International Business Machines Corporation

Patent Trials and Appeals Board

Aug 5, 2021

2020002801 (P.T.A.B. Aug. 5, 2021)

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.
14/924,943 10/28/2015 Pierre Elie Arbajian YOR920150987US1 6051
21254 7590 08/05/2021
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
VASQUEZ, MARKUS A
ART UNIT PAPER NUMBER
2121
MAIL DATE DELIVERY MODE
08/05/2021 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 PIERRE ELIE ARBAJIAN, JEB R. LINTON, and
JAMES R. KRAEMER
Appeal 2020-002801
Application 14/924,943
Technology Center 2100
Before JOSEPH L. DIXON, THU A. DANG, and JOYCE CRAIG,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–9, and 11–20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2019). The Appellant identifies the real party in interest as
International Business Machines Corporation. Appeal Br. 1.
Appeal 2020-002801
Application 14/924,943
2
CLAIMED SUBJECT MATTER
The claims are directed to systems and methods for cognitive
intention detection for initiating automated workflow in multimodal
messaging. Abstract. Claim 1, reproduced below, is illustrative of the
claimed subject matter:

1. A cognitive intention detection method, comprising:
transforming a user input associated with a user beginning to
perform a workflow to a transfom1ed input by:
stripping out auxiliary verbs;
stemming the remaining words after the stripping; and
adding synonyms of the remaining words to the user
input of the user beginning to perform the workflow;
displaying one or more options for automating the workt1ow
based on a learned association with the user beginning to perform the
workf1ow according to an intention of the user based on a semantic
content of the transformed input;
selecting, via a user selection, an option of the one or more
options for automated workflow; and
automating and executing the workflow so that the user does
not have to perform the workflow by removing the workflow from the
user based on the option selected by the user in the selecting to
perform a function of the workflow in multiple modes,
wherein the displaying displays the one or more options in a
floating list that dynamically moves on a display screen to avoid
interrupting a view of the user, and
wherein the intention of the user is determined based on a first
word of the user input and the determination of the intention of the
user is dynamically updated as each new word is entered into the user
input, and
wherein, once the option is selected via the user selection,
performing additional analysis of the learned association using a
machine learning algorithm comprising one of a support vector
machine and Logistic Regression to rate every message to
continuously expand a training data set and a future prediction.
Appeal Br. 13–14 (emphasis added).
Appeal 2020-002801
Application 14/924,943
3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hedberg Hedberg, Sara Reese.
“Is AI going
mainstream at last? A
look inside Microsoft
Research.” IEEE
Intelligent Systems and
their Applications 13.2
(Mar/April 1998): 21-
25. (Year: 1998).
March/April 1998
Joachims Joachims, Thorsten.
“Text Categorization
with Support Vector
Machines: Learning
with Many Relevant
Features.” European
conference on machine
learning. Springer,
Berlin, Heidelberg,
1998. (Year: 1998)
1998
Herlocker US 2007/0162907 Al July 12, 2007
Fife US 2014/0088952 A1 Mar. 27, 2014
Borzello US 2014/0201672 Al July 17, 2014
Zhu US 2015/0121303 Al Apr. 30, 2015
Yang US 2016/0132342 A1 May 12, 2016
Gupta US 2017/0098144 A1 Apr. 6, 2017

REJECTIONS
Claims 1–3, 5–9, and 11–20 stand rejected under 35 U.S.C. § 112(a)
as failing to comply with the written description requirement. The claims
contain subject matter which was not described in the specification in such a
way as to reasonably convey to one skilled in the relevant art that the
Appeal 2020-002801
Application 14/924,943
4
inventor or a joint inventor at the time the application was filed, had
possession of the claimed invention. Final Act. 2.
Claims 1–3, 5–9, and 11–20 stand rejected under 35 U.S.C. § 112(b)
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which the inventor or a joint inventor regards as the
invention. Final Act. 4.
Claims 1–3, 5–9, 11–13, and 15–20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Yang in view of Hedberg, Gupta, Fife, Zhu
Herlocker, and Joachims. Final Act. 4–5.
Claim 14 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Yang in view of Hedberg, Gupta, Fife, Zhu, Herlocker, Joachims, and
Borzello.2 Final Act. 19.

OPINION
35 U.S.C. § 112(a)
With respect to independent claims 1, 16, and 20, the Appellant does
not set forth separate arguments for patentability regarding 35 U.S.C.
§ 112(a). Appeal Br. 10. As a result, we select independent claim 1 as the
representative claim for the group. See 37 C.F.R. § 41.37(c)(1)(iv).
Therefore, claims 2, 3, 5–9, 11–15, and 17–19 will stand or fall with
representative independent claim 1 with respect to 35 U.S.C. § 112(a).
Arguments which the Appellant could have made but did not make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).

