Ex Parte Hsu et al

Patent Trial and Appeal Board

Sep 25, 2018

13069526 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/069,526 03/23/2011
69316 7590 09/27/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
FIRST NAMED INVENTOR
Bo-June Hsu
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
332348.01 1269
EXAMINER
FEATHERSTONE, MARK D
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
usdocket@microsoft.com
chriochs@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BO-JUNE HSU, KUANSAN WANG, and HUIZHONG DUAN
Appeal2018-001654
Application 13/069,526
Technology Center 2100
Before JOHN A. JEFFERY, THU A. DANG, and
ELENI MANTIS MERCADER, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-5, 10-13, and 16-25. 2 We have jurisdiction
under 35 U.S.C. § 6(b ). We affirm.
1 Appellants identify the real party in interest as Microsoft Technology
Licensing, LLC. App. Br. 2.
2 This claim listing reflects the Examiner's rejections as presented in the
Examiner's Answer indicating that the Examiner (1) withdrew the
obviousness rejection of claims 3---6, and (2) entered a new ground of
rejection under§ 101 for claims 1-5, 10-13, and 16-25. See Ans. 2, 14.
Although the Examiner indicates that claim 6 is rejected under § 101 in the
"Grounds of Rejection to be Reviewed on Appeal" section preceding the
§ 101 rejection (Ans. 2), the rejection itself does not include claim 6 in the
statement of the rejection or the corresponding discussion. See Ans. 2-14.
Accordingly, we presume that claim 6 was not rejected under § 101.
Appeal2018-001654
Application 13/069,526
STATEMENT OF THE CASE
Appellants' invention corrects spelling and completes phrases as a
sequence of characters is received from a client computing device. To this
end, phrases are identified with correct spelling of words that can then be
submitted to a search engine. See generally Spec. ,r,r 5-9, 21-25, 64; Figs.
1, 5. Claim 1 is illustrative:
1. A method that is executed by at least one processor at a server
computing device, the method being for performing spelling
correction and phrase completion as a sequence of characters
are received, the method comprising:
receiving, from a client computing device in
communication with the server computing device, a misspelled
portion of a word, the misspelled portion of the word being a
portion of a query to be submitted to a search engine;
responsive to receiving the misspelled portion of the
word and prior to receiving an entirety of a misspelling of the
word from the client computing device, identifying a multi-
word phrase, the multi-word phrase comprises the entirety of
the word and at least one other word that follows the word, the
word being correctly spelled in the multi-word phrase; and
responsive to identifying the multi-word phrase and prior
to receiving the entirety of the misspelling of the word, causing
the multi-word phrase to be displayed on a display of the client
computing device as a suggested query for submission to the
search engine.
App. Br. 14 (Claims Appendix).
THE REJECTIONS
The Examiner rejected claims 1-5, 10-13, and 16-25 under 35 U.S.C.
§ 101 as directed to ineligible subject matter. Ans. 2-14. 3
3 Throughout this opinion, we refer to (1) the Final Rejection mailed October
6, 2016 ("Final Act."); (2) the Appeal Brief filed June 6, 2017 ("App. Br.");
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The Examiner rejected claims 1, 11-13, 20, 21, 23, and 24 under 35
U.S.C. § 103 as unpatentable over Richardson (US 2006/0190436 Al;
published Aug. 24, 2006), Church (US 5,572,423; issued Nov. 5, 1996), and
Jania (US 2009/0254818 Al; published Oct. 8, 2009). Final Act. 2-8.
The Examiner rejected claim 2 under 35 U.S.C. § 103 as unpatentable
over Richardson, Church, Jania, and Medlock (US 2012/0029910 Al;
published Feb. 2, 2012). Final Act. 8-10.
The Examiner rejected claims 16-18 and 22 4 under 35 U.S.C. § 103
as unpatentable over Richardson, Church, Jania, and Ortega (US 6,564,213
Bl; issued May 13, 2003). Final Act. 10-14.
