Bai, Peng et al.

Patent Trials and Appeals Board

Oct 21, 2020

13408853 - (D) (P.T.A.B. Oct. 21, 2020)

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.
13/408,853 02/29/2012 Peng Bai 334799-US-
NP (1777,162US
1391
144365 7590 10/21/2020
Schwegman Lundberg & Woessner, P.A.
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
LIAO, JASON G
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
10/21/2020 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):
SLW@blackhillsip.com
usdocket@microsoft.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PENG BAI, ZHENG CHEN, XUEDONG DAVID HUANG,
XIAOCHUAN NI, JIAN-TAO SUN, and ZHIMIN ZHANG
Appeal 2019-003704
Application 13/408,853
Technology Center 2100
Before MICHAEL J. STRAUSS, IRVIN E. BRANCH, and
DAVID J. CUTITTA II, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–7, 9–12, 14–20, 23, and 25. See
Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).

1 We refer to the Specification, filed February 29, 2012 (“Spec.”); Non-Final
Office Action, mailed August 8, 2018 (“Non-Final Act.”); Appeal Brief,
filed January 11, 2019 (“Appeal Br.”); Examiner’s Answer, mailed February
8, 2019 (“Ans.”); and Reply Brief, filed April 5, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Microsoft
Technology Licensing. Appeal Br. 3.
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Application 13/408,853
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We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to context-based search query formation.
Claim 1, reproduced below with a disputed limitation emphasized in italics
and specific wording alleged as rendering the limitation indefinite
underlined, is illustrative of the claimed subject matter:
1. An information-processing system comprising:
one or more processing elements;
a search initiation module communicatively coupled to or
integrated with the one or more processing elements, the
search initiation module configured to receive:
an input indicating selected text from a document
displayed via a device;
a context including a portion of the document, the
portion of the document being additional text that is
relative to, and separate from, the selected text; and
a command to generate a search query based at least in
part on the selected text and the context;
a candidate query generator coupled to or integrated with the
one or more processing elements and configured to
identify a plurality of candidate queries based at least in
part on the selected text, the context, and a query log of
queries associated with the document, the query log of
queries including search queries generated by users after
viewing the document; and
a query ranking module coupled to or integrated with the one
or more processing elements and configured to:
compare each candidate query of the plurality of
candidate queries to the selected text and the
context;
determine a value associated with each candidate
query, the value representing a likelihood that the
candidate query represents a meaning of the
selected text and the context; and
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rank the plurality of candidate queries based at least in
part on the value.
REJECTIONS3
Claims 1–7, 9–12, 14–20, 23, and 25 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. Non-Final Act. 3.
Claims 1–7, 9–12, 14–20, 23, and 25 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the applicant regards as the
invention. Non-Final Act. 3–6.

STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

3 The Examiner does not formally reject the pending claims based on prior-
art. Instead, the Examiner presents “hypothetical” rejections under 35
U.S.C. § 103(a) based on claim language present prior to the Amendment
filed July 27, 2017, replacing the phrase “corresponds to” with the disputed
limitation “represents a meaning of” language. Non-Final Act. 6–26; Ans.
19–20, 46–47. Because the Examiner finds the disputed limitation renders
the claims indefinite, the Examiner concludes it would be improper to reject
the claims under 35 U.S.C. § 103(a), asserting such a rejection would require
speculation concerning the meaning of the disputed limitation. Non-Final
Act. 7, Ans. 46–47 (citing In re Steele, 305 F.2d 859, 862 (CCPA 1962)
(holding that the Examiner and the Board were wrong in relying on what, at
best, were speculative assumptions as to the meaning of the claims and in
basing a prior-art rejection thereon)). We decline to issue an advisory
opinion addressing these hypothetical prior-art rejections.
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OPINION
Written Description Rejection Under 35 U.S.C. § 112, first paragraph
The Amendment filed July 27, 2017 amended independent claims 1,
4, and 14 by, inter alia, replacing the phrase “corresponds to” with the
disputed language “represents a meaning of.” Thus, the disputed limitation
of claim 1 recites “determine a value . . . the value representing a likelihood
that the candidate query represents a meaning of the selected text and the
context.” (emphasis added). The Examiner finds the Specification as
originally filed fails to provide written description support for the disputed
limitation. Non-Final Act. 3. According to the Examiner, “[t]he written
description does not appear to show support for the semantic meaning of the
calculated value.” Id.
Appellant contends the Examiner mischaracterizes the disputed claim
language in that it does not recite a semantic meaning, requiring only “that
the value represents a likelihood (e.g., probability) that the candidate query
represents a meaning of the selected text and context.” Appeal Br. 7.
Appellant argues:
Any person skilled in the art would understand that the meaning
of words is used in searches, and the specification clearly defines
embodiments based on meaning of the selected text and context.
For example, paragraph [0001], describing problems with the
prior art, recites, “Either technique for generating the search
query may suffer from deficiencies such as lack of specificity,
search terms with multiple meanings, and ambiguous
relationships between the search terms.” A person skilled in the
art, after reading the present specification, would readily
appreciate that the value for each candidate query is based on the
selected text and the context. Since search terms may have
multiple meanings, the present application addresses the problem
by assigning probabilities.
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Id. at 7–8. Appellant further argues the Specification describes ranking
candidate queries based on a likelihood or probability that they correspond
to selected text and content. Id. at 8 (citing Spec. ¶¶ 25, 31–46).
The Examiner responds, although “Appellant[] never provide[s] a
direct statement that clarifies the intended metes and bounds of ‘meaning,’
they at least appear to be alleging on appeal that there is written description
support for a semantic meaning of the claimed value.” Ans. Fn. 3 (emphasis
omitted). According to the Examiner, Appellant fails to provide
any explanation as to why Written Description would lead one
skilled in the art to assemble the disparate [cited] paragraphs to
support the claimed “determine” feature as linking the
Illustrative Language Model to “represents a meaning.” In short,
[Appellant’s] Brief fails to address the nexus between the word
“meaning” in [0001] and the disclosure of [0025]/[0031]–[0046].
Ans. 8. The Examiner explains, even if the disputed limitation was obvious,
“A written description that merely provides ‘obvious’ support does not meet
the written description requirement.” Id. (citing Ariad Pharmaceuticals v.
Eli Lilly, 94 USPQ2d 1161, 1172 (Fed. Cir. 2010) (en banc).
Addressing portions of the Specification cited by Appellant as
providing written description support for the disputed limitation, the
Examiner finds that paragraph 31, summarizing the Illustrative Language
Model, “shows that the model is based on heuristics, not meaning. It never
mentions or suggests meaning.” Id. at 13. Likewise, the Examiner explains
the disclosed Illustrative Language Model “expressly assumes a bigram
relationship, irrespective of meaning, because it only preprocesses the query
for bigrams” that are unassociated with term meanings. Id. at 13–14
(emphasis omitted). According to the Examiner:
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While correspondence between a query and document
portions is well-established, the Illustrative Language Model
neither determines a meaning, nor needs to determine a meaning.
Rather, it takes it[s] cue from the [information retrieval] field and
avoids the problem of disambiguating the meaning of query
terms by presenting a model where disambiguation occurs
