11378708 (P.T.A.B. Mar. 24, 2014)

Ex Parte Roux et al

Patent Trial and Appeal BoardMar 24, 2014

11378708 (P.T.A.B. Mar. 24, 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. 11/378,708 03/17/2006 Claude Roux 20051130USNP-XER1185US01 8255 62095 7590 03/24/2014 FAY SHARPE / XEROX - ROCHESTER 1228 EUCLID AVENUE, 5TH FLOOR THE HALLE BUILDING CLEVELAND, OH 44115 EXAMINER SERROU, ABDELALI ART UNIT PAPER NUMBER 2659 MAIL DATE DELIVERY MODE 03/24/2014 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 CLAUDE ROUX, GILBERT FONDEAU, and VIANNEY GRASSAUD ____________ Appeal 2011-011168 Application 11/378,708 Technology Center 2600 ____________ Before JEAN R. HOMERE, CAROLYN D. THOMAS, and JEFFREY S. SMITH, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011168 Application 11/378,708 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner finally rejecting claims 1, 3-5, 7-14, 16, 17, and 19-22, all the claims pending in the application. Claims 2, 6, 15, and 18 are cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. The present invention relates generally to a graphical user interface for providing a rule editor which displays linguistic elements of a selected text string. See Abstract. Claim 1 is illustrative: 1. A method for generating a linguistic rule comprising: displaying a linguistic analysis of a selected text string as a tree structure in a rule editor, the text string comprising a sequence of words which comprises an entire sentence, the displayed linguistic analysis including displayed linguistic elements of the text string, the displayed linguistic elements comprising: syntactic nodes, at least some of the syntactic nodes comprising a respective lexical category or phrasal category for the respective node which is displayed together with at least one respective word of the text string, and dependencies output by a parser, each dependency denoting a linguistic relationship between syntactic nodes; identifying linguistic elements selected from the displayed linguistic elements by a user; and generating a linguistic rule for the text string based on the linguistic elements selected by the user. Appeal 2011-011168 Application 11/378,708 3 Appellants appeal the following rejection: Claims 1, 3-5, 7-14, 16, 17, and 19-22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Monaco (US 6,434,523 B1, Aug. 13, 2002) and Schabes (US 5,475,588, Dec. 12, 1995). ANALYSIS Claims 1, 3-5, 7-14, 16, 17, and 19-22 Issue: Did the Examiner err in finding that the combined teachings of Monaco and Schabes teach and/or suggest a text string comprising a sequence of words which comprises an entire sentence and identifying linguistic elements selected from the displayed linguistic elements by a user, as set forth in claim 1? Appellants contend “Monaco refers to a ‘sample expression,’ not a sentence. This expression ‘the big cat’ is simply a phrase, not a sentence. . . . Monaco does not suggest that the text string includes a sequence of words comprising an entire sentence” (App. Br. 13). Appellants further contend that “there is no tree structure in this example [Figure 18 of Monaco]” (id. at 14). In addition, Appellants contend that “Schabes merely displays linguistic elements, there is no suggestion as to why a user would have wanted to select from them” (id. at 15). Finally, Appellants contend that “it would not have been obvious to display the parse tree of Schabes for the expressions of Monaco” (id. at 18). The Examiner finds that the combined teachings of Monaco and Schabes teach and/or suggest the argued limitations (see Ans. 10-19). We agree with the Examiner. We refer to, rely on, and adopt the Examiner's Appeal 2011-011168 Application 11/378,708 4 findings and conclusions set forth in the Answer. Our discussions here will be limited to the following points of emphasis. Firstly, we note that Appellants’ arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and is therefore ineffective to rebut the Examiner’s prima facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”) (citations omitted, emphasis added). This reasoning is applicable here. For example, while Appellants contend that Monaco does not suggest that the text string includes a sequence of words comprising an entire sentence and that there is no tree structure shown, the Examiner also found (and Appellants concede) that the secondary reference, Schabes, discloses parsing entire sentences and displaying tree structures (see Ans. 11-13; see also App. Br. 11). Thus, even if we assume arguendo (without deciding) that Monaco did not disclose a text string that is an entire sentence or a tree structure (as proffered by Appellants supra), the Examiner has established, and Appellants agree, that Schabes discloses such features. In addition, while Appellants contend that Schabes merely displays linguistic elements and there is no suggestion as to why a user would have wanted to select from them (see App. Br. 15), the Examiner found that Monaco discloses a graphical user interface mode that allows the user to Appeal 2011-011168 Application 11/378,708 5 select nodes (see Ans. 14). Again, Appellants attack the references individually, instead of attacking what the combined teachings would have suggested to one of ordinary skilled in the art. In essence, Appellants’ arguments seek to find the claimed invention in any one of the references. However, it is not necessary that the claimed invention be expressly suggested in any one or all of the references. The test is simply what the combined teachings of the references would have suggested to those of ordinary skill in the art. Here, the Examiner as shown that the combined teachings of Monaco and Schabes teach and/or suggest the argued limitations. Furthermore, there is no requirement that the problem solved by the secondary reference be discussed by the primary reference to apply the teachings of the secondary reference in a rejection under 35 U.S.C. § 103. The Supreme Court has held that in analyzing the obviousness of combining elements, a court need not find specific teachings, but rather may consider “the background knowledge possessed by a person having ordinary skill in the art” and “the inferences and creative steps that a person of ordinary skill in the art would employ.” See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions,” and the basis for an obviousness rejection must include an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. Here, the Examiner has found actual teachings in the prior art and has provided a rationale for the combination. Further, the teachings suggest that the combination involves the predictable use of prior art elements according Appeal 2011-011168 Application 11/378,708 6 to their established functions. Accordingly, we find that the Examiner has provided sufficient motivation for modifying Monaco with the teachings of Schabes, and we will sustain the obviousness rejection of representative claim 1. In view of the above discussion, because Appellants have not demonstrated that the Examiner erred in finding the argued limitations in the combined disclosures of Monaco and Schabes, the Examiner’s 35 U.S.C. § 103(a) rejection of representative independent claim 1, as well as claims 3- 5, 7-14, 16, 17, and 19-22 which essentially reiterate the same arguments, is sustained. DECISION We affirm the Examiner’s § 103 rejection. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED ELD