The Examiner rejected claims 10, 19, and 25 under 35 U.S.C. § 103
as unpatentable over Richardson, Church, Jania, and Sandoval (US
2009/0216563 Al; Aug. 27, 2009). Final Act. 14--16.
THE INELGIBILITY REJECTION
The Examiner finds that the claimed invention is directed to an
abstract idea, namely correcting spelling and completing a phrase responsive
to receiving a misspelled portion of a word. Ans. 2-3. According to the
Examiner, the claimed elements do not add significantly more to the abstract
idea to render the claimed invention patent-eligible because, among other
things, the claims recite generic computer components that perform
functions that merely implement the abstract idea on a computer. Ans. 3.
(3) the Examiner's Answer mailed October 4, 2017 ("Ans."); and (4) the
Reply Brief filed December 4, 2017 ("Reply Br.").
4 This claim listing reflects the Examiner's withdrawing the rejection of
claims 3-6 on this ground. See Ans. 14.
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The Examiner adds that using a suggested term or phrase as a search query
is a well-understood, routine, and conventional mechanism previously
known to the search engine industry as evidenced by the Richardson
reference cited in the obviousness rejection. Id.
Appellants argue that the claimed invention is not directed to an
abstract idea, but rather is directed to performing spelling correction and
phrase completion as a query is submitted to an Internet search engine such
that a helpful suggested query is presented to an end user. Reply Br. 3.
According to Appellants, the claimed invention does not just correct spelling
and complete phrases responsive to receiving misspelled words as the
Examiner contends, but rather does so when the user attempts to submit a
query to a search engine. Reply Br. 5. This functionality is said to be tied to
Internet search technology, where (1) a misspelled portion of a word that
forms part of a search query that is to be submitted to a search engine is
received from a client computing device; (2) a server causes a suggested
query with a correctly-spelled word to be displayed on the client computing
device; and (3) the multi-word phrase is identified as the user types, where
the phrase includes the entirety of the word and word(s) that follow the
word. Reply Br. 5---6. According to Appellants, the claims' focus is on
improving computing technologies, namely with respect to Internet search
engines, where helpfulness of the engine's query suggestions decreases
when a query prefix includes misspelled words or word portions. Reply Br.
6-9. Appellants add that the claims are not abstract when comparing them
to those considered by the Supreme Court and Federal Circuit in earlier
cases. Reply Br. 9--13.
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ISSUE
Has the Examiner erred in rejecting claim 1 by concluding that it is
directed to ineligible subject matter under § 101? This issue turns on
whether the claimed invention is directed to a patent-ineligible abstract idea
and, if so, whether the claim's elements----considered individually and as an
ordered combination-transform the nature of the claim into a patent-
eligible application of that abstract idea.
ANALYSIS
To determine whether claims are patent eligible under§ 101, we apply
the Supreme Court's two-step test articulated in Alice Corp. Proprietary Ltd.
v. CLS Bank International, 134 S. Ct. 2347 (2014). First, we determine
whether the claims are directed to a patent-ineligible concept: laws of
nature, natural phenomena, and abstract ideas. Id. at 2354--55. If so, we
then proceed to the second step and examine the claim's elements-both
individually and as an ordered combination-to determine whether the claim
contains an "inventive concept" sufficient to transform the claimed abstract
idea into a patent-eligible application. Id. at 2357.
Alice Step One
Applying Alice step one, we agree with the Examiner that the claimed
invention is directed to an abstract idea, namely correcting spelling and
completing a phrase responsive to receiving a misspelled portion of a word.
Ans. 2-3. Claim 1 recites, in pertinent part, a server computing device ( 1)
receiving, from a client computing device, a misspelled portion of a word
that is part of a query to be submitted to a search engine; (2) identifying a
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multi-word phrase comprising the entire word----correctly spelled-and other
word(s) that follow the correctly-spelled word responsive to receiving the
misspelled word portion; and (3) causing the multi-word phrase to be
displayed on the client device as a suggested search query responsive to
identifying the multi-word phrase. Notably, steps (2) and (3) must occur
before the entire misspelled word is received.
