Ex Parte Chakra et al

Patent Trial and Appeal Board

Jun 17, 2014

11845176 (P.T.A.B. Jun. 17, 2014)

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.
11/845,176 08/27/2007 Al Chakra RSW920070123US1 8280
87048 7590 06/17/2014
Jordan IP Law (IBM-RSW)
12510 Prosperity Dr., Suite 320
Silver Spring, MD 20904
EXAMINER
TSUI, WILSON W
ART UNIT PAPER NUMBER
2178
MAIL DATE DELIVERY MODE
06/17/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AL CHAKRA, YUPING C. WU, and YONGCHENG LI
____________

Appeal 2012-002178
Application 11/845,176
Technology Center 2100
____________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims directed to
a method, system, and computer program for providing type-ahead hints
while inputting characters into a data entry interface. The Examiner has
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
“Type-ahead hint systems are used to aid users to improve input speed
and choose the right word(s) and/or phrases. The type-ahead hint lists drawn
from a type-ahead hint system are often voluminous.” (Spec. 1 ¶ 2.) “[By]

1 Appellants identify International Business Machines Corporation as the
Real Party in Interest (App. Br. 3).
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Application 11/845,176

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employing the hint generating component . . . to dynamically configure user
preferences. As a result, accurate and more useful (e.g., matchable) type-
ahead hints are generated for the user. Ultimately, time and system
throughputs are saved.” (Spec. 8 ¶ 26.)
Claims 1-20 are on appeal, and can be found in the Claims Appendix
of the Appeal Brief. Claim 1 is representative of the claims on appeal, and
reads as follows:
1. A method for providing type-ahead hints, the method
comprising:
receiving an input string;
providing a configurable preference interface;
obtaining a preference from the interface, wherein the
preference identifies a subject matter scope; and
generating at least one type-ahead hint, based upon the
input string and the subject matter scope, wherein the type-
ahead hint is limited based on the subject matter scope.

Ground of Rejection
The Examiner has rejected claims 1-20 under 35 U.S.C. § 103(a) as
unpatentable over Hachamovitch2 in view of Richardson.3

The Issue: Obviousness over Hachamovitch in view of Richardson
Does the preponderance of evidence of record support the Examiner’s
conclusion that the claims are obvious based on the combination of
Hachamovitch and Richardson?

2 Hachamovitch et al., US 6,377,965 B1, issued Apr. 23, 2002.
3 Richardson et al., US 2006/0190436 A1, published Aug. 24, 2006.
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Appeal 2012-002178
Application 11/845,176

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FF2. The Examiner finds that Hachamovitch “does not expressly
teach wherein the preference identifies a subject matter scope; ... generating,
based upon ... the subject matter scope, wherein the type-ahead hint is
limited based on the subject matter scope.” (Ans. 5.)
FF3. Richardson teaches a method of type-ahead hints, teaching that
the “method includes dynamically suggesting to a user at least one search
query that the user may select as the user constructs the search query”
(Richardson 1: ¶ 8).
FF4. Richardson teaches receiving an input string, teaching that a
“query suggestion module 520 can communicate with the user interface 510
to obtain portions of a phrase entered by a user. Such portions can be
individual letters that are included in the phrase being built by a user, can be
portions of words, or can be groups of words to be included as search terms
for query” (Richardson 5: ¶ 53).
FF5. Richardson teaches providing a configurable preference
interface, teaching that
query suggestion module 520 can also access information from
a user feedback module 540 in order to adjust a manner in
which the query would otherwise be completed. The user
feedback module 540 can provide information from a feedback
data store 550 and assist the query suggestion module 520 in
suggesting a partial query for the user in such a way that is
more likely to result in the obtaining of responsive information.
(Richardson 5: ¶ 53).
FF6. Richardson teaches wherein the preference identifies a subject
matter scope, teaching that
[f]or example, if the user enters “Saturn,” a first set of
suggestions presented to the user can have a common theme of
astronomy-related results. When the user indicates that such
Appeal 2012-002178
Application 11/845,176

