Ex Parte Kirshenbaum et al

Patent Trial and Appeal Board

Mar 30, 2017

11118178 (P.T.A.B. Mar. 30, 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.
11/118,178 04/29/2005 Evan R. Kirshenbaum 82208906 7368
56436 7590 04/03/2017
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
CHBOUKI, TAREK
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
04/03/2017 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EVAN R. KIRSHENBAUM, HENRI J. SUERMONDT,
GEORGE H. FORMAN, and STEPHANE CHIOCCHETTI
Appeal 2016-006641
Application 11/118,178
Technology Center 2100
Before THU A. DANG, JAMES R. HUGHES, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
In an earlier Decision involving the instant application, Ex Parte
Appeal 2010-009942 mailed April 2, 2013 (the “Prior Decision”), we
affirmed the Examiner’s decision rejecting claims 1—25, 27—33, 35, and 37—
51 under 35 U.S.C. §§ 102(b) and 103(a) over Johnson and several other
references.
In this appeal, Appellants seek our review under 35 U.S.C. § 134(a) of
the Examiner’s Final Rejection of claims 1, 3—5, 9-21, 23—25, 28—33, 35,
37-41, 43—46, and 52-59. Claims 2, 6-8, 22, 26, 27, 34, 36, 42, and 47-51
Appeal 2016-006641
Application 11/118,178
have been canceled. Final Act. 1—21 (see Appeal Brief Claim Appendix
(Appx.) i). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants ’ Invention
The invention generally concerns search and confirm mechanisms for
developing training information to be used for training a categorizer.
Articles, systems and methods wherein a search engine identifies cases
matching a query without using a categorizer are described. Spec. H 1, 8, 9,
11, and 12; Abstract.2
Representative Claim
Independent claim 1, reproduced below with key disputed limitations
emphasized, further illustrates the invention:
1. A system, comprising:
at least one processor;
a data set comprising a plurality of cases;
a search engine executable on the at least one processor to
receive a query relating to at least one category and to identity
cases within the data set that match the query, the identified cases
being unlabeled with respect to the category, wherein the search
engine is to identify the cases that match the query without using
1 We refer to Appellants’ Specification (“Spec.”) filed Apr. 29, 2005, and
Appeal Brief (“App. Br.”) filed Nov. 9, 2015. We also refer to the
Examiner’s Answer (“Ans.”) mailed Apr. 19, 2016, and Final Office Action
(Final Rejection) (“Final Act.”) mailed June 12, 2015.
2 Appellants’ citations to the Specification (infra) and the paragraph
numbering of the originally filed Specification do not match. It is presumed
Appellants reference the published application paragraph numbers. We cite
to the Specification as originally filed and provide matching citations to the
published application (orig./published) for clarity where necessary (infra).
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Application 11/118,178
a categorizer that determines whether or not the cases belong to
the category,
a confirmation module executable on the at least one
processor to:
receive a first user indication in a user interface
that a first case of the identified cases belongs to the category,
and a second user indication in the user interface that a second
case of the identified cases does not belong to the category,
in response to receiving the first and second user
indications in the user interface, modify training information for
training the categorizer, the confirmation module modifying the
training information by adding the first case to a positive training
set of cases, and adding the second case to a negative training set
of cases; and
a training module executable on the at least one processor
to modify the categorizer based on the positive and negative
training sets.
Rejections on Appeal
1. The Examiner rej ects claims 1,21, and 41 under 3 5 U. S. C
§112, first paragraph, as failing to comply with the written description
requirement.
2. The Examiner rejects claims 1,21, and 41 under 35 U.S.C
§112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant regards as the
invention.
3. The Examiner rejects claims 1,3,4, 9—11, 14, 19-21, 24, 25,
28—32, 35, 37, 38, 41, 46, and 52—59 under 35 U.S.C. § 103(a) as being
unpatentable over Dumais et al. (US 6,192,360 Bl, issued Feb. 20, 2001)
(“Dumais”), Corston-Oliver et al. (US 2006/0200341 Al, published Sept. 7,
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Application 11/118,178
2006 (filed Apr. 14, 2005)) (“Corston-Oliver”), and Wolin (US 6,751,600
Bl, issued June 15, 2004).
4. The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Dumais, Corston-Oliver, Wolin, and Gallagher et al. (US
7,415,136 B2, issued Aug. 19, 2008 (filed Dec. 10, 2004)) (“Gallagher”).
5. The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as
being unpatentable over Dumais, Corston-Oliver, Wolin, and Lentini et al.