In essence, the claimed invention suggests phrases with words as
alternatives to those that the system perceives were at least partially
misspelled before they are submitted to a search engine. Despite
Appellants' arguments to the contrary (Reply Br. 2-13), we agree with the
Examiner that claim 1 is directed to an abstract idea, namely correcting
spelling and completing a phrase responsive to receiving a misspelled
portion of a word.
It is well settled that collecting information is within the realm of
abstract ideas----even when the information is limited to particular content.
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016). It is also well settled that analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, are
essentially mental processes within the abstract idea category. Id. at 1354.
And merely presenting the results of abstract processes of collecting and
analyzing information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis.
Id.
Similar to the claims at issue in Electric Power, the claimed invention
here gathers, manipulates, analyzes, and presents information of a specified
content, namely words and phrases, but does not use any particular inventive
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technology for performing those functions. Accord Ans. 3 ( citing Electric
Power). And, as the Examiner explains, the recited functions could be
performed mentally by, among other things, (1) correcting a misspelled
word, and (2) identifying a candidate phrase based on that word. Ans. 3.
And even assuming, without deciding, that this process also involves using
books, such as dictionaries and thesauri, to compare text and identify
suitable candidate words and phrases before submission to a search engine,
the recited functions could still be performed manually.
We find unavailing Appellants' contention that the claimed invention
improves computing technologies, namely with respect to Internet search
engines, where helpfulness of the engine's query suggestions decreases
when a query prefix includes misspelled words or word portions. Reply Br.
6-9. To be sure, claim 1 recites a method executed by a processor at a
server computing device that corrects spelling and completes phrases as a
character sequence is received from a client computing device, and, in
particular, before a query including the misspelled text is submitted to a
search engine. But the claimed invention is not directed to improving the
computer's operation by, for example, improving its speed and efficiency,
but rather corrects entered text and suggests candidate phrases with general-
purpose computing components-functions that could otherwise be
performed manually as noted previously. Although these functions may be
beneficial by reducing a user's erroneous search queries and corresponding
results, a claim for a useful or beneficial abstract idea is still an abstract idea.
See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379-80
(Fed. Cir. 2015).
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Nor are we persuaded that the claimed invention improves the
computing devices' functionality or efficiency, or otherwise changes the
way those devices function, at least in the sense contemplated by the Federal
Circuit in Enfzsh LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir.
2016), despite Appellants' arguments to the contrary (Reply Br. 7-8). The
claimed self-referential table in Enfzsh was a specific type of data structure
designed to improve the way a computer stores and retrieves data in
memory. Enfish, 822 F.3d at 1339. To the extent Appellants contend that
the claimed invention uses such a data structure to improve a computer's
functionality or efficiency, or otherwise change the way that device
functions (see Reply Br. 7-8, 12), there is no persuasive evidence on this
record to substantiate such a contention.
To be sure, the court in Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1299-1300 (Fed. Cir. 2016) held that a claim directed to
using accounting information with which a network accounting record is
correlated to enhance the record was held eligible because the claim
involved an unconventional technological solution ( enhancing data in a
distributed fashion) to a technological problem (massive record flows which
previously required massive databases). Although the court recognized that
this solution used generic components, the recited enhancing function
necessarily required these generic components to operate in an
unconventional manner to achieve an improvement in computer
functionality. Id. at 1300--01. Notably, the recited enhancement in Amdocs
depended on not only the network's distributed architecture, but also on the
network devices and "gatherers" working together in a distributed
environment. Id. at 1301. In reaching its eligibility conclusion, the court
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noted the patent's emphasis on the drawbacks of previous systems where all
network information flowed to one location making it very difficult to keep
up with massive record flows from network devices and requiring huge
databases. Id. at 1300. The court also noted similar network-based
drawbacks that were overcome by similar unconventional distributed
solutions in other patents at issue. See id. at 1305---06.
