characteristic of the first device in accordance with a
determination that the characteristic of the second device
satisfies the criterion as defined by the one or more quantitative
threshold values.

References
Name3 Reference Date
Weilhammer US 2014/0324429 A1 October 30, 2014
Lang US 2017/0242653 A1 August 24, 2017
Nagasaka US 2018/0349084 A1 December 6, 2018

Rejection on Appeal
Claims 1–4, 6–20 and 22–44 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Nagasaka, Lang and Weilhammer. Final Action
2–10.

ANALYSIS
Claims 1–4, 6–8, 13–16, 17–20, 22–24, 29–33, 34–37 and 41–44
Appellant contends, that “neither of the cited paragraphs of Nagasaka,
nor any other portion of any of the three references, disclose or suggest
‘wherein the discourse input defines a criterion using one or more
ambiguous terms.’” Appeal Brief 15 (referring to Nagasaka ¶¶ 65, 162).
Appellant argues that Nagasaki’s “input ‘when (temperature) becomes
29° C’ does not ‘define[] a criterion using one or more ambiguous terms’
that could be disambiguated to a corresponding quantitative threshold
value, as required by the rest of claim 1.” Appeal Brief 15 (citing Nagasaka

3 All reference citations are to the first named inventor only.

Appeal 2021-002672
Application 15/994,795

4

¶ 65). Appellant’s arguments are not persuasive of Examiner error because
the arguments do not align with what the Specification discloses.
Appellant provides numerous characterizations for ambiguous terms
recited in claim 1:
In some examples, the discourse input contains one or more
ambiguous terms by virtue of being in natural language form.
The one or more ambiguous terms, for example, each has more
than one possible interpretation. For example, the discourse
input is “Set the thermostat to sixty.” In this example, the
discourse input is ambiguous with respect to defining the device
for performing the requested action. Specifically, in the context
of an established location, such as the user’s home, there can be
several devices associated with the term “thermostat,” such as a
central heating unit, a bedroom space heater, or a living room air
conditioning unit. It is thus ambiguous as to which device the
user is referring to in the discourse input. Additionally, in the
same example, the discourse input is ambiguous with respect to
defining the specific action being requested. For example, one or
more devices in the established location are capable of adjusting
the temperature as well as the humidity. The discourse input is
thus ambiguous as to whether the user wishes to adjust the
temperature of a device to sixty degrees Fahrenheit or to adjust
the humidity of a device to sixty percent relative humidity.
Specification ¶ 208 (emphasis added).
Nagasaka discloses that “[i]t is desired to provide a technology
capable of easily recording a program for obtaining an intention of a user
from text data corresponding to dialogue using a natural language.”
Nagasaka Abstract. As defined by the Specification, Nagasaka discloses
“ambiguous terms by virtue of being in natural language form.” See
Specification ¶ 208. Nagasaka discloses “there are various requests from a
user such as ‘please turn on the air conditioner’, ‘please turn on the air
conditioner when (temperature) becomes 29° C’, and ‘please turn on the air
Appeal 2021-002672
Application 15/994,795

5

conditioner and turn on the air circulator fan when (temperature) becomes
29° C.’” Nagasaka ¶ 65. Again, as defined by the Specification, Nagasaka
discloses ambiguous terms because there could be several devices associated
with the terms “air conditioner” and “air circulator fan.” See Specification
¶ 208.
Appellant further argues that “the terms contained in the user requests
disclosed by Nagasaka are unambiguous, quantitative terms (‘29° C’)” and
as a result “no other inputs disclosed by Nagasaka define a criterion in
ambiguous terms that could be disambiguated into a quantitative threshold
value.” Appeal Brief 15 (emphasis omitted) (citing Nagasaka ¶ 65).
The Specification discloses:
[T]he threshold value is ambiguous in the discourse input and
thus a quantitative threshold value may need to be interpreted
from the discourse input. For example, the discourse input is
“Turn on the kitchen fan when it gets too hot.” In this example,
based on the words “when it gets too hot,” the criterion is
determined to be detecting the temperature of an electronic
thermometer exceeding a threshold value. The threshold value is
determined based on the phrase “too hot” and one or more
knowledge sources.
Specification ¶ 262 (emphasis added).
Appellant’s argument is not persuasive of Examiner error because
Nagasaka discloses, “When the agent is capable of detecting events in such a
way, it is expected that the agent also becomes capable of detecting context”
and “When the agent is capable of detecting context, there is a possibility
that the agent talks to a user by using the detected context as a start point.”
Nagasaka ¶ 161 (emphasis added). Furthermore, in addition to disclosing
terms that are unambiguous, as alleged by Appellant, Nagasaka also
discloses terms that are ambiguous:
Appeal 2021-002672
Application 15/994,795

6

[I]t is also considered that basic knowledge (such as knowledge
related to temperature, weather, and the like) is given to the
agent. For example, it is considered that basic user feelings are
given to the agent such as “temperature of 28° C. or more means
hot” “temperature of 15° C. or less means cold”, “users hate
drying” “rain means sad”, and “users hate pollens”. This enables
the agent to tune its functions such that the functions match a user
that the agent stays together.
Nagasaka ¶ 162 (emphasis added); see Final Action 4; see also Appeal Brief
14–16.
A user’s feeling or intent is provided to the agent such as “users hate
drying” “rain means sad”, and “users hate pollens” in ambiguous terms
wherein the feeling or intent includes quantitative threshold values
corresponding to the ambiguous terms. See Nagasaka ¶ 162. For example,
the intent that “users hate drying” could signify the humidity of the
environment is too dry or low based upon the users’ preference; the intent
that “rain means sad” could signify that a certain level of precipitation
evokes a specific emotional response from the user; and the intent that
“users hate pollens” could signify that the Air Quality Index is beyond an
acceptable level for the user’s comfort. See Nagasaka ¶ 162. Accordingly,
Nagasaka discloses a criterion in ambiguous terms that can be
disambiguated into a quantitative threshold value.
Appellant further contends that Lang fails to cure the deficiencies of
Nagasaka because “Lang discloses receiving voice commands, such as ‘play
music in the Kitchen,’ but does not disclose or suggest any inputs
‘defin[ing] a criterion,’ let alone defining a criterion ‘using one or more
ambiguous terms.’” Appeal Brief 17. Appellant argues that Weilhammer
fails to disclose “wherein determining the user intent includes determining
one or more quantitative threshold values corresponding to the one or more
Appeal 2021-002672
Application 15/994,795