(US 2003/0088639 Al, published May 8, 2003) (“Lentini”).
6. The Examiner rejects claims 13 and 43 under 35 U.S.C.
§ 103(a) as being unpatentable over Dumais, Corston-Oliver, Wolin, and
Culliss (US 6,006,222, issued Dec. 21, 1999).
7. The Examiner rejects claims 15—18 and 33 under 35 U.S.C.
§ 103(a) as being unpatentable over Dumais, Corston-Oliver, Wolin, and
Ackley et al. (US 2005/0114229 Al, published May 26, 2005 (filed Dec. 30,
2004)) (“Ackley”).
8. The Examiner rejects claim 23 under 35 U.S.C. § 103(a) as
being unpatentable over Dumais, Corston-Oliver, Wolin, and Yaeger et al.
(US 5,805,730, issued Sept. 8, 1998) (“Yaeger”).
9. The Examiner rejects claims 39 and 40 under 35 U.S.C.
§ 103(a) as being unpatentable over Dumais, Corston-Oliver, Wolin, and
Scott et al. (US 2006/0161423 Al, published July 20, 2006 (filed Nov. 23,
2005, claiming benefit of US 60/630,858, filed Nov. 24, 2004)) (“Scott”).
10. The Examiner rejects claims 44 and 45 under 35 U.S.C.
§ 103(a) as being unpatentable over Dumais, Corston-Oliver, Wolin, and
Wong (US 6,343,275 Bl, issued Jan. 29, 2002).
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Application 11/118,178
ISSUES
Based upon our review of the record, Appellants’ contentions, and the
Examiner’s findings and conclusions, the issues before us follow:
1. Did the Examiner err in rejecting claims 1,21, and 41 as failing
to comply with the written description requirement?
2. Did the Examiner err in rejecting claims 1,21, and 41 as being
indefinite?
3. Did the Examiner err in finding that the combination of
Dumais, Corston-Oliver, and Wolin would have collectively taught or
suggested “a confirmation module . . . receiving] a first user indication . . .
that a first case . . . belongs to the category, and a second user indication . . .
that a second case . . . does not belong to the category” and “a search engine
. . . receiving] a query relating to at least one category and . . . identifying]
cases within the data set that match the query, the identified cases being
unlabeled with respect to the category, wherein the search engine identifies]
cases that match the query without using a categorizer” within the meaning
of Appellants’ claim 1 and the commensurate limitations of Appellants’
claims 21 and 41?
ANALYSIS
The Written Description Rejection
The Examiner rejects independent claims 1,21, and 41 under 35
U.S.C § 112, first paragraph, as failing to comply with the written
description requirement. Final Act. 4—5; Ans. 2—3. Appellants contend that
their Specification supports the disputed amended claim language —
“wherein the search engine is to identify the cases that match the query
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Application 11/118,178
without using a categorizer that determines whether or not the cases belong
to the category” (claim 1). App. Br. 7—9 (citing Spec. 9/14, 11/16, 12/17,
and 47/59 (see footnote 2 (supra))). We agree with Appellants’ reasoning.
Appellants’ Specification discusses the functionality of the search engine
and explains that “unlabeled” cases have not yet been processed by a
categorizer and identifying such unlabeled cases would, therefore, not use
the categorizer. See id. Appellants persuasively argue that the Specification
described and supported the disputed limitation. Consequently, we are
constrained by the record before us to find that the Examiner erred in
rejecting claims 1,21, and 41 as failing to comply with the written
description requirement. Accordingly, we reverse the Examiner’s § 112,
first paragraph, rejection of claims 1,21, and 41.
The Indefiniteness Rejection
The Examiner rejects independent claims 1,21, and 41 under 35
U.S.C § 112, second paragraph, as being indefinite. Final Act. 6; Ans. 2—3.
Appellants contend that the disputed amended claim language — “the
identified cases being unlabeled with respect to the category, wherein the
search engine is to identify the cases that match the query without using a
categorizer that determines whether or not the cases belong to the category”
(claim 1) — is not unclear. App. Br. 9-10. We agree with Appellants.
The essence of the requirement under 35 U.S.C. § 112, second
paragraph is that the language of the claims must make clear what subject
matter the claims encompass — i.e., “‘whether those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.’” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d
1364, 1380 (Fed. Cir. 2011) (quoting Orthokinetics, Inc. v. Safety Travel
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Application 11/118,178
Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)); see In re Packard,
751 F.3d 1307, 1310-14 (Fed. Cir. 2014) (agreeing that a claim fails to
comply with § 112^2 “when it contains words or phrases whose meaning is
unclear”).