strictly through probability of query bigrams being associated to
document portions.
Id. at 14.
Appellant’s argument is unpersuasive of reversible Examiner error.
Compliance with the written description requirement is a question of fact
that is context-sensitive. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc) (“[T]he level of detail required to
satisfy the written description requirement varies depending on the nature
and scope of the claims and on the complexity and predictability of the
relevant technology.”). To fulfill the written description requirement, the
application as filed “must clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed.” Gentry Gallery,
Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998) (internal
citation and quotation omitted). A description that merely renders the
invention obvious does not satisfy the written description requirement.
Ariad, 598 F.3d at 1352. When an applicant amends a claim “in such a way
as to justify an assertion that it is directed to a different invention than was
the original claim, it is proper to inquire whether the newly claimed subject
matter was described in the patent application when filed as the invention of
the applicant.” In re Wright, 866 F.2d 422, 424 (Fed. Cir. 1989).
Furthermore, to have “possession,” “the specification must describe
an invention understandable to that skilled artisan and show that the inventor
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actually invented the invention claimed.” Ariad, 598 F.3d at 1351. Even
original claims may fail to satisfy the written description requirement when
the invention is claimed and described in functional language but the
specification does not sufficiently identify how the invention achieves the
claimed function. Id. at 1349 (“[A]n adequate written description of a
claimed genus requires more than a generic statement of an invention’s
boundaries.”) (citing Regents of the University of California v. Eli Lilly &
Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997)).
The Specification must explain, for example, how Appellant intended
to achieve the claimed function to satisfy the written description
requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671,
683 (Fed. Cir. 2015). While “[t]here is no rigid requirement that the
disclosure contain ‘either examples or an actual reduction to practice,”’ the
written description requirement requires the Specification set forth “an
adequate description that ‘in a definite way identifies the claimed invention’
in sufficient detail such that a person of ordinary skill would understand that
the inventor had made the invention at the time of filing.” Allergan, Inc. v.
Sandoz Inc., 796 F.3d 1293, 1308 (Fed. Cir. 2015) (citing Ariad, 598 F.3d at
1352). “The written description requirement is not met if the specification
merely describes a ‘desired result.’” Vasudevan 782 F.3d at 682 (citing
Ariad, 598 F.3d at 1349). For computer-implemented inventions, this can
occur when the algorithm or steps for performing the computer function are
not explained at all or are not explained in sufficient detail.
The only appearance of “meaning” is in the background section of the
Specification describing that prior art “technique[s] for generating [a] search
query may suffer from deficiencies such as lack of specificity, search terms
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with multiple meanings, and ambiguous relationships between the search
terms.” Spec. ¶ 1 (emphasis added). The Specification does not otherwise
mention determining or relying on the meanings of search terms. In the
absence of sufficient persuasive argument or evidence to the contrary, we
adopt the Examiner’s explanation that the disclosed value determination
technique is independent of word meanings because it “expressly assumes a
bigram relationship, irrespective of meaning, because it only preprocesses
the query for bigrams.” Ans. 13 (emphasis omitted). Therefore, although
the Specification describes determining a value representing a likelihood that
a candidate query corresponds to selected text and content, it does not
describe determining a likelihood that a candidate query represents a
meaning of the selected text.
Furthermore, we agree with the Examiner that a description that
merely renders the invention obvious does not satisfy the written description
requirement. Ariad, 598 F.3d at 1352. Here, although Appellant discloses a
prior art problem of search terms having ambiguous meanings, Appellant
has not provided sufficient persuasive evidence that the invention solves that
problem by ranking candidate queries based on a likelihood that the queries
represent a meaning of selected text and content. Instead, the evidence of
record only supports a finding that ranking is based on values obtained using
bigrams that need not represent the meaning of the search terms.
Accordingly, we agree with the Examiner that the pending independent
claims are not supported by an adequate written description of the claimed
subject matter in satisfaction of 35 U.S.C. § 112, first paragraph.
Accordingly, we sustain the rejection of claims 1–7, 9–12, 14–20, 23, and 25
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under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement

Indefiniteness Rejection Under 35 U.S.C. § 112, second paragraph
The Examiner finds the use of the phrase “represents a meaning” in
the disputed limitation renders the limitation ambiguous and, therefore,
indefinite. Non-Final Act. 4. According to the Examiner, a first
interpretation of the phrase “a likelihood that the candidate query represents
a meaning of the selected text and the context” is that the query
encapsulates, i.e., has, a semantically valid concept. That is, whether the
query has an understandable meaning rather than being semantic nonsense,
i.e., no obvious understandable meaning can be derived from it.
A second interpretation posited by the Examiner is “that the candidate
query expresses the likelihood of information desired by a user.” Id. at 5.
That is, the query ranking module must determine the meaning that was
intended by the user. However, in this case, the Examiner finds such an
evaluation “does not appear in the written description, and measurement
evaluated against a user-specific threshold to determine infringement is
quintessentially an indefinite relative term.” Id. (citing Ex parte Brummer,
12 USPQ2d 1653 (BPAI 1989).
According to the Examiner, a third alternative interpretation of
“meaning” is in connection with human reviewers training of a machine
learning system. Ans. 17. However, the Examiner finds such an
interpretation is inconsistent with the claim language and the Specification
disclosing that human evaluation of tuples creates training data used to
generate a decision boundary. Non-Final Act. 5.
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The Examiner argues all three interpretations “are hinted at by the
broader nature of the Written Description, but . . . no support [is found] to tie
these concepts to the disputed claim limitation.” Id. Accordingly, the
Examiner finds the disputed limitation is, at best, subject to alternative
interpretations, none of which are clearly supported by the Specification,
thereby rendering the claims indefinite. Id.
Appellant argues:
[T]he Examiner has asserted that the claims are indefinite due to
ambiguity (Office Action at page 4). Appellant respectfully
disagrees. Ironically, the Examiner has made up some possible
meanings for the word “meaning,” which involves some circular
logic difficult to comprehend. If “meaning” has multiple
meanings, how could the Examiner argue the meaning of
meaning? The Examiner must look at the specification and the
plain meaning of words to interpret the claims, instead of making
up long, unnecessary explanations of the meaning of the word
meaning. As discussed above, the present specification and
drawings clearly describe the aforementioned feature.
Appeal Br. 8–9 (emphasis omitted).
Whether a claim is indefinite is an issue of claim construction and a
question of law. Cordis Corp. v. Boston Scientific Corp., 561, F.3d 1319,
1331 (Fed. Cir. 2009). “The legal standard for definiteness is whether a
claim reasonably apprises those of skill in the art of its scope.” In re
Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). The “inquiry therefore is
merely to determine whether the claims do, in fact, set out and circumscribe
a particular area with a reasonable degree of precision and particularity.” In
re Moore, 439 F.2d 1232, 1235 (CCPA 1971). During prosecution, we
apply the approach for assessing indefiniteness approved by the Federal
Circuit in In re Packard, i.e., “[a] claim is indefinite when it contains words
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or phrases whose meaning is unclear” or “if a claim is amenable to two or
more plausible claim constructions.” Ex parte McAward, Appeal 2015-
006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential as to
Section I.B) (citing In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014); Ex
parte Kenichi Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential).
Appellant has not pointed to any description in the Specification that
clarifies the meaning of the disputed claim language, and no such
description is apparent to us. “Applying the broadest reasonable
interpretation of a claim, . . . the Office establishes a prima facie case of
indefiniteness with a rejection explaining how the metes and bounds of a
pending claim are not clear because the claim contains words or phrases
whose meaning is unclear.” McAward, 2017 WL 3669566, at *2 (citing
Packard, 751 F.3d at 1310). See also id. at *5 (Nautilus, Inc. v. Biosig
Instruments, Inc., 572 U.S. 898 (2014), did not change the applicability of
the Packard test by the PTAB.) In particular, Appellant does not contend
the multiple interpretations of the disputed limitation advanced by the
Examiner are unreasonable or otherwise improper. Furthermore, Appellant
does not provide a definition for the disputed “meaning” language as
evidence that the term is clear.
We are unpersuaded by Appellant’s argument that the Examiner’s use
of meaning itself provides evidence that the word is sufficiently defined to
satisfy the definiteness requirements of 35 U.S.C. § 112, second paragraph.
Appeal Br. 8–9. In the context of the Appellant’s claims and Specification,
it is not clear what is required by a “value representing a likelihood that [a]
candidate query represents a meaning of the selected text and context,” as
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recited in claim 1, for the reasons discussed above. Adding to the confusion
is Appellant’s amendment replacing the phrase “corresponds to” with the
disputed phrase “represents a meaning of” without providing evidence of the
metes and bounds attributable to the altered language. We remind Appellant
that mere attorney argument and conclusory statements, which are
unsupported by factual evidence, are entitled to 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). 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. For example, Appellant does not
provide evidence that one skilled in the art would have understood the metes
and bounds attributable to the disputed terminology. Thus, based on the
evidence of record, we agree claim 1 contains words or phrases whose
meaning is unclear, and is therefore indefinite. We, therefore, affirm the
rejection of claim 1 and, for the same reasons, the rejection of claims 2–7, 9–
12, 14–20, 23, and 25 under 35 U.S.C. § 112, second paragraph.
CONCLUSION
The Examiner’s rejections are AFFIRMED.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 9–12,
14–20, 23,
25
112, 1st Written
Description
1–7, 9–12,
14–20, 23,
25

1–7, 9–12,
14–20, 23,
25
112, 2nd Indefiniteness 1–7, 9–12,
14–20, 23,
25

Overall
Outcome
1–7, 9–12,
14–20, 23,
25

TIME PERIOD FOR RESPONSE
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).
AFFIRMED