Ex Parte Liu et al

Patent Trial and Appeal Board

Jul 3, 2018

13719414 (P.T.A.B. Jul. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131719,414 12/19/2012
43471 7590
ARRIS Enterprises, LLC
Legal Dept - Docketing
101 Tournament Drive
HORSHAM, PA 19044
07/06/2018
FIRST NAMED INVENTOR
Yan Liu
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.
CS39461 2191
EXAMINER
VU,VIETD
ART UNIT PAPER NUMBER
2448
NOTIFICATION DATE DELIVERY MODE
07/06/2018 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):
arris.docketing@arris.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YAN LIU, PAUL C. DA VIS, ZHI FU,
and KABE V ANDERBAAN
Appeal2018-000869
Application 13/719,414
Technology Center 2400
Before ROBERT E. NAPPI, ERIC S. FRAHM, and SCOTT E. BAIN,
Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE 1
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, 6-17, 27, and 28. Claims 3-5 and 18-26
were canceled in an amendment filed on November 18, 2015. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
1 According to Appellants, ARRIS Technology, Inc. is the real party in
interest. App. Br. 3.
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Application 13/719,414
Disclosed Invention
The disclosed invention is the addition of an analytical model to a
method for specifying policies. Spec. i-f 12. The invention consists of a
computing device that runs a policy engine that receives a policy. Spec.
i-fi-113-14, 29. Executing the policy by means of the policy engine involves
invoking an analytical model and a set of rules which are distinct from the
analytical model. Spec. i-fi-130, 32. Invoking the policy causes the analytical
model to update itself by collecting or processing recent data that affect the
policy without the policy itself being directly changed. Spec. i-fi-1 12, 32. The
updating of the analytical model within the policy framework allows the
policies to remain up-to-date without the policies being changed. Spec.
i-f 32. After the policy is invoked an action is performed by the policy
engine. Spec. i-fi-1 13, 35.
Examiner's Rejection2
The Examiner rejected claims 1, 2, 6-17, 27, and 28 under 35 U.S.C.
§ 103(a) as being unpatentable over Kumar et al. (US 2012/0296682 Al;
published Nov. 22, 2012; hereinafter "Kumar") in view of Otto et al. (US
2009/0164304 Al; published June 25, 2009; hereinafter "Otto"). 3 Ans. 2--4.
2 Throughout this Decision we refer to the Appeal Brief ("App. Br.") filed
May 24, 2017, Final Office Action ("Final Act.") mailed September 12,
2016, and the Examiner's Answer ("Ans.") mailed August 04, 2017.
3 Examiner erroneously identified claims 1-26 as being rejected in the Final
Action mailed on September 12, 2016 (see Final Act. 2) however, this was
communicated to Appellants and ratified in the Advisory Action mailed on
December 06, 2016 (see Adv. Act. 2-3).
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Application 13/719,414
Issue on Appeal
We have reviewed Appellants' arguments in the Brief (App. Br. 4--7),
the Examiner's rejection (Final Act. 2--4; Ans. 2--4), and the Examiner's
response (Ans. 5-7) to Appellants' arguments. The dispositive issue on
appeal is whether or not Kumar in view of Otto teaches or suggests the
negative limitation (italicized below) recited below:
executing, by the policy engine, the policy, wherein
executing the policy comprises invoking an analytical model
and invoking a set of rules, the set of rules distinct from the
analytical model, wherein the analytical model is updated by
collecting and processing recent innovations affecting changes
to the policy without the policy being directly changed; ...
Claim 1 (emphasis added). The argued negative limitation is also
similarly recited in remaining independent claim 16.
Analysis
We have reviewed the Examiner's rejections (Final Act. 2--4; Ans. 2-
4) in light of Appellants' arguments in the Appeal Brief that the Examiner
has erred (App. Br. 4--7), as well as the Examiner's response to Appellants'
arguments in the Appeal Brief (Ans. 5-7). We agree with Appellants'
conclusions that the Examiner erred in rejecting claim 1 under 35 U.S.C.
§ 103(a), as obvious over Kumar in view of Otto. See App. Br. 4--7.
We provide the following explanation for emphasis.
"During examination, 'claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and ... claim
language should be read in light of the specification as it would be
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Application 13/719,414
interpreted by one of ordinary skill in the art."' In re Am. Acad. of Sci. Tech.
Cir., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048,
1053-54 (Fed. Cir. 1997).
The relevant limitation at issue is that the analytical model is updated
by collecting and processing recent innovations affecting changes to the
policy without the policy being directly changed, which is a negative