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suggestions are not appropriate for his specific query, the query
completion engine 520 can provide new suggestions in the
domain of mythology.
(Richardson 5: ¶ 55; see generally Ans. 5, 11-12.)
FF7. Richardson teaches generating at least one type-ahead hint,
based upon the input string and the subject matter scope, wherein the type-
ahead hint is limited based on the subject matter scope, teaching that
[p]rocessing proceeds to decision block 1030 where a
determination is made whether it is likely that the phrase being
created by the user is still within an initial subset of
completions. This determination allows for the fact that
additional phrase information provided by the user can result in
a change of the field of a query that can be based upon a
suggestion. For example, a user who enters “bruin” as a phrase
can initially be presented with completions that relate to species
of bears. However, a more complete phrase such as “bruins
hockey” can make it evident that the user desires information
not about bears but about the sport of ice hockey.
(Richardson 7: ¶ 75; see generally Ans. 5, 11-12.)
FF8. The Specification teaches an example of negative selection
where “a parent may opt to have a child’s preference list avoid certain
subject matter” (Spec. 10: ¶ 32).
Principles of Law
It is black letter law that “the PTO gives a disputed claim term its
broadest reasonable interpretation during patent prosecution” In re Bigio,
381 F.3d 1320, 1324 (Fed. Cir. 2004). The court recognizes the fairness of
reading claims broadly “before a patent is granted [since] the claims are
readily amended as part of the examination process.” Burlington Indus., Inc.
v. Quigg, 822 F.2d 1581, 1583 (Fed. Cir. 1987). “Thus, a patent applicant
has the opportunity and responsibility to remove any ambiguity in claim
Appeal 2012-002178
Application 11/845,176

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term meaning by amending the application”. Bigio, 381 F.3d at 1324.
Applying the broadest reasonable interpretation to claims also “serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.” In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004).
Analysis
Based on the combination of Hachamovitch and Richardson, the
Examiner concludes, that it would have been prima facie obvious to one of
the ordinary skill in the art at the time of the invention “to have modified
Hachamovitch et al’s method for generating type-ahead hints, such that the
type-ahead hints are limited, based on the subject matter scope. . . . [in order
to] minimize query errors and assisted in query creation to perform effective
searches’” (Ans. 6). Hachamovitch provides a graphical user interface for
receiving an input string, the interface is configurable because it allows word
completion in the form of suggestion lists (FF1; see also Hachamovitch,
Abstract). However, the Examiner finds that Hachamovitch does not
disclose identifying subject matter scope, or the combination of “generating
at least one type-ahead hint, based upon the input string and the subject
matter scope, wherein the type-ahead hint is limited based on the subject
matter scope” (FF2). The Examiner looks to Richardson for providing these
features (FF 3-7). The Examiner reasons that Richardson teaches that
“suggestions/type-ahead hints can dynamically change as a user types, . . .
but also additional terms when typing [paragraph 0075] help further limit
upon the narrowed scope of paragraph [0055] to provide an even more
targeted type-ahead/suggestion list” (Ans. 12).
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Application 11/845,176

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Appellants explain that Richardson “teaches a) executing a search, b)
receiving feedback that the results are not desired, and c) responsive to the
feedback, randomly searching in any and all other domain(s), excepting
those indicated by the user as not desired. The returned results are not
limited to one (or more) particular subject matter scope(s) based on a prior
indication of preference at any time in the process.” (App. Br. 11; see also
Reply Br. 6.) Appellants contend that Richardson provides that a “user can
submit a query by clicking a search button 850 or by navigating directly to
one of the preliminary search result displayed in the results area 860. . . .
[However,] this cited section does not discuss limiting the subject matter
scope of a query at all.” (App. Br. 12.)
We begin with claim interpretation, since before a claim is properly
interpreted, its scope cannot be compared to the prior art. The limitation at
issue is “wherein the preference identifies a subject matter scope.”
There are two ways in which subject matter scope may be identified,
positive and negative. In a positive selection mode, the preference
specifically identifies particular subject matter of interest. In a negative
selection mode, the preference specifically excludes particular subject matter
that is not of interest.
The Specification provides support for both positive and negative
selection. The Specification teaches an example of positive selection where
the “user 16, for example, for one session could adjust the interest to 100%
(i.e., all interest) into ‘Finance’” (Spec. 10 ¶ 31). The Specification also
provides an example of negative selection where “a parent may opt to have a
child’s preference list avoid certain subject matter” (Spec. 10 ¶ 32). Thus,
the phrase “preference identifies a subject matter scope” may be interpreted
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as encompassing either a positive or negative selection of desired subject
matter.
Applying this interpretation to the prior art, Richardson teaches an
example of negative selection of subject matter scope, where the user
excludes astronomy-related results from a search with the word “Saturn”
(FF6). Importantly, Richardson teaches that
if the user enters “Saturn,” a first set of suggestions presented to
the user can have a common theme of astronomy-related
results. When the user indicates that such suggestions are not
appropriate for his specific query, the query completion engine
520 can provide new suggestions in the domain of mythology.
(FF6). Here, Richardson expressly teaches the further step of generating
“new suggestions” with the query completion engine, which are limited
based on the negative selection of subject matter scope.
Appellants contend, regarding paragraph 55 of Richardson, that the
“returned results are not limited to one (or more) particular subject matter
scope(s) based on a prior indication of preference at any time in the process”
(App. Br. 11).
This is simply incorrect. The ordinary artisan would recognize that
when Richardson teaches “the user indicates that such suggestions are not
appropriate for his specific query” (FF6), this negative indication is a
limitation of the subject matter, to exclude some subject matter scope.
Richardson then immediately teaches that new suggestions are provided
based upon the negative selection of subject matter scope, where “the query
completion engine 520 can provide new suggestions in the domain of
mythology” (FF6). This application of Richardson is consistent with
Appellants’ own Specification (FF8) and the understanding of the ordinary
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artisan. Richardson expressly teaches that after astronomy related results
regarding the word “Saturn” are excluded, i.e., limiting the subject matter
scope of “Saturn” to the set of concepts minus astronomy, “the query
completion engine 520 can provide new suggestions in the domain of
mythology” (FF6). This is an express teaching to apply a second search to
the narrowed subject matter category of “Saturn” minus astronomy.
We agree with the Examiner’s finding that
since Richardson teaches in paragraph [0055] that the subject
matter scope (for auto completion/type-ahead suggestions) is
narrowed/limited, such that one less domain is searched when
providing auto-completion/type-ahead results, then Richardson
is maintained to still teach the type ahead/auto-completions is
based upon a subject matter scope (a more limited subject
matter scope based on preference data compared to a more
broad subject matter scope).
(Ans. 11-12).
Appellants contend “that according to antecedent basis rules, the
second recitation of ‘the subject matter scope’ expressly refers to the
previously recited subject matter scope that is identified by a preference
obtained from a configurable preference interface” (Reply Br. 5).
We find this argument unpersuasive because it fails avoid the
teachings of Richardson. When Richardson teaches the negative selection to
avoid the set of results where “Saturn” is associated with astronomy, that is
“a” preference which is obtained from the interface by entry by the user,
which then becomes “the” preference which identifies a subject matter scope
(see FF6). The negative preference identified in Richardson reasonably
satisfies the claim language of claim 1 using the antecedent basis rules.
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Accordingly, we affirm the obviousness rejection of claim 1.
Appellants do not separately argue dependent claims 2-4, 6-15, and 16-20.
(App. Br.10.) Therefore, these claims fall with claim. 37 C.F.R.
§ 41.37(c)(1).