That is not the case here. Although the claimed invention uses
conventional computing components that exchange data, there is no
persuasive evidence on this record to show that these generic components
operate in an unconventional manner to achieve an improvement in
computer functionality as in Amdocs apart from Appellants' arguments
(Reply Br. 12) that have little probative value. See In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); see also Enzo Biochem, Inc. v. Gen-Probe, Inc.,
424 F.3d 1276, 1284 (Fed. Cir. 2005) ("Attorney argument is no substitute
for evidence.").
Appellants' reliance on Trading Technologies International v. CQG,
Inc., 675 F. App'x 1001 (Fed. Cir. 2017) (unpublished) (Reply Br. 8-9) is
likewise unavailing. In this non-precedential decision, the court held
eligible claims reciting a method for displaying market information relating
to a traded commodity where, among other things, two indicators were
displayed dynamically in bid and ask display regions, respectively, of a
graphical user interface, the regions positioned along a common static price
axis. Trading Techs., 675 F. App'x at 1002---06. The claimed invention in
that case also displayed an order entry region with locations for receiving
trade order commands, and, responsive to selecting a particular location, (1)
commodity-related trade order parameters were set, and (2) a trade order
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was sent to an electronic exchange. Id. at 1003. Notably, the court held that
claimed invention did not simply display information on a graphical user
interface, but rather required a specific, structured graphical user interface
paired with prescribed functionality directly related to the interface's
structure that addressed and resolved a specifically-identified problem in the
art and, therefore, was not directed to an abstract idea. Id. at 1004.
That is not the case here. Although the claimed invention here
displays phrases on a client computing device as suggested search queries,
where the phrases are based on a user misspelling a portion of a word, to the
extent that Appellants contend that the claimed invention is directed to a
specific, structured graphical user interface paired with prescribed
functionality directly related to the interface's structure that addresses and
resolves a specifically-identified problem in the art as in Trading
Technologies (see Reply Br. 8-9, 12-13), there is no persuasive evidence on
this record to substantiate such a contention. Although the recited functions
may be beneficial by reducing a user's erroneous search queries and
corresponding results, a claim for a useful or beneficial abstract idea is still
an abstract idea. See Ariosa, 788 F.3d at 1379-80.
Appellants' reliance on DDR Holdings, LLC v. Hotels.Com, L.P., 773
F.3d 1245 (Fed. Cir. 2014) on pages 13 of the Reply Brief is likewise
unavailing. There, instead of a computer network operating in its normal,
expected manner by sending a website visitor to a third-party website
apparently connected with a clicked advertisement, the claimed invention in
DDR generated and directed the visitor to a hybrid page that presented (1)
product information from the third party, and (2) visual "look and feel"
elements from the host website. DDR, 773 F.3d at 1258-59. Given this
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particular Internet-based solution, the court held that the claimed invention
did not merely use the Internet to perform a business practice known from
the pre-Internet world, but rather was necessarily rooted in computer
technology to overcome a problem specifically arising in computer
networks. Id. at 1257.
That is not the case here. As noted previously, Appellants' claimed
invention, in essence, suggests phrases with words as alternatives to those
that the system perceives were at least partially misspelled before they are
submitted to a search engine. Despite Appellants' arguments to the contrary
(Reply Br. 13), the claimed invention here is not necessarily rooted in
computer technology in the sense contemplated by DDR where the claimed
invention solved a challenge particular to the Internet. Although the recited
functions of Appellants' invention uses a network to transfer data between
client and server computing devices, and involves search queries to be
submitted to a search engine, it does not solve a challenge particular to that
network. That Appellants' disclosure indicates that standard off-the-shelf
computer technology is usable to implement the claimed invention in
paragraphs 7 4 to 77 and Figure 9 only bolsters the notion that the claimed
invention does not focus on an improvement in computers as tools, but
rather certain independently abstract ideas that use computers as tools. See
Elec. Power, 830 F.3d at 1354.
We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.