2 We note that the Examiner did not include the Joachims reference in the
heading for the rejection of claim 14, but the reference is required as claim
14 depends from independent claim 1.
Appeal 2020-002801
Application 14/924,943
5
We adopt the Examiner’s findings that claim 1 contains subject matter
which was not described in the Specification in such a way as to reasonably
convey to one skilled in the relevant art that the inventor or a joint inventor,
at the time the application was filed, had possession of the claimed
invention. Final Act. 2–3; Ans. 3. Accordingly, we affirm the Examiner’s
35 U.S.C. § 112(a) rejection on appeal essentially for the reasons set forth in
the record by the Examiner, with the following emphasis.
The Appellant argues that “the [August 15, 2019] amendments in the
response to the August 6, 2019 Office Action overcome the [35 U.S.C.
§ 112] rejections.” Appeal Br. 10 (alteration in original). These August 15,
2019 amendments were not entered by the Examiner. Advisory Act. 2. The
Appellant further argues that “[s]hould the case be allowed during/after
appeal, Appellant respectfully requests the Examiner enter the amendments
or perform an Examiner's amendment.” Appeal Br. 10. The Examiner
replies that the “Applicant provides no arguments regarding the rejections
under 35 USC 112.” Ans. 3. The Appellant does not argue the 35 U.S.C.
§ 112(a) rejection in the Reply Brief.
The Appellant has not shown error for the 35 U.S.C. § 112(a)
rejection as they apply to the current, entered, claim language, and we
sustain the 35 U.S.C. § 112(a) rejection.

35 U.S.C. § 112(b)
With respect to independent claims 1, 16, and 20, the Appellant does
not set forth separate arguments for patentability regarding 35 U.S.C.
§ 112(b). Appeal Br. 10. As a result, we select independent claim 1 as the
representative claim for the group. See 37 C.F.R. § 41.37(c)(1)(iv).
Therefore, claims 2, 3, 5–9, 11–15, and 17–19 will stand or fall with
Appeal 2020-002801
Application 14/924,943
6
representative independent claim 1 with respect to 35 U.S.C. § 112(b).
Arguments which the Appellant could have made but did not make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).
We also adopt the Examiner’s findings that claim 1 is indefinite for
failing to particularly point out and distinctly claim the subject matter which
the inventor or a joint inventor regards as the invention. Final Act. 4;
Ans. 3. Accordingly, we affirm the Examiner’s 35 U.S.C. § 112(b)
rejections on appeal essentially for the reasons set forth in the record by the
Examiner, with the following emphasis.
The Appellant provides no substantive argument in the Appeal Brief
to the 35 U.S.C. § 112(b) rejection made by the Examiner. Appeal Br. 10;
see also Ans. 3. The August 15, 2019, amendments were not entered by the
Examiner. Advisory Act. 2. The Appellant does not argue the 35 U.S.C.
§ 112(b) rejection in the Reply Brief.
The Appellant has not shown error for the 35 U.S.C. § 112(b)
rejection as it applies to the current, entered, claim language, and we sustain
the 35 U.S.C. § 112(b) rejection.

35 U.S.C. § 103
With respect to independent claims 1, 16, and 20, the Appellant does
not set forth separate arguments for patentability regarding 35 U.S.C. § 103.
Appeal Br. 11. As a result, we select independent claim 1 as the
representative claim for the group as claims 16 and 20 contains similar
limitations. See 37 C.F.R. § 41.37(c)(1)(iv). Therefore, claims 2, 3, 5–9,
11–15, and 17–19 will stand or fall with representative independent claim 1
with respect to 35 U.S.C. § 103. Arguments which the Appellant could have
Appeal 2020-002801
Application 14/924,943
7
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).
We review the appealed rejection for error based upon the issues the
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”) (cited with approval in In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)). In rejecting claims under
35 U.S.C. § 103(a), the examiner bears the initial burden of establishing a
prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992); see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
Obviousness is determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at 1445;
Piasecki, 745 F.2d at 1472. Upon review of the evidence and each of the
respective positions set forth in the record, we find that the preponderance of
evidence supports the Examiner’s position in the record. Accordingly, we
affirm the Examiner’s 35 U.S.C. § 103 rejections on appeal essentially for
the reasons set forth in the record by the Examiner, with the following
emphasis.
The Appellant argues that “the Examiner has based his rejection on
hindsight because of the numerous (seven) references that are combined”
(Appeal Br. 10) and “common sense must be used” (Reply Br. 2). The
Examiner states that “[r]eliance on a large number of references does not,
without more, weigh on the obviousness of the invention.” Ans. 3.
In response to the Appellant’s “argument that the examiner has
combined an excessive number of references, reliance on a large number of
references in a rejection does not, without more, weigh against the
Appeal 2020-002801
Application 14/924,943
8
obviousness of the claimed invention.” Manual of Patent Examining
Procedure (“MPEP”) § 707.07(f) (9th Ed., Rev. 10.2019, June 2020)); see
also In re Gorman, 933 F.2d 982 (Fed. Cir. 1991). Thus, the Appellant’s
argument about the number of references is unpersuasive. Furthermore,
since the Appellant’s “common sense” argument is premised on the amount
of references, it is similarly unpersuasive.
The Appellant argues that “Yang in view of Hedberg, Gupta, Fife,
Zhu, Herlocker, and Joachims does not teach or suggest ‘wherein, once the
option is selected via the user selection, performing additional analysis of
the learned association using a machine learning algorithm comprising one
of a support vector machine and Logistic Regression to rate every message’,
as recited in exemplary claims 1, 16 and 20.” Appeal Br. 11; Reply Br. 2.
In support, the Appellant states that “Herlocker merely mentions an
algorithm as a support vector machine classifier but does not talk about
‘rating’ every message. Instead, it only describes predicting a task.”
Appeal Br. 11 (emphasis added); Reply Br. 3. Further, the Appellant states
“[t]he invention of Herlocker is limited to predicting a task and does not
rate every message. Merely teaching a support vector machine classifier
without more does not mean every message is rated as alleged by the
Examiner.” Reply Br. 3. While not addressed by the Appellant, we find that
the broadest reasonable interpretation of “every message” might comprise
only one or two messages.3

