Ex Parte Kay et al

Patent Trial and Appeal Board

Aug 26, 2016

12690378 (P.T.A.B. Aug. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/690,378 01/20/2010 David Jon Kay
105798 7590 08/30/2016
Glenn Patent Group - Nuance
c/o Perkins Coie LLP
P.O. Box 1247
Seattle, WA 98111-1247
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.
l 10695-8085.US03 7701
EXAMINER
MURPHY, JEROLD B
ART UNIT PAPER NUMBER
2687
NOTIFICATION DATE DELIVERY MODE
08/30/2016 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):
IP.inbox@nuance.com
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID JON KAY, ETHAN R. BRADFORD, PIM VAN MEURS,
and PETER C. PEDDIE
Appeal2014-008333
Application 12/690,378
Technology Center 2600
Before JAMES R. HUGHES, KRISTEN L. DROESCH, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Decision rejecting claims 1-19, which constitute all the
claims pending in this application. App. Br. 3; Final Act. 1-2. 1 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We refer to Appellants' Specification ("Spec.") (filed Jan. 20, 2010) and
Appeal Brief ("App. Br.") (filed Jan. 31, 2014). We also refer to the
Examiner's Answer ("Ans.") (mailed May 28, 2014) and Final Office
Action (Final Rejection) ("Final Act.") (mailed Sept. 4, 2013).
Appeal2014-008333
Application 12/690,378
Appellants' Invention
The invention at issue on appeal concerns apparatuses for contextual
prediction of user intended actions. The apparatus comprises a processor
configured to predict a user action based on the current context of the
apparatus by identifying the highest probability (most likely) user action
corresponding to the current context in a context database containing
historical context records (of the apparatus). Spec. 1 :24--26; 5: 14--6: 17;
Abstract.
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A computing apparatus, comprising:
an input device operable by a user;
a display;
a context database comprising a historical context
record for the apparatus; and
a processor coupled to the input device and display
and context database, the processor programmed to perform
operations comprising:
based on current context of the apparatus,
predicting a user action other than entry of text via the input
device;
wherein the user action is one of a set of user
actions resulting from interaction with the input device;
said predicting operation compnsmg
reviewing the context database to identify a most likely user
action historically resulting from the current context; and
automatically changing apparatus state to
carry out the identified user action.
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Application 12/690,378
Rejection on Appeal
The Examiner rejects claims 1-19 under 35 U.S.C. § 112(a) or 35
U.S.C. § 112, first paragraph, as containing subject matter which was not
described in the Specification so as to enable one skilled in the art to make
and/or use the invention.
ISSUE
Based upon our review of the administrative record, Appellants'
contentions, and the Examiner's findings and conclusions, the pivotal issues
before us follow:
Does the Examiner err in concluding that claims 1-19 contain subject
matter which was not described in the Specification so as to enable one
skilled in the art to make and/or use the invention? And, in particular, does
the disclosure in Appellants' Specification enable the full scope of
Appellants' independent claim 1?
ANALYSIS
Appellants argue independent claim 1 and dependent claims 2-19
together as a group. App. Br. 5-11. Accordingly, we select independent
claim 1 as representative of the group comprising claims 1-19. 37 C.F.R.
§ 41.37(c)(l)(iv).
We adopt to the extent consistent with our analysis (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 3---6), and (2) the reasons set forth by the Examiner in the
Examiner's Answer (Ans. 2-5) in response to Appellants' Appeal Brief. We
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Application 12/690,378
concur with the findings and conclusions reached by the Examiner, and we
provide the following for emphasis.
Appellants contend that the Examiner erred in rejecting the claims for
lack of enablement. See App. Br. 5-11. Specifically, Appellants contend
that "the Examiner has interpreted ... 35 U.S.C. § 112, first paragraph (pre-
AIA) to require that the specification must disclose every combination
possible to enable the scope of claim 1" (App. Br. 6) and that "[a]s long as
the specification discloses 'at least one method for making and using the
claimed invention that bears a reasonable correlation to the entire scope of
the claim, then the enablement requirement of 35 U.S.C. 112 is satisfied'"
(App. Br. 7 (quoting In re Fisher, 427 F.2d 833, 839 (CCPA 1970)).
Appellants further contend that "[t]he specification as filed fully enables the
scope of independent claim 1 as it provides entire lengthy paragraphs
discussing how one of ordinary skill in the art can make and use the
invention recited in the claim" (App. Br. 8), referencing the Examiner's
discussion (Final Act. 4--5) (see App. Br. 8) and referencing pages 9, 10, and
49 of the Specification (App. Br. 9-10) (see Spec 9:21; 9:23-33; 10
(generally); 10:3-10; and 49 (generally)).
We find Appellant's contentions unpersuasive of Examiner error.
Appellant misapprehends the basis for the Examiner's rejection and
conflates the general requirements for enablement with the requirement that
the Specification enable the full scope of the recited limitations in the claim.
The issue is not whether some explicitly disclosed embodiments are enabled,
or if every possible embodiment is enabled, but rather whether Appellants'
Specification describes how to predict any user action (other than entering
text) via an input device (of the apparatus) based on a current context (i.e.,
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Application 12/690,378
environment) of the apparatus by reviewing the contents of a database (the
