Ex Parte Simon et al

Patent Trial and Appeal Board

Sep 22, 2017

13911982 (P.T.A.B. Sep. 22, 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.
13/911,982 06/06/2013 LUKE SIMON 339032.01/MFCP. 184200 7584
45809 7590 09/26/2017
SHOOK, HARDY & BACON L.L.P.
(MICROSOFT TECHNOLOGY LICENSING, LLC)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
TRUONG, CAM Y T
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
09/26/2017 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
usdocket@ micro soft .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUKE SIMON and TAROON MANDHANA
Appeal 2017-006065
Application 13/911,982
Technology Center 2100
Before CAROLYN D. THOMAS, ERIC B. CHEN, and
MIRIAM L. QUINN, Administrative Patent Judges.
QUINN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2017-006065
Application 13/911,982
Representalive Claim
Representative claim 1 under appeal reads as follows:
1. A method for identifying relevance of an entity to a
search query, the method comprising:
receiving the search query;
identifying a plurality of documents based on the search
query;
determining a relevance of each document to the search
query;
retrieving, from storage, a predetermined relevance of the
entity to each document; and
determining a relevance of the entity to the search query
as a function of the relevance of each document to the search
query and the predetermined relevance of the entity to each
document.
References
Bunescu US 2007/0233656 A1 Oct. 4, 2007
Agrawal US 2008/0306908 A1 Dec. 11, 2008
Datar US 8,538,989 B1 Sept. 17, 2013
Dupin US 8,666,914 B1 Mar. 4, 2014
Rejections
1. Appellants appeal the rejection of claims 17-20 under
35 U.S.C. § 112(a). Final Act. 2-3
2
Appeal 2017-006065
Application 13/911,982
2. The Examiner rejected claims 1-20 under 35 U.S.C. § 103 as
being unpatentable over the combination of Agrawal and Dupin.1 Id. at
4-63.
3. The Examiner rejected claims 1-4, 11-13, and 17, 19, and 20
under 35 U.S.C. § 103 as being unpatentable over the combination of
Agrawal and Datar.2 Id. at 63-80. The Examiner has withdrawn this
rejection. Ans. 17-19. Accordingly, we do not discuss this rejection
further.
1 Arguments are presented only for claim 1 separately. Although Appellants
separately discuss independent claims 14 and 17, arguments are by reference
to the arguments for claim 1. App. Br. 14-16. Separate patentability is not
argued for dependent claims 2-13, 15, 16, and 18-20. Id. Thus, the
rejection of these claims turns on our decision as to claim 1. Except for our
ultimate decision, the § 103 rejection of claims 2-20 is not discussed further
herein.
2 Although the Final Action and the Answer list in their summaries or
headings that claim 18 is included in this rejection, the record lacks any
substantive discussion of claim 18 in the Final Action and the Examiner
omits this claim from its substantive discussion of this ground in the Answer
at page 17-18. Accordingly, claim 18 is not included in this rejection for
purposes of this appeal. See Final Act. 63 (identifying in heading that claim
18 is included in the ground); but see Final Act. 73-80 (omitting any
discussion of claim 18). Furthermore, the fact that claim 18 is included in
the rejection based on Agrawal, Datar, and Brunescu leads us to the
conclusion that claim 18 in not part of the ground of Agrawal and Datar, and
all indications to the contrary appear to be typographical errors. See, e.g.,
Ans. 3 (including claim 18 in summary of the Agrawal and Datar ground);
but see Ans. 17 (omitting discussion of claim 18 in addressing Appellants’
arguments concerning this ground).
3
Appeal 2017-006065
Application 13/911,982
4. The Examiner rejected claims 5-10, 14-16, and 18 under
35 U.S.C. § 103 as being unpatentable over the combination of Agrawal,
Datar, and Bunescu. Id. at 80-100. The Examiner has withdrawn this
rejection. Ans. 19-21. Accordingly, we do not discuss this rejection
further.
Issues on Appeal
Did the Examiner err in rejecting claim 17 for failure to comply with
the written description requirement?
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). We have reviewed the Examiner’s rejections in light of
Appellants’ arguments (Appeal Brief and Reply Brief) that the Examiner has
erred.
1. Written Description Requirement
Appellants contend that the Examiner erred in rejecting claim 17
under 35 U.S.C. § 112 because paragraphs 24, 38, 39, 48, and 51 support the
subject matter claimed. App. Br. 8-9; Reply Br. 2-4. Claim 17 recites “a
document understanding component configured to . . . predetermine a
relevance of each entity to each document independent of any search query.”
App. Br. 23 (Claim Appendix). The Examiner states that paragraphs 39 and
48 “do not describe ‘predetermine a relevance of each entity to each
4
Appeal 2017-006065
Application 13/911,982
document independent of any search query’ as recited in claim 17.”
Ans. 4 (emphasis in original). We disagree with the Examiner.
Paragraph 24 of the Specification states that “the document analysis
performed to identify entities within documents and the relevance of those
entities to the documents may be done offline and each document may be
‘stamped’ with [those] entities mentioned in the document.” Spec. 124; see
also 139 (“the document understanding component 324 may operate as an
offline component to analyze documents and index information in the search
engine index 330”); 148 (“the relevance of entities to documents may be
determined in a background or offline process”). As Appellants point out,
these paragraphs reasonably describe that “the relevance is determined
offline, which would be independent of any search query.” App. Br. 8.
According to the Specification then, being “independent of any search
query” references the instances in which the relevance determination does
not occur when the search query is running. See id. at 9 (“relevance scores
determined in a background or offline process would necessarily be
determined independent of a search query” contrasted with “relevance scores
that are determined during runtime when a search query is received”). The