The Examiner fails to sufficiently explain why one of ordinary skill in
the art would not understand what is claimed by Appellants. Consequently,
we are constrained by the record before us to find that the Examiner erred in
rejecting claims 1,21, and 41 as being indefinite. Accordingly, we reverse
the Examiner’s indefmiteness rejection of claims 1,21, and 41.
The 35 U.S.C. § 103 Rejections
The Examiner rejects independent claim 1 in view of Dumais,
Corston-Oliver, and Wolin. See Final Act. 7—9; Ans. 4—5. Appellants
contend that Dumais, Corston-Oliver, and Wolin do not teach the disputed
features of claim 1. App. Br. 11—20. Specifically, Appellants contend that
Dumais does not teach the recited confirmation module and the Examiner
has not provided a sufficient explanation or mapping of the cited portions of
Dumais to the disputed claim limitations. See App. Br. 12—14. Appellants
also contend Wolin does not teach the recited search engine and the
Examiner has again not provided a sufficient explanation or mapping of the
cited portions of Wolin with respect to the disputed claim limitations. See
App. Br. 14-20.
The Examiner’s response to Appellants’ first point of error — that
Dumais does not teach the recited confirmation module — simply reiterates
the unexplained citations of Dumais and states “the previous board of appeal
decision made on 04/02/2013 affirmed the rejection.” Ans. 4. The Board
made no such finding because different rejections over different references
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Application 11/118,178
were addressed in the previous decision. Here, however, the Examiner, fails
to clearly explain how the recited confirmation module reads on the cited
portions of Dumais. Therefore, we are unpersuaded that Dumais teaches the
confirmation module as recited in claim 1.
Similarly, the Examiner’s response to Appellants’ second point of
error — that Wolin does not teach the recited search engine —reiterates the
citations of Wolin and addresses, at best, only small portions of Appellants’
contentions. The Examiner, again, fails to clearly explain how the disputed
limitations — directed to the search engine — read on the cited portions of
prior art — Wolin. Therefore, we are unpersuaded that Wolin teaches the
search engine as recited in claim 1.
Consequently, we are constrained by the record before us to find that
the Examiner erred in concluding that Dumais, Corston-Oliver, and Wolin
teach the disputed limitations of Appellants’ claim 1. Independent claims 21
and 41 include limitations of commensurate scope. Dependent claims 3, 4,
9—11, 14, 19, 20, 24, 25, 28—32, 35, 37, 38, 46, and 52—59 depend on claims
1,21, and 41, respectively. Accordingly, we reverse the Examiner’s
obviousness rejection of claims 1, 3, 4, 9-11, 14, 19—21, 24, 25, 28—32, 35,
37,38,41,46, and 52-59.
With respect to the obviousness rejections of dependent claim 5
(rejected as obvious over Dumais, Corston-Oliver, Wolin, and Gallagher),
dependent claim 12 (rejected as obvious over Dumais, Corston-Oliver,
Wolin, and Lentini), dependent claims 13 and 43 (rejected as obvious over
Dumais, Corston-Oliver, Wolin, and Culliss), dependent claims 15—18 and
33 (rejected as obvious over Dumais, Corston-Oliver, Wolin, and Ackley),
dependent claim 23 (rejected as obvious over Dumais, Corston-Oliver,
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Application 11/118,178
Wolin, and Yaeger), dependent claims 39 and 40 (rejected as obvious over
Dumais, Corston-Oliver, Wolin, and Scott), and dependent claims 44 and 45
(rejected as obvious over Dumais, Corston-Oliver, Wolin, and Wong), we
reverse the Examiner’s obviousness rejections of these claims for the same
reasons set forth with respect to claim 1 {supra). The Examiner does not
suggest, and we do not find that the additional references cure the
deficiencies of Dumais, Corston-Oliver, and Wolin (discussed supra).
CONCLUSIONS
Appellants have shown that the Examiner erred in rejecting claims 1,
21, and 41 under 35U.S.C§ 112, first paragraph, as failing to comply with
the written description requirement.
Appellants have shown that the Examiner erred in rejecting claims 1,
21, and 41 under 35 U.S.C § 112, second paragraph, as being indefinite.
Appellants have shown that the Examiner erred in rejecting claims 1,
3-5, 9-21, 23-25, 28-33, 35, 37-41, 43^16, and 52-59 under 35 U.S.C.
§ 103(a).
DECISION
We reverse the Examiner’s rejections of claims 1, 3—5, 9-21, 23—25,
28-33, 35, 37-41, 43^16, and 52-59.
REVERSED
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