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Alice Step Two
Turning to Alice step two, the recited elements----considered
individually and as an ordered combination----do not transform the nature of
claim 1 into a patent-eligible application of the abstract idea to ensure that
the claim amounts to significantly more than that idea. See Alice, 134 S. Ct.
at 2357.
That the recited method is executed by a processor at a server
computing device does not change our conclusion. As the Examiner
explains, the claimed invention merely uses generic computing components
to perform the recited abstract idea, namely correcting spelling and
completing a phrase responsive to receiving a misspelled portion of a word.
See Ans. 3. Merely reciting these generic computing components cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
See Alice 134 S. Ct. at 2358-59; see also Mortgage Grader Inc. v. First
Choice Loan Services, Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016)
(noting that components such an "interface," "network," and "database" are
generic computer components that do not satisfy the inventive concept
requirement); buySAFE v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) ("That a computer receives and sends the information over a
network-with no further specification-is not even arguably inventive.").
Indeed, the recited generic computing components merely do that
which can be performed mentally or with pen and paper----exclusive
functions ineligible for patent protection under § 101. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011).
Accord Ans. 3 (noting that a human mind can correct a misspelled word and
identify a candidate phrase based on the word). To the extent that
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Appellants contend that the recited functions could not otherwise be
performed manually, including (1) receiving a misspelled portion of a word
that is part of a query to be submitted to a search engine; (2) identifying a
multi-word phrase comprising the entire word----correctly spelled-and other
word(s) that follow the correctly-spelled word responsive to receiving the
misspelled word portion; and (3) suggesting a search query to a user
responsive to identifying the multi-word phrase (see Reply Br. 14--17), there
is no persuasive evidence on this record to substantiate such a contention.
We reach this conclusion despite the fact that the latter two steps occur
before the entire misspelled word is received for, here again, these steps
could be performed manually as noted previously.
Nevertheless, even assuming, without deciding, that the recited
components add efficiency, any speed increase comes from the capabilities
of the generic computer components-not the recited process itself. See
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d
1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.")). Like the claims in
Fair Warning, the focus of claim 1 is not on an improvement in computer
processors as tools, but on certain independently abstract ideas that use
generic computing components as tools. See FairWarning, 839 F.3d at 1095
( citations and quotation marks omitted).
In short, merely reciting these generic computing components cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
Id. at 2358. In other words, merely reciting an abstract idea while adding the
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words "apply it with a computer" does not render an abstract idea non-
abstract: there must be more. See Alice, 134 S. Ct. at 2359. Nor does the
claimed invention improve the computer processor device's functionality or
efficiency, or otherwise change the way that device functions. Cf Enfzsh
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Appellants'
contention, then, that the claimed invention is rooted in technology (Reply
Br. 15-16) is unavailing.
Appellants' contention that the Examiner provided no evidence that
the recited elements of the claimed invention are well-understood, routine,
and conventional (Reply Br. 16) is likewise unavailing. In the rejection, the
Examiner finds that the additional recited elements, including the recited
processor, server and client computing devices, and display are generic,
well-known computer components. Ans. 3. The Examiner also finds that
using a suggested term or phrase as a search query is a well-understood,
routine, and conventional mechanism previously known to the search engine
industry as evidenced by the Richardson reference cited in the obviousness
rejection. Id. Appellants do not squarely address-let alone persuasively
rebut-these particular findings in connection with the eligibility rejection
and, therefore, we are unpersuaded of error in those findings.
Appellants' reliance on BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) on pages 14 of the
Reply Brief is unavailing. There, the court held eligible claims directed to a
technology-based solution to filter Internet content that overcame existing
problems with other Internet filtering systems by making a known filtering
solution-namely a "one-size-fits-all" filter at an Internet Service Provider
(ISP}--more dynamic and efficient via individualized filtering at the ISP.
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BASCOM, 827 F.3d at 1351. This customizable filtering solution improved
the computer system's performance and, therefore, was patent-eligible. See
id.
But unlike the filtering system improvements in BASCOM that added
significantly more to the abstract idea in that case, the claimed invention
here uses generic computing components to implement an abstract idea,
namely correcting spelling and completing a phrase responsive to receiving
a misspelled portion of a word.