context database comprising a historical context record for the apparatus).
As explained by our reviewing court:
The full scope of the claimed invention must be enabled.
The rationale for this statutory requirement is straightforward.
Enabling the full scope of each claim is "part of the quid pro quo
of the patent bargain." A patentee who chooses broad claim
language must make sure the broad claims are fully enabled.
"The scope of the claims must be less than or equal to the scope
of the enablement" to "ensure[ ] that the public knowledge is
enriched by the patent specification to a degree at least
commensurate with the scope of the claims."
Sitrickv. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008) (internal
citations omitted). "This important doctrine prevents both inadequate
disclosure of an invention and overbroad claiming that might otherwise
attempt to cover more than was actually invented. Thus, a patentee chooses
broad claim language at the peril of losing any claim that cannot be enabled
across its ±hll scope of coverage." AfagSil Corp. v. Hitachi Global Storage
Technologies, Inc., 687 F.3d 1377, 1381 (Fed. Cir. 2012).
Appellants' claim 1 broadly recites "a processor ... programmed to
perform operations" including "predicting a user action other than entry of
text via the input device" "based on [a] current context of the apparatus"
which comprises "reviewing the context database to identify a most likely
user action historically resulting from the current context." See claim 1.
Appellants' disclosure, while replete with examples of predicting text entry
user actions based on text inputs (current context), a context explicitly
excluded by the scope of the instant claim, discloses little about predicting
other user actions. See Spec. 9-12, 49. For example, Appellants describe
how "the system might use context to change a mobile telephone from 'ring'
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to 'vibrate', during the time that the calendar shows that the user is in a
meeting .... [or using] location context to increase the mobile telephone
volume when the user is outside or when the telephone detects high levels of
background noise." Spec. 49. There is, however, no explanation in the
Specification of how such user actions (silencing ringer and switching to
vibration alerts or increasing volume) are predicted. See Spec. 10, 49. The
Examiner, in explaining the breadth of Appellants' claim and the scope of
enablement issue, also presents multiple contexts, user actions, and
"combinations" of contexts and possible (predictable) user actions for which
no disclosure is provided. See Final Act. 4---6; Ans. 3--4.
Appellants' recited limitations encompass any and all contexts
(environmental factors (inputs) detectable by the apparatus and associated
with data in a context database) utilized to predict any and all user actions
(resulting from interaction with apparatus inputs), other than text entry.
Based on the Examiner's findings regarding Appellants' claim breadth and
the minimal guidance provided by the inventors (Appellants) in how to
predict user actions other than text entry based on a multitude of context
related inputs, we agree with the Examiner that many combinations of
contexts and user actions would require undue experimentation by one of
ordinary skill in the art. See Ans. 2--4. Appellants' disclosure
(Specification) fails to provide a scope of enablement commensurate with
the scope of the claimed invention and, therefore fails to enable the full
scope of the claimed invention without undue experimentation. See
Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 12-13 (1946)
(invalidating broad, functional claims that covered all possible ways of
recording certain sound data); MagSil, 687 F.3d at 1380-84 (claim scope
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includes tri-layer tunnel junctions with greater than a 10% resistive change,
but disclosure only described making/using tri-layer tunnel junctions with a
resistive change over a small portion of the recited range); Sitrick, 516 F .3d
at 999-1002 (claim scope includes substitution or integration of user images
in video games and substituting a user image for a pre-existing character
image in movies, but disclosure only described image substitution in video
games); Auto. Techs. Int'!, Inc. v. BMW of N. Am., Inc., 501F.3d1274, 1285
(Fed. Cir. 2007) (claim scope includes both mechanical and electronic side
impact sensors, but disclosure only described making/using mechanical side
impact sensors); Liebel-Flarsheim Co. v. Medrad, Inc., 481F.3d1371, 1880
(Fed. Cir. 2007) (claim scope includes fluid injectors with and without a
pressure jacket, but disclosure only described pressure-jacketed injectors);
ExparteRodriguez, 92USPQ2d1395, 1406--07, 1410-11 (BPAI2009)
(precedential) (reciting limitations encompassing any and all structures or
acts for achieving a particular result, including those applicant had not
invented).
Additionally, Appellants failed to file a Reply Brief addressing the
Examiner's clarified interpretation of the disputed limitations and
Appellants' disclosure, or otherwise rebutting the findings and responsive
arguments made by the Examiner in the Answer. Thus, Appellants do not
persuade us of error in the Examiner's scope of enablement rejection of
representative independent claim 1. Accordingly, we affirm the Examiner's
scope of enablement rejection of representative claim 1 and dependent
claims 2-19, not separately argued with particularity (supra).
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CONCLUSION
Appellants have not shown that the Examiner erred in rejecting claims
1-19 under 35 U.S.C. § 112 (pre-AIA), first paragraph.
DECISION
We affirm the Examiner's rejection of claims 1-19.
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
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