Apple Inc.

Patent Trials and Appeals BoardJan 25, 2021

2020006363 (P.T.A.B. Jan. 25, 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. 16/146,883 09/28/2018 Ari WEINSTEIN P38147US4/77870000301104 3776 150004 7590 01/25/2021 DENTONS US LLP - Apple 4655 Executive Dr Suite 700 San Diego, CA 92121 EXAMINER SHARMA, NEERAJ ART UNIT PAPER NUMBER 2659 NOTIFICATION DATE DELIVERY MODE 01/25/2021 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): dentons_PAIR@firsttofile.com patent.docket@dentons.com patents.us@dentons.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ARI WEINSTEIN, OLUWATOMIWA ALABI, KELLIE ALBERT, JOHN BLATZ, CYRUS D. IRANI, IEYUKI KAWASHIMA, and STEPHEN O. LEMAY Appeal 2020-006363 Application 16/146,883 Technology Center 2600 Before MAHSHID D. SAADAT, JEAN R. HOMERE, and BRADLEY W. BAUMEISTER, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE1 Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision rejecting claims 1–5 and 7–24, all of the claims pending.2 Appeal Br. 7. Claim 6 has been objected as being dependent upon a rejected base claim, but would otherwise be allowable if rewritten in 1 We refer to the Specification filed Sept. 28, 2018 (“Spec.”); the Final Office Action, mailed Sept. 16, 2019 (“Final Act.”); the Appeal Brief, filed April 30, 2020 (“Appeal Br.”); the Examiner’s Answer, mailed July 10, 2020 (“Ans.”); and the Reply Brief, filed Sept. 10, 2020 (“Reply Br.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Apple Inc. as the real party-in- interest. Appeal Br. 1. Appeal 2020-006363 Application 16/146,883 2 independent form to include the limitation of the base claim any intervening claims. Id. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held in this appeal on January 11, 2021. A transcript of the oral hearing will be entered into the record in due course. We REVERSE. II. CLAIMED SUBJECT MATTER According to Appellant, the claimed subject matter relates to an electronic device including a digital assistant (e.g., SIRI) for accelerating task performance. Spec. ¶¶ 2, 4. Figure 10R, reproduced and discussed below, is useful for understanding the claimed subject matter: Appeal 2020-006363 Application 16/146,883 3 Figure 10R above illustrates electronic device (1000) including display (1001), interface (1004), touch-sensitive surface, and digital assistant stored in memory. Id. ¶ 313. Appeal 2020-006363 Application 16/146,883 4 In particular, upon receiving from a user a natural-language speech input, electronic device (1000) determines a previously recorded voice shortcut or user-generated phrase (e.g., “Coffee Time”, “Coffee Me”) associated with the input to perform a task corresponding therewith (e.g., ordering a large cup of coffee) among tasks identified by candidate task affordance module (1008). Id. ¶¶ 325–328. The electronic device subsequently provides the user with a positive feedback (“e.g. your large latte will be ready in 20 min”) if the selected task was performed successfully, or otherwise provides the user with a negative feedback (e.g. “something went wrong”, “your card balance is insufficient”) if the selected task was not performed successfully. Id. ¶¶ 436, 465–468, 477. Claims 1, 19, and 22 are independent. Claim 1, reproduced below with disputed limitations emphasized, is illustrative: 1. A non-transitory computer-readable storage medium storing one or more programs, the one or more programs comprising instructions, which when executed by one or more processors of a first electronic device, cause the first electronic device to: receive, with a digital assistant, a natural-language speech input; determine a voice shortcut associated with the natural- language speech input, wherein the voice shortcut is a user- generated phrase customized by a user of the electronic device; determine a task corresponding to the voice shortcut; cause an application to initiate performance of the task, wherein the application is preloaded with one or more customized parameters associated with the voice shortcut, the one or more customized parameters defined by the user prior to receiving the speech input; receive a response from the application, wherein the response is associated with the task; Appeal 2020-006363 Application 16/146,883 5 determine, based on the response, whether the task was successfully performed; and provide an output indicating whether the task was successfully performed. Appeal Br. 38 (Claims App.). III. REFERENCES The Examiner relies upon the following references.3 Name Reference Date Yoshizawa US 2003/0191629 A1 Oct. 9, 2003 Cash US 2015/0045007 A1 Feb. 12, 2015 Nelson US 2015/0053781 A1 Feb. 26, 2015 Klein US 2015/0254058 A1 Sept. 10, 2015 Sharifi US 2016/0140962 A1 May 19, 2016 Adan US 2018/0336449 A1 Nov. 22, 2018 IV. REJECTIONS The Examiner rejects claims 1, 2, and 5–12 as follows: Claims 1–3, 8, 11–15, 17, and 19–24 are rejected under 35 U.S.C. § 102(a) as being anticipated by Klein. Final Act. 5–14. Claims 4, 5, and 7 are rejected under 35 U.S.C. § 103 as being unpatentable over the combined teachings of Klein and Yoshizawa. Final Act. 14–17. Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over the combined teachings of Klein and Adan. Final Act. 17–18. 3 All reference citations are to the first named inventor only. Appeal 2020-006363 Application 16/146,883 6 Claim 10 is rejected under 35 U.S.C. § 103 as being unpatentable over the combined teachings of Klein and Sharifi. Final Act. 18–19. Claim 16 is rejected under 35 U.S.C. § 103 as being unpatentable over the combined teachings of Klein and Cash. Final Act. 19–20. Claim 18 is rejected under 35 U.S.C. § 103 as being unpatentable over the combined teachings of Klein and Nelson. Final Act. 20. V. ANALYSIS 1. Anticipation Rejection Appellant argues that Klein does not describe the limitations, “receive a response from the application, wherein the response is associated with the task; determine, based on the response, whether the task was successfully performed; and provide an output indicating whether the task was successfully performed,” as recited in independent claim 1. Appeal Br. 23. According to Appellant, Klein’s disclosure of signing in to a particular user’s profile does not describe the disputed claim limitations. Id. at 23–24 (citing Klein ¶¶ 55, 56). In particular, Appellant argues that the Examiner improperly mapped both the limitations of receiving a response from an application and providing an output to Klein’s disclosure of signing in a user to a particular profile. Id. at 24. Appellant’s arguments are persuasive of reversible Examiner error. Klein discloses a system for providing a parametrized voice command suggestion to a user within a contextual state of a graphical user interface. Klein, Abstr. In particular, Klein discloses upon the user customizing a voice command obtained from a library to invoke the performance of a task Appeal 2020-006363 Application 16/146,883 7 (e.g. sign in user), a computing system configures a home page based on the user’s preferences. Id. ¶¶ 55, 56. We do not agree with the Examiner that Klein’s disclosure of configuring the home screen based on the user’s preferences teaches both the claimed limitations. Final Act. 8–9, Ans. 14 (citing Klein ¶ 56, Fig. 3). We agree with Appellant that the cited portion of Klein teaches at most an indication that the requested task associated with the voice command was successfully or unsuccessfully processed. Appeal Br. 24. However, as noted by Appellant, the Examiner’s reliance upon the same disclosure of Klein falls short of also describing the separate limitation of providing an output to the user indicating that the task was successfully or unsuccessfully processed by a separate application (at least not under an anticipation standard). Id. Because Appellant has shown at least one reversible error in the Examiner’s anticipation rejection of independent claim 1, we do not reach Appellant’s remaining arguments. Accordingly, we do not sustain the Examiner’s anticipation rejection of independent claims 1, 19, and 22, each of which includes the argued disputed limitations. Likewise, we do not sustain the rejection of dependent claims 2, 3, 8, 11–15, 17, 20, 21, 23, and 24, which also recite the disputed limitations. . 2. Obviousness Rejections Because dependent claims 4, 5, 7, 9, 10, 16, and 18 incorporate the disputed limitations of independent claims 1, 19, and 22, and the Examiner has not identified any teachings in the secondary references relied upon for the obviousness rejections that cures the noted deficiencies of the Appeal 2020-006363 Application 16/146,883 8 independent claims discussed above, we do not sustain the Examiner’s obviousness rejections of claims 4, 5, 7, 9, 10, 16, and 18. VI. CONCLUSION We reverse the Examiner’s rejections of claims 1–5 and 7–24. VII. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 8, 11–15, 17, 19–24 102 Klein 1–3, 8, 11– 15, 17, 19– 24 4, 5, 7 103 Klein, Yoshizawa 4, 5, 7 9 103 Klein, Adan 9 10 103 Klein, Sharifi 10 16 103 Klein, Cash 16 18 103 Klein, Nelson 18 Overall Outcome 1–5, 7–24 REVERSED