Ex Parte Balakrishnan et al

Patent Trial and Appeal Board

Mar 25, 2013

11532977 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SREERAM VISWANATH BALAKRISHNAN,
GANESH RAMAKRISHNAN, and SACHINDRA JOSHI
1

____________________

Appeal 2010-009725
Application 11/532,977
Technology Center 2100
____________________

Before DAVID M. KOHUT, MICHAEL J. STRAUSS, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-20, all pending claims in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1
The Real Party in Interest is International Business Machines Corporation.
App. Br. 2.
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STATEMENT OF THE CASE
2

The Invention
Appellants’ invention relates generally to annotating a collection of
documents, and more particularly to annotating a collection of documents
using a base inverse index of the documents. Spec. p. 1, ll. 3-5 (“Field of the
Invention”).
Exemplary Claims
Claim 1 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphasis added):
1. A method for annotating token sequences within a
plurality of documents comprising:
receiving a base inverse index for unique tokens within
the plurality of documents, where the base inverse index
comprises a set of the unique tokens within the plurality of
documents and a set of location lists for each unique token;
creating indices for a set of the token sequences within
the plurality of documents from the base inverse index; and
annotating the token sequences based on said indices
created for said set of said token sequences.

2
Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
June 23, 2010); Reply Brief (“Reply Br.,” filed June 24, 2010); Examiner’s
Answer (“Ans.,” mailed May 27, 2010); Final Office Action (“FOA,”
mailed Dec. 10, 2009); and the original Specification (“Spec.,” filed Sep. 19,
2006).
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Claim 10 is an exemplary claim representing an aspect of the
invention which is reproduced below (emphasis added):
10. A method for annotating each of a plurality of
tokens within a plurality of documents comprising:
receiving a base inverse index for the plurality of
documents, the base inverse index having an ordered list of
unique tokens and a set of location lists for each unique token,
each location list being an ordered list of pointers to the
plurality of documents;
for each of a plurality of derived entities, each derived
entity being a sequence of tokens, determining an index as a
consecutive intersection of all of a plurality of location lists of
pointers within the derived entity, such that the index contains
location lists of pointers to all occurrences of the sequence of
tokens of the derived entity within the plurality of documents;
merging the location lists of pointers for all the derived
entities to result in a final location list; and
annotating said documents with the tokens of the
derived entities.