limitation. Negative limitations may be claimed by the Appellants so long
as the limitation is clear and supported by the original disclosure, the mere
absence of a positive recitation of an element is not a basis for a negative
limitation. See MPEP § 2173 .05(i). Regarding the patentable weight to be
given to the negative limitation at issue, Appellants' Specification at
paragraphs [0012] and [0032] provide explicit written description support to
the claimed negative limitation, stating that this method provides the
advantage of keeping policy frameworks up-to-date by the continuing work
of the analytical models without the policies themselves being directly
changed and increases the effectiveness of high-level policies. As
Appellants' Specification provides adequate support for the negative
limitation in claims 1 and 16, which is at issue in the case before us, it is
incumbent upon the Examiner to articulate sufficient findings and
reasoning's in this regard in making a conclusion of obviousness.
The Examiner finds that Kumar alone does not explicitly disclose a
self-learning analytical model recited in the disputed negative limitation
(Final Act. 2-3; Ans. 2-3) instead relying on paragraphs [0092] and [0117]
of Otto (Final Act. 2-3; Ans. 2-3). Examiner is correct in that claim 1 as
written does not recite when the policy is updated merely that the model is
updated and the policy remains unchanged. Ans. 5. In addition, the
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Application 13/719,414
Examiner states that the "claim limitation is merely directed to a self-
learning process, i.e., the policy can update itself using collected innovations
without the policy being directly changed (by the user or other third party)."
Id. However, it is unclear from the quoted statement whether the first
recitation of the word policy by Examiner is meant to refer to the analytical
model. Examiner also states that
using the collected/learned customer behaviors, the policy
engine can modify its marketing rule/policy to provide more
effective incentives to next customers (see Otto, par. 0117). In
other words, the changes to policy is being made based upon
collected customer behaviors and not being made directly by
commands of a user or administrator.
Ans. 5---6. These statements by Examiner, taken as a whole, appear to
describe that the analytical model and policy of Otto are updated
simultaneously, and not wherein the model is updated and the policy
remains unchanged as claimed by Appellants.
Our reading of Otto (specifically i-fi-192, 117) is that it describes an
artificial intelligence program that learns from customer behavior to
determine what incentives are required to achieve the desired results. There
appears to be no discussion in the paragraphs of Otto cited to by Examiner
or in the reference as a whole that would clarify whether the model and
policy are updated separately. Otto i-fi-1 92, 117. In addition, Examiner in the
rejection of claim 1 does not map the elements of the claim to a teaching in
Otto where there are references to the policy (Final Act. 2-3; Ans. 2-3).
Therefore, it is unclear where Examiner finds support for the model being
updated while the policy remains unchanged.
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Application 13/719,414
In this light, the Examiner has not adequately shown how paragraphs
[0092] and [O 117] of Otto teaches the limitation directed to the analytical
model being updated without the policy being directly changed. 4 Based on
the preceding, the Examiner has not identified sufficient evidence to
demonstrate the disputed limitation in independent claims 1 and 16 is
obvious ..
Therefore, we concur with Appellants' arguments (App. Br. 4--7) that
the Examiner erred in finding that the combination of Kumar and Otto
teaches or suggests an analytical model being updated without the policy
being directly changed. 5
Accordingly, we do not sustain the Examiner's obviousness rejection
of independent claims 1 and 16 and dependent claims 2, 6-17, 27, and 28
similarly rejected.
CONCLUSION
Appellants have persuaded us of the error in the Examiner's decision
to reject claims 1, 2, 6-17, 27, and 28 as being obvious over Kumar in view
of Otto.
4 As described by Appellants' Specification at paragraphs [0012] and [0032].
5 We recognize that Appellants' arguments present additional issues with
respect to dependent claim 2 7. Because we were persuaded of error as to the
independent claims, we do not reach the additional issue.
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Application 13/719,414
DECISION
The Examiner's rejection of claims 1, 2, 6-17, 27, and 28 under
35 U.S.C. § 103(a) as being obvious over Kumar in view of Otto is reversed.
REVERSED
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