Lastly, we find unavailing Appellants' contention that the claimed
invention adds significantly more to the alleged abstract idea because the
claimed invention does not preempt that idea. Reply Br. 16-17. Where, as
here, the claims cover a patent-ineligible concept, preemption concerns "are
fully addressed and made moot" by an analysis under the Alice framework.
See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015).
For the foregoing reasons, then, the recited elements----considered
both individually and as an ordered combination----do not contain an
"inventive concept" sufficient to transform the claimed abstract idea into a
patent-eligible application. Therefore, we are not persuaded that the
Examiner erred in rejecting claim 1, and claims 2-5, 10-13, and 16-25 not
argued separately with particularity.
THE REJECTION OVER RICHARDSON, CHURCH, AND JANIA
Regarding claim 1, the Examiner finds that Richardson discloses,
among other things, (1) receiving a misspelled portion of a word ("wellne"
in Figure 8) as part of a query to be submitted to a search engine; (2)
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identifying a multi-word phrase ("wellness dog food" or "wellness center")
comprising the entire word ("wellness"}-----correctly spelled-and other
words ("dog food" or "center") that follow the correctly-spelled word
responsive to receiving the misspelled word portion; and (3) causing the
multi-word phrase to be displayed on the client device as a suggested search
query responsive to identifying the multi-word phrase. Final Act. 3--4; Ans.
15. The Examiner also finds that steps (2) and (3) occur before the entire
word is received in Richardson. See id. Although the Examiner
acknowledges that Richardson does not explicitly teach (1) the received
word portion is misspelled and corrected, and (2) identifying and displaying
a suggestion before receiving the entire misspelled word, the Examiner cites
Church and Jania for teaching these respective features in concluding that
the claim would have been obvious. Final Act. 3--4; Ans. 15-16.
Appellants argue that the cited prior art does not teach or suggest
identifying a multi-word phrase responsive to receiving a misspelled portion
of a word and before receiving the entire misspelling of the word, where the
multi-word phrase comprises the entire correctly-spelled word and at least
one other word that following the word as claimed. App. Br. 7-10; Reply
Br. 17-20. According to Appellants, modifying Richardson with Church's
teachings as the Examiner proposes would result in submitting words in a
query to a search engine, and then identifying the query's misspelled words
and generating candidate corrections. App. Br. 9. Appellants emphasize
that any multi-word phrase would not be identified until after Church's
spelling correction is performed and, therefore, after the entire word is
received from the client computing device. Id. Appellants add that Jania
does not cure this deficiency because when spelling assistance is provided in
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Jania, the user must type the word's correct spelling and, therefore,
Richardson's multi-word phrase would not be identified or presented to the
user until after the user correctly spelled the word. App. Br. 10; Reply Br.
18-20.
ISSUE
Under§ 103, has the Examiner erred in rejecting claim 1 by finding
that Richardson, Church, and Jania collectively would have taught or
suggested identifying a multi-word phrase (1) responsive to receiving a
misspelled portion of a word, and (2) before receiving the entire misspelling
of the word, where the multi-word phrase comprises the entire correctly-
spelled word and at least one other word that following the word (the "multi-
word phrase identification limitation")?
ANALYSIS
As noted above, the multi-word phrase identification limitation has
two key temporal aspects, namely that a multi-word phrase is identified (1)
responsive to receiving a misspelled portion of a word, and (2) before
receiving the entire misspelling of the word. Our emphasis underscores that
the claim requires that the multi-word phrase identification is triggered by
misspelling a portion of a word-not the word itself.
As noted previously, the Examiner relies principally on Richardson
for teaching many aspects of the multi-word phrase identification limitation,
but also cites Church and Richardson for teaching that which is not taught
explicitly in Richardson. See Final Act. 3--4. But in the Answer, the
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Examiner finds that Richardson teaches the disputed claim language in its
entirety. Ans. 15.
Nevertheless, we see no error in the Examiner's reliance on
Richardson for at least suggesting the multi-word phrase identification
limitation. As shown below, Richardson's Figure 8 shows a user interface
that enables the user to enter a phrase in text entry box 830. Richardson
,r,r 67---68. Suggestions, along with a number of possible hits or results for a
search on that suggestion, are listed in text field 840--suggestions that may
be selected by the user for use as a complete search query by selecting the
desired entry and clicking the "Search" button 850. Id. ,r 68.
As the user enters a phrase, results are displayed in area 860 that are
based on a preliminary search. Id. ,r 69. As the user continues to type, the
list of suggestions can change as the user provides a more complete phrase.
Id. The user can then submit a suggestion as a query by clicking the Search
button. Id. Richardson's user interface in Figure 8 is reproduced below:
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810
1330 ---------
<:~llnt-:s.<; 19175 r 840
<:>l!ne= dog t'ood t:?.06.·
1
.
ellnes.<; center 7S7
ellne.s.z, waz.Geraufberelttm9 740
llness progi-ams 728
llnes.s ceenters 41.3
llnesss eat food 327
___ ellness producl:s ..................................................................... 239
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Richardson's user interface in Figure 8
In the example in Richardson's Figure 8 shown above, the term
"wellne" was entered in text entry box 830 resulting in a list of suggestions
including "wellness dog food" and "wellness center." The Examiner finds,
and we agree, that the entered term "wellne" is misspelled because it lacks
the letters "ss" at the end, thus rendering the term incomplete. Ans. 15. Not
only is the term "wellness" misspelled in this example, but also a portion of
that term, namely "wellnes." So even assuming, without deciding, that
"wellne" is a prefix for the term "wellness" as Appellants contend (Reply
Br. 18), Appellants' contention that there is ostensibly no portion of
"wellne" that is misspelled is, at best, overstated, for there is at least one
other portion of "wellness" that is misspelled.
19
Appeal2018-001654
Application 13/069,526
Given Richardson's user interface functionality in Figure 8,
Richardson at least suggests (1) receiving a misspelled portion of a word
("wellne") as part of a query to be submitted to a search engine; (2)
identifying a multi-word phrase ("wellness dog food" or "wellness center")
comprising the entire word ("wellness"}-----correctly spelled-and other
words ("dog food" or "center") that follow the correctly-spelled word
responsive to receiving the misspelled word portion; and (3) causing the
multi-word phrase to be displayed on the client device in text field 840 as a
suggested search query responsive to identifying the multi-word phrase.
Notably, steps (2) and (3) occur before an entire misspelled word, namely
"wellnes," is received.
Therefore, Richardson alone at least suggests the disputed limitation
as the Examiner indicates. See Ans. 15. Although Church and Jania are
technically cumulative to Richardson in this regard, we nonetheless see no
harmful error in the Examiner's additional reliance on Church and Jania for
the limited purposes for which they were cited, namely merely to show that
it is known to (1) correct a received misspelled word portion, and (2)
identify and display a suggestion before receiving the entire misspelled
word. See Final Act. 3--4; Ans. 15-16. Appellants' arguments regarding
Church's and Jania's individual shortcomings (see App. Br. 9-10; Reply Br.
18-20) are not only not germane to the limited purposes for which the
references were cited, but do not persuasively rebut the Examiner's principal
reliance on Richardson for also at least implicitly teaching or suggesting
these features.
20
Appeal2018-001654
Application 13/069,526
THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner's obviousness rejections of claims 2,
10, 16-19, 22, and 25. Final Act. 8-16. Because these rejections are not
argued separately with particularity, we are not persuaded of error in these
rejections for the reasons previously discussed.
CONCLUSION
The Examiner did not err in rejecting (1) claims 1-5, 10-13, and 16-
25 under§ 101, and (2) claims 1, 2, 10-13, and 16-25 under§ 103.
DECISION
We affirm the Examiner's decision to reject claims 1-5, 10-13, and
16-25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
21