With respect to claims 5 and 15, Appellants contend that the
combination of Hachamovitch and Richardson does not suggest “rendering
the user profile on a graphical user interface” (App. Br. 13).
We also unpersuaded by this argument. Here, the Specification
provides that the user profiles may include history (e.g. statistics) of any
activity by the user related to the type-ahead hint system (Spec. 10 ¶ 32). As
explained above, the Specification provides both positive and negative
selection (FF8). It is the process of making the selection based on history
(e.g.,. actual hint selections) and/or various responses, edits and inputs that
make up the user profile (Spec. 10 ¶ 32). Thus, the phrase “rendering the
user profile on a graphical user interface” may be interpreted as
encompassing making selection on the GUI by either typing in words for
searching and refining information as well as clinking on options provided
on the interface.
Applying this interpretation to the prior art, Richardson provides a
graphical user interface (‘GUI’) (Richardson 2: ¶ 29) that “is interactive and
provides responsive information to the user as the user types” (Richardson 2:
¶ 29, see also Fig. 8, 6: ¶ 69 (“the results are based upon a preliminary
search, which can be cached, using the topmost suggestion. As a user
continues to type, the list of suggestions can change as the user provides a
more complete phrase. Therefore, results of a preliminary search can change
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Application 11/845,176

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as well”)). The graphical user interface allows for the type in query to
receive information from the feedback module (FF5) and ultimately the
completion engine provides the new suggestions as information is being
received for refinement (FF6). Accordingly, Richardson provides a GUI
that changes the user profile with each additional submission of information
entered by the user.
Hachamovitch also provides a graphical user interface for receiving
an input string, the interface is configurable because it allows for the
selection a custom dictionary (FF1; see also Hachamovitch, Abstract). The
Examiner’s position is that Hachamovitch “shows that user-specific settings
for a user (user-profiled-settings) are displayed/rendered on a screen for
further customization of user profile preference data, then Fig 4B still
satisfies that user profile data is rendered on a GUI” (Ans. 14). Because
Hachamovitch provides for the selection of a custom dictionary (FF1, see
422) we agree with the Examiner’s position that Hachamovitch thereby
provides for the limitation of rendering a user profile on a GUI.
As explained above, we find that both Hachamovitch and Richardson
teach the limitation of “rendering a user profile on a GUI” as this limitation
is encompassed by the Specification. Accordingly, we find no error in the
Examiner’s rejection of claims 5 and 15 based on the combination of
Hachamovitch and Richardson. We thus affirm the rejection of claims 5 and
15 under 35 U.S.C. § 103(a) as being obvious

Appeal 2012-002178
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SUMMARY
We affirm the rejection of claims 1-20 under 35 U.S.C. § 103(a) as
unpatentable over Hachamovitch in view of Richardson.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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