3 Claim terms are to be given their broadest reasonable interpretation,
as understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). “In the patentability context, claims
Appeal 2020-002801
Application 14/924,943
9
The Examiner finds this limitation is taught by Herlocker and
Joachims. Specifically, the Examiner finds that Herlocker “uses a support
vector machine algorithm to predict a task to be performed by a user based
on evidence (see [0030] of Herlocker). The evidence is described at [0024]
of Herlocker and includes words present in an email, along with a list of
recipients of the email.” Ans. 5–6; see also Final Act. 10–11. The
Examiner also finds Joachims shows the text classification, learning theory,
analysis and performance gains of support vector machines (“SVMs”). Final
Act. 11.
Herlocker teaches evidence associated with a task such as the
“frequency of each word occurring in the document.” Herlocker ¶ 24.
Herlocker further teaches determining the probability of this evidence and
when this evidence is greater than a threshold, an SVM predicts a current
task. Herlocker ¶ 30. Herlocker also teaches ranking a list of tasks for each
new email message. Herlocker ¶ 40. Joachims teaches SVMs for text
classification, analysis and learning. Joachims 137. Joachims further
teaches ranking features for classification. Joachims 139.
The Appellant does not address the portions of the Herlocker
reference that teach evidence, frequency of words, thresholding and ranking
for a message. The Appellant also does not address details of the Joachims
reference at all in the Briefs. By doing so, the Appellant misses an
opportunity to show error in the rejection as applied by the Examiner.

are to be given their broadest reasonable interpretations . . . limitations are
not to be read into the claims from the specification.” In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted).

Appeal 2020-002801
Application 14/924,943
10
“Filing a Board appeal does not, unto itself, entitle an appellant to de
novo review of all aspects of a rejection. If an appellant fails to present
arguments on a particular issue – or, more broadly, on a particular rejection
– the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.” Ex parte Frye, 94 USPQ2d at 1075
(precedential) (internal citations omitted). “It is not the function of [the U.S.
Court of Appeals for the Federal Circuit] to examine the claims in greater
detail than argued by an appellant, looking for nonobvious distinctions over
the prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir.
1991). Similarly, it is not the function of this Board to examine claims in
greater detail than argued by the Appellant, looking for distinctions over the
prior art.
“It is well-established that the Board is free to affirm an examiner’s
rejection so long as appellants have had a fair opportunity to react to the
thrust of the rejection.” In re Jung, 637 F. 3d 1356, 1365 (Fed. Cir. 2011)
(citations omitted). We find that the Examiner has thoroughly and
comprehensively addressed all the issues involved in this appeal.
The Appellant has the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985–86
(Fed. Cir. 2006). We find that the Appellant has not shown error in the
rejection as applied by the Examiner.
Accordingly, we adopt the Examiner’s factual findings, reasoning,
and conclusions (Final Act. 4–11; Ans. 3–6) as our own. Because the
Appellant has not set forth separate arguments for patentability of
independent claims 16, 20 and dependent claims 2, 3, 5–9, 11–15, and 17–
19, these claims fall with representative independent claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Appeal 2020-002801
Application 14/924,943
11
CONCLUSION
The Examiner’s decision rejecting claims 1–3, 5–9, and 11–20 under
35 U.S.C. § 112(a) is AFFIRMED.
The Examiner’s decision rejecting claims 1–3, 5–9, and 11–20 under
35 U.S.C. § 112(b) is AFFIRMED.
The Examiner’s decision rejecting claims 1–3, 5–9, and 11–20 under
35 U.S.C. § 103 is AFFIRMED.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5–9,
11–20
112(a) Written Description 1–3, 5–9,
11–20

1–3, 5–9,
11–20
112(b) Indefiniteness 1–3, 5–9,
11–20

1–3, 5–9,
11–13, 15–
20
103 Yang, Hedberg,
Gupta, Fife, Zhu
Herlocker, Joachims
1–3, 5–9,
11–13, 15–
20

14 103 Yang, Hedberg,
Gupta, Fife, Zhu
Herlocker, Joachims,
Borzello
14
Overall
Outcome
1–3, 5–9,
11–20

RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
Appeal 2020-002801
Application 14/924,943
12
AFFIRMED