7

ambiguous terms defining the criterion based at least on historical data,” as
recited in claim 1, because Weilhammer fails to discloses a “discourse input
defin[ing] a criterion using one or more ambiguous terms” and therefore,
“Weilhammer, too, fails to cure the deficiencies of Nagasaka and Lang.”
Appeal Brief 17. Appellant’s arguments are not persuasive of Examiner
error because Nagasaka is not deficient as Appellant alleges for the reason
that Nagasaka discloses ambiguous terms as recited by claim 1 and defined
by the Specification, as discussed above.
“As our precedents make clear, however, the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc.,
550 U.S. 398, 418 (2007). Accordingly, we discern no meaningful
difference between claim 1’s quantitative threshold values and Nagasaka
determining one or more quantitative threshold values corresponding to the
one or more ambiguous terms. See Nagasaka ¶ ¶ 161–62. We sustain the
Examiner’s obviousness rejection of independent claims 1, 17 and 33,
argued together, as well as “all claims depending therefrom” unless
otherwise discussed below. See Appeal Brief 13.

Claims 9, 25, and 38
Claim 9 recites: “The method of claim 4, wherein the predetermined
condition includes a requirement that the action was performed less than a
predetermined number of times within a predetermined period of time.”
The Specification discloses that “the criterion includes the
requirement that the action was performed less than a predetermined number
Appeal 2021-002672
Application 15/994,795

8

of times within a predetermined period of time. For example, the discourse
input is ‘Allow Owen access to the TV three times a week.’” Specification
¶ 268.
Appellant argues, “Nagasaka’s disclosure of recording a
correspondence when a process is completed within a predetermined period
of time after an event is detected fails to disclose or suggest ‘a requirement
that the action was performed less than a predetermined number of times
within a predetermined period of time.”’ Appeal Brief 25; see Final Action
7 (citing Nagasaka ¶¶ 93, 96–99). Appellant further argues that “[a]t most,
Nagasaka discloses a requirement that a process (turning on the lights) be
performed at least once within a predetermined period of time after another
event (closing the curtains) occurs prior to recording the correspondence.”
Appeal Brief 25 (emphasis omitted). Appellant concludes that “Nagasaka
does not disclose or suggest a requirement that turning on the lights be
performed less than a predetermined number of times within the
predetermined period.” Appeal Brief 26 (emphasis omitted).
Appellant’s arguments are not persuasive of Examiner error because
claim 9 merely requires that an indeterminate quantitative limit be placed
upon an unspecified action during an undetermined period of time, whereas
Nagasaka does not explicitly limit the performance to an action or process.
We note, however, that placing a limit on the action or process would be
well within the purview of one of ordinary skill in the art especially in light
of the Specification. Furthermore, Appellant has not demonstrated that
modifying Nagasaka by placing a limit on the performance or action would
have been “uniquely challenging or difficult for one of ordinary skill in the
art,” and we find the proposed modification would have been within the
Appeal 2021-002672
Application 15/994,795

9

purview of the ordinarily skilled artisan. See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418); see also Specification ¶ 268. Accordingly, we sustain the
Examiner’s obviousness rejection of claims 9, 25, and 38, argued together.
See Appeal Brief 27.

Claim 10–12, 26–28, 39, and 40
Claim 10 recites: “The method of claim 4, wherein the predetermined
condition includes a requirement that a time of the electronic device is equal
to or greater than a reference time.”
The Specification discloses:
[T]he criterion includes the requirement that a time indicated on
the electronic device be equal to or after a reference time or
within a range of reference times. The reference time is with
respect to hours and minutes or with respect to a particular date.
In some examples, the reference time is an absolute time. For
example, the discourse input is “Turn on the porch light at 7 pm.”
In this example, the criterion includes detecting that the current
time is equal to 7 pm.
Specification ¶ 269.
Appellant contends:
Nagasaka’s disclosure of recording a correspondence
when a process is completed within a predetermined period of
time after an event is detected fails to disclose or suggest “a
requirement that a time of the electronic device is equal to or
greater than a reference time.” Rather, Nagasaka at most
discloses a requirement that a correspondence is only recorded if
a process is completed at a time less than a predetermined
amount of time relative to the time of an event.
Appeal Brief 28 (emphasis omitted); see Final Action 7 (citing Nagasaka
¶¶ 96–99).
Appeal 2021-002672
Application 15/994,795

10

Appellant’s arguments are not persuasive of Examiner error because
claim 10 merely places an unspecified time requirement on an electronic
device that is compared to an unstipulated reference time, whereas Nagasaka
does not explicitly indicate a time requirement for an electronic device. We
note, however, that placing a time requirement on an electric device would
be well within the purview of one of ordinary skill in the art especially in
light of the Specification. See KSR Int’l, 550 U.S. at 418; see also
Specification ¶ 269.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 10–12, 26–28, 39, and 40, argued together. See Appeal Brief 29.

CONCLUSION
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–4, 6–20,
22–44
103 Nagasaka, Lang,
Weilhammer
1–4, 6–20,
22–44

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). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED