Ex Parte Banatwala et al

Patent Trial and Appeal Board

Oct 27, 2017

14306740 (P.T.A.B. Oct. 27, 2017)

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.
14/306,740 06/17/2014 Mustansir Banatwala RSW920130131US2 3453
58139 7590
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
EXAMINER
ROSTAMI, MOHAMMAD S
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
10/31/2017 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):
patdocket@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MUSTANSIR BANATWALA, DAVID A. BROOKS,
and JOSEPH A. RUSSO
Appeal 2017-006338
Application 14/306,7401
Technology Center 2100
Before ELENI MANTIS MERCADER, JOHN D. HAMANN, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-7, which are all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 1.
Appeal 2017-006338
Application 14/306,740
STATEMENT OF THE CASE
Introduction
Appellants’ application relates to checking documents for spelling or
grammatical errors based on use of colloquialisms among users in a social
network. Spec. ^ 1. Claim 1 is illustrative of the appealed subject matter
and reads as follows:
1. A method for checking documents using colloquialisms,
the method comprising:
tracking colloquialisms used in messages by users in a
social network;
identifying relationships between senders and recipients
of said messages using said colloquialisms;
generating a social graph to depict relations between said
users in said social network based on said identified
relationships;
formulating usage patterns of said colloquialisms among
said users of said social graph;
generating a rule set based on said social graph and said
usage patterns of said colloquialisms among said users of said
social graph; and
reviewing, by a processor, a document using said
generated rule set.
The Examiner’s Rejections
Claims 1-7 stand provisionally rejected under nonstatutory double
patenting as unpatentable over claims 8-21 of co-pending Application No.
14/024,817. Final Act. 3—4.
Claims 1 and 4-7 stand rejected under 35 U.S.C. § 102(a) as
anticipated by Karmarkar et al. (US 2015/0046496 Al; Feb. 12, 2015).
Final Act. 5-12.
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Appeal 2017-006338
Application 14/306,740
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Karmarkar and Luo et al. (US 2011/0010384 Al; Jan. 13,
2011). Final Act. 12-15.
RELATED CASE
The present application is a continuation application of U.S.
Application No. 14/024,817, which was decided on appeal by this panel
(Appeal 2017-000892). Ex parte Banatwala et al. (PTAB June 19, 2017)
(available at http://e-foia.uspto.gov/Foia/PTABReadingRoom.jsp).
ANALYSIS
We have reviewed the Examiner’s rejections in consideration of
Appellants’ contentions and the evidence of record. Appellants persuade us
the Examiner fails to establish the claims are unpatentable over the cited
prior art.
Provisional Double Patenting
Claims 1-7 stand provisionally rejected under nonstatutory double
patenting as unpatentable over claims 8-21 of co-pending Application No.
14/024,817. Final Act. 3—4. We decline to reach the provisional rejection as
the issues are not ripe for decision. See Ex parte Moncla, 95 USPQ2d 1884,
1885 (BPAI 2010) (precedential).
Prior Art Rejections
The Examiner finds Karmarkar discloses “generating a rule set based
on said social graph and said usage patterns of said colloquialisms among
said users of said social graph” and “reviewing a document using said
generated rule set,” as recited in claim 1. Final Act. 8-9. In particular, the
Examiner finds Karmarkar discloses generating an implicit social graph
using the content of a digital document. Ans. 8-9 (citing Karmarkar ^ 45).
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Appeal 2017-006338
Application 14/306,740
Context data of a mobile device may be used to weigh the edge weights of
the implicit social graph. Id. The social graph may also be updated over
time as more data is collected from the user. Id. The Examiner finds these
disclosures satisfy the “generating” and “reviewing” limitations. Id.
Appellants argue the Examiner erred because Karmarkar does not
disclose the “generating” and “reviewing” limitations. App. Br. 7-8; Reply
Br. 3-6. Specifically, Appellants argue Karmarkar discloses generating an
implicit social graph that changes over time, but does not disclose generating
a rule set based on that social graph and the usage patterns of colloquialisms.
App. Br. 7-8. Appellants further argue Karmarkar does not disclose using a
generated rule set to review a document. Id.
Appellants have persuaded us of Examiner error. Karmarkar discloses
generating a social graph based on the use of colloquialisms. Karmarkar
^ 45. However, the Examiner has failed to explain how updating the social
graph over time discloses “generating a rule set based on said social graph”
or “reviewing ... a document using said generated rule set,” as recited in
claim 1. On this record we, therefore, do not sustain the rejection of
independent claim 1. We also do not sustain the anticipation rejection of
claims 4-7, which depend from claim 1. In addition, we do not sustain the
§103 rejection of claims 2 and 3, which depend from claim 1, and for which
the Examiner relies on the above findings made with respect to claim 1. We
note that the additional reference of Luo does not cure the above cited
deficiencies.
DECISION
We reverse the decision of the Examiner to reject claims 1-7.
REVERSED
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