Claim 20 is an exemplary claim representing an aspect of the
invention which is reproduced below (emphasis added):
20. A computerized system comprising:
a computer-readable storage medium storing:
a plurality of documents having a plurality of tokens;
a base inverse index previously generated for the
documents;
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a mechanism to annotate each token within the
plurality of documents based on the base inverse index, such
that annotation of the plurality of documents occurs at a same
time.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Shwartz US 5,584,024 Dec. 10, 1996
Lee US 5,742,769 Apr. 21, 1998
Whang US 6,349,308 B1 Feb. 19, 2002
Ribak US 2003/0030645 A1 Feb. 13, 2003
Milic-Frayling US 2004/0100510 A1 May 27, 2004
Stolze US 2004/0138946 A1 July 15, 2004
Anthony F. Gallippi, “Learning to Recognize Names Across Languages,”
pp. 424-425, Proceedings of the 16th Conference on Computational
Linguistics, 1996.
Rejections on Appeal
1. Claims 19-20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Milic-Frayling. Ans. 5.
2. Claims 1-3, 6-8, 10, and 15-16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Whang with
Gallippi. Ans. 12.
3. Claims 4-5 and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Whang, Gallippi, and Ribak.
Ans. 19.
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4. Claims 11-13 are rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Whang, Gallippi, and Shwartz.
Ans. 22.
5. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Whang, Gallippi, Shwartz, and Lee.
Ans. 24.
6. Claims 17-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Whang, Gallippi, and Stolze. Ans. 25.
ISSUES AND ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claims 1-20, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Arguments. However,
we highlight and address specific findings and arguments regarding claims
1, 10, and 20 for emphasis as follows.
1. Rejection of Claims 19-20
Issue 1
Appellants argue (App. Br. 11-14; Reply Br. 3-5) that the Examiner’s
rejection of claim 20 under 35 U.S.C. § 102(b) as being anticipated by
Milic-Frayling is in error. These contentions present us with the following
issue:
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Did the Examiner err in finding that Appellants’ claimed
computerized system is anticipated by Milic-Frayling,
particularly that the cited art discloses “a mechanism to
annotate each token within the plurality of documents based on
the base inverse index, such that annotation of the plurality of
documents occurs at a same time,” as recited in claim 20?
Analysis
Appellants contend that Milic-Frayling’s inverted index is used for
“target” pages and logical sections of those “target” pages, and not with “a
plurality of documents” as recited in claims 19 and 20, and that:
Milic-Frayling is only concerned with identifying a specific
target Web page’s logical section that can be selected for
viewing in a zoomed in, reformatted display . . . [and] NOT
with annotating a plurality of tokens within a plurality of
documents based on a base inverse index for the plurality of
documents.
App. Br. 12 (citing Milic-Frayling ¶ [0007], emphasis in original).
In response, the Examiner finds that Milic-Frayling teaches the
recitation of using an inverted index with a plurality of documents by
teaching using a looping operation to annotate each target web page in a
search result, and we agree that, the search results contain a plurality of
documents, i.e., web pages returned in the search results. Ans. 28. We
agree with the Examiner that Milic-Frayling then annotates the documents
within an inverse index, thus disclosing using an inverse index to annotate a
plurality of documents. Id. (citing Milic-Frayling ¶ [0075]).
Appellants also contend that the Examiner erred with respect to
finding anticipation of the limitation “that annotation of the plurality of
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documents occurs at a same time,” as also recited in claim 20. Appellants
allege that this purported distinction is the result of Milic-Frayling’s
incremental looping, which cannot be “at a same time.” App. Br. 13. We
disagree.
As pointed out by the Examiner, Appellants’ Specification discloses
that:
Because the documents 106 are annotated by annotating the
inverse index 108 of the documents 106, it can be said that the
documents 106 are all annotated at the same time . . . because
the inverse index 108 pertains to all the documents 106,
annotating the index 108 effectively annotates all the
documents 106 at the same time.
Spec. 6, emphasis added, (see Ans. 29).
Specifically, we agree with the Examiner’s finding that:
As defined by the Appellants, a plurality of documents are
annotated at the same time when the index for those documents
is annotated. Milic-Frayling . . . discloses annotating an index
for a plurality of documents when it discloses associating
(annotating) an inverted index with the page numbers for the
tokens within the index . . . [t]herefore, Milic-Frayling . . .
teaches annotating the plurality of documents at the same time
because it teaches annotating the inverted index, which is how
the Appellants define annotating a plurality of documents at the
same time. Further, the fact that a looping mechanism is
incremental has no bearing on whether the documents are
annotated at the same time because Milic-Frayling . . . discloses
the limitation, as defined by the Appellants’ Specification.
Ans. 29-30 (citing Milic-Frayling ¶ [0074]).
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In the Reply, Appellants repeat their argument, and also state that they
“made this statement [in the Appeal Brief] to show [that] the context of the
invention of Milic-Frayling teaches away from Appellant[s’] claimed
invention, not the Examiner’s alleged ‘concern of that art.’” Reply Br. 4
(emphasis in original). However, the Examiner points out, and we agree,
that “teach away” arguments are not applicable in anticipation rejections.
Ans. 30.
In addition, and in further support of the Examiner’s position, we note
that Appellants’ Specification further discloses that “[e]mbodiments of the
invention provide for advantages over the prior art . . . [a]s such, entity
annotation . . . [occurs] at the document collection-level, such that
annotation occurs for all the documents at substantially the same time.”
Spec. 3, emphasis added. We find that a person of ordinary skill in the
computing arts would understand “effectively at the same time” and
“substantially the same time” to be relative timing concepts that provide a
basis for defining Appellants’ recitation of “annotation of the plurality of
documents occurs at a same time,” particularly in light of Appellants’
Specification, cited above. Accordingly, we agree with the Examiner’s
findings of fact and related claim construction for claim 20.
Further, claim 19
3
recites a similar limitation as claim 20, i.e., “means
in the storage medium for annotating each of a plurality of tokens within a

3
If further prosecution of claim 19 should ensue, we also note a potential
enablement problem as a “single means” claim, i.e., where a means
recitation does not appear in combination with another recited element of
means. Such claims are subject to an undue breadth rejection under 35
(Footnote continued on next page.)
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plurality of documents based on a base inverse index for the plurality of
documents.” We agree with the Examiner’s findings (Ans. 28) with respect
to this limitation, which is similarly recited in claim 20 as “a mechanism to
annotate each token within the plurality of documents based on the base
inverse index.”
Accordingly, Appellants have not provided sufficient evidence or
argument to convince us of any error in the Examiner’s characterization of
the cited art and related claim construction. Therefore, we sustain the
Examiner’s rejection of independent claims 19 and 20.
2. Rejection of Claims 1-18
Issue 2
Appellants argue (App. Br. 14-20; Reply Br. 6-9) that the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Whang and Gallippi is in error. These contentions present us
with the following issue:
Did the Examiner err in finding that Appellants’ claimed
method for annotating token sequences within a plurality of
documents is rendered unpatentable over the combination of
Whang and Gallippi, particularly that the combination teaches
or suggests, inter alia, the step of “annotating the token

U.S.C. § 112, first paragraph. In re Hyatt, 708 F.2d 712, 714-715 (Fed. Cir.
1983) (A single means claim which covered every conceivable means for
achieving the stated purpose was held nonenabling for the scope of the claim
because the specification disclosed at most only those means known to the
inventor.).
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sequences based on said indices created for said set of said
token sequences,” as recited in claim 1?
Analysis
Appellants contend that:
Whang discloses that a subindex is created on document
identifiers for long posting lists to quickly find the locations of
the postings in the long posting list . . . [and that] Whang’s
subindex is created for posting lists that exceed a particular size
and consists of a docID as a primary key and multiple leaf entry
points to each posting of the posting list in a large object.”
App. Br. 15. Appellants further contend that “[n]owhere does Gallippi
disclose a subindex, per Whang’s disclosure, being annotated . . . [but]
merely discloses that each word is tagged with its associated features.” App.
Br. 16 (emphasis in original). Appellants further contend that, in order for
the Examiner to properly combine Whang and Gallippi, “Gallippi would
need to show annotating token sequences, (each word), based on the
subindices 22 of Whang for the set of token sequences, (words).” Id.
Finally, Appellants contend that:
the Examiner’s motivation to combine the references is
erroneous for two reasons: 1) the motivation provided by the
Examiner to combine the references would not have been
obvious to one of ordinary skill in the art at the time of the
invention; and 2) there is no reasonable expectation of success
in combining the references.
Id. We find that Appellants’ arguments are not persuasive.

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In response to Appellants’ arguments, the Examiner finds that:
Gallippi discloses this limitation [i.e., “annotating the token
sequences based on said indices created for said set of said
token sequences”] when it teaches “each word is tagged with all
of its associated features” (See Gallippi Page 425, “Method,”
Second Paragraph) because each word is a token that is
annotated (tagged) with its associated features that have been
derived from an index (the phrasal templates that determine the
boundaries of particular words). The fact that Gallippi does not
teach annotating the token sequences within a subindex is
irrelevant because a subindex is an index and Gallippi discloses
annotating the tokens within an index.
Second, Appellants argue that there is no motivation to
combine Whang et al. and Gallippi because the motivation
provided would not have been obvious to one of ordinary skill
in the art . . . .
The level of ordinary skill in the art is that of a computer
programmer in the field of document annotation.
It would have been obvious to such a computer
programmer to combine the teachings of Whang et al. and
Gallippi in order to annotate the tokens stored in an index with
information about that index in order to increase reusability
(See Gallippi Page 424, “Introduction,” First Paragraph)
because reusability is a key concern in software development
and is frequently considered by computer programmers.
Further, it is not necessary that the prior art suggest the
combination to achieve the same advantage or result discovered
by the applicant (e.g. the purpose of the invention).
Ans. 30-31. We agree with the Examiner’s findings and stated basis for
motivation, and particularly agree that the same advantage for making the
reference combination as that stated by Appellants is not necessary to
establish a prima facie case for unpatentability.
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We also agree with the Examiner’s findings rebutting Appellants’
contention (App. Br. 16, 18) that there is no reasonable expectation of
success in the resulting combination because:
Both Whang et al. and Gallippi teach modules of computer
code and a person of ordinary skill in the art would be able to
modify one module to work with another . . . [and that] Gallippi
does not need to teach tagging a subindex in order for a
reasonable expectation of success to exist.
Ans. 32-33.
Appellants argue (App. Br. 19-20; Reply Br. 6-9), similarly to claim
1, that the Examiner’s rejection of claim 10 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Whang and Gallippi is in error.
Appellants’ arguments focus on the motivation to combine Whang
with Gallippi. Appellants argue:
[T]he Examiner equates Appellant's “derived entities,”
with Whang’s subindices 22. Appellant refers the Examiner to
the above argument made with respect to Appellant’s
independent claim 1 that demonstrates that if the Examiner
equates Appellant’s claimed “derived entities” / “indices” with
Whang’s “subindex 22” as described in Fig. 2, then the
combination of Gallippi would NOT have been obvious due to
Gallippi’s failure to show the tagging/annotating of a subindex
as described in Whang.
[] Again, as argued above, the subindices 22 as shown in
Fig. 2 of Whang would have no reasonable expectation of
success in the resulting combination with Gallippi’s disclosure
of “each word is tagged,” since nowhere in Gallippi is there any
disclosure of tagging subindices of the likes of Whang.
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App. Br. 19 (emphasis in original). In response, the Examiner finds that
“[f]or the reasons discussed in the response above [to claim 1], the Examiner
maintains that the rejection was proper.” Ans. 33. We are not persuaded by
Appellants’ arguments, and agree with the Examiner’s findings regarding
claim 10.
The patentability of dependent claims 2-9 and 11-18 is not argued
separately, so that the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986.) Appellants have
not provided separate, substantive arguments with respect to the
patentability of dependent claims 2-9, except to argue that “[d]ependent
claims 2-9 [and 11-18] are patentable not only because they depend from a
patentable claim, but also because of the additional features they define.”
App. Br. 10-11. We therefore sustain the Examiner’s rejection of dependent
claims 2-9 and 11-18 for the same reasons discussed supra with respect to
claims 1 and 10.
CONCLUSIONS
(1) The Examiner did not err with respect to the rejection of claims
19 and 20 under 35 U.S.C. § 102(b) as being anticipated by Milic-Frayling,
and the rejection is sustained.
(2) The Examiner did not err with respect to the rejections of
claims 1-18 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Whang and Gallippi and various other references of record,
and the rejections are sustained.
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DECISION
The decision of the Examiner to reject claims 1-20 is affirmed.
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)(iv) (2011).
AFFIRMED

ELD