descriptions of “offline” determination, identified by Appellants, support the
disputed claim language. Consequently, we determine that the Examiner
erred in rejecting claim 17 for failure to comply with the written description
requirement.
2. Obviousness
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103 for two reasons: (1) the prior art does not disclose a
5
Appeal 2017-006065
Application 13/911,982
“predetermined relevance of the entity to each document,” as recited in
claim 1; and (2) the motivation to combine Agrawal and Dupin is deficient.
App. Br. 10-14. We do not agree that the Examiner erred.
A. “Predetermined Relevance” Argument
Claim 1 recites “retrieving, from storage, a predetermined relevance
of the entity to each document.” The Examiner relies on Dupin as disclosing
the limitation. Final Act. 7-8; Ans. 7, 22-24. Appellants first argue that
Agrawal does not teach the limitation because “the [Agrawal] relevance is
determined after receiving a search query as a function of keywords from the
search query.” App. Br. 10. This argument is not persuasive. The
Examiner relies on Dupin, not Agrawal, as teaching the limitation. Ans. 5
(“Dupin teaches the claimed limitations: retrieving, from storage, a
predetermined relevance of the entity to each document” (emphasis
omitted)). Accordingly, none of Appellants’ arguments, directed to how
Agrawal does not teach or suggest the limitation, show error that the
Examiner erred in citing Dupin.
Next Appellants argue that Dupin does not teach the limitation
because “Dupin makes it clear that the relevance score [of] the products is
relevance to the search query and not relevance to the entity.” Reply
Br. 5 (emphasis in original). This argument is premised on Appellants’
contention that “[b]ecause the relevance of the entity to the document is
predetermined, it is query-independent.” App. Br. 10; see also Reply Br. 5
(arguing that the portions of Dupin cited by the Examiner discuss “relevance
of product pages to a search query and not a relevance of the product pages
to an entity”). This argument is unpersuasive because it is not
6
Appeal 2017-006065
Application 13/911,982
commensurate with the scope of the claim. The claim language recites “a
predetermined relevance” without qualification. The claim does not
describe how the relevance of the entity to each document is determined.
Nor does the claim identify when the entity relevance is determined, or with
respect to any other event or condition. In sum, the word “predetermined” is
not as narrow as Appellants argue. Therefore, we find that the claim
language does not support Appellants’ interpretation. We further note that
there is a relationship, albeit indirect, between the search query and the
relevance of the entity to each document. To illustrate, the entity relevance
is retrieved only for the documents that are identified based on the search
query. Furthermore, as stated above with regard to the written description
issue, the Specification describes one embodiment of an entity relevance
determined “independent of any search query” (claim 17), i.e., with respect
to whether the search query is running—not whether any aspect of a search
query cannot, at least indirectly, be involved in the process of the entity
relevance determination. Consequently, neither the language of claim 1
(silent regarding query-dependence) nor the Specification supports
Appellants’ argument that reliance on Dupin is in error based on the
contention that a “predetermined relevance” must be “query-independent.”
Accordingly, the arguments Appellants make to distinguish Dupin on the
basis of Dupin’s search query involvement are not persuasive.
B. Arguments Directed to the Rationale
Appellants argue three reasons for challenging the combination of
Agrawal with Dupin. Reply Br. 6-7. First, Appellants argue that because
Agrawal allegedly teaches a “query-dependent” entity relevance, Agrawal
7
Appeal 2017-006065
Application 13/911,982
teaches away from a “predetermined” relevance. App. Br. 11. This
argument is not persuasive as it (1) does not address Dupin as stated above;
and (2) focuses on distinguishing the claims on the bases of excluding in toto
a search query from being used to determine an entity relevance. We
discussed our disagreement with Appellants’ position above.
Second, Appellants argue that reliance on Agrawal renders it
unsatisfactory for its intended purpose. Id. at 12. This argument is also
unpersuasive for the reasons stated above—that the Examiner relies on
Dupin primarily for the disputed limitation and arguments about the search-
query dependence are not persuasive. Further, the Examiner’s proffered
rationale for the combination of teachings of Agrawal and Dupin is not a
bodily incorporation of Dupin or a modification of Agrawal, but rather what
the combined teachings would have suggested to those of ordinary skill in
the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Nievelt,
482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references
does not involve an ability to combine their specific structures.”); Ans.
10-11.
Finally, Appellants argue that Agrawal’s principle of operation would
change. App. Br. 13. This argument, like those discussed above, relies on
characterizing Agrawal as determining relevance after a search query is
received. App. Br. 13. According to Appellant, the principle of operation of
Agrawal would change because of “requiring relevance scores that are
predetermined independent of a search query.” Id. We are not persuaded by
Appellants’ argument for the same reasons as stated above.
8
Appeal 2017-006065
Application 13/911,982
CONCLUSIONS
On the present record, Appellants have failed to show Examiner error
and, thus, we conclude that:
(1) The Examiner erred in rejecting claims 17-10 for failure to
comply with 35 U.S.C. § 112(a).
(2) The Examiner has not erred in rejecting claims 1-20 as being
unpatentable under 35 U.S.C. § 103.
DECISION
The Examiner’s rejection of claims 1—20 is affirmed.
Because at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner is affirmed.
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
9