Ex Parte Chen et alDownload PDFPatent Trial and Appeal BoardJul 30, 201310626875 (P.T.A.B. Jul. 30, 2013) Copy Citation 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. 10/626,875 07/25/2003 Francine R. Chen A3053USNP-XER1564US01 1845 61962 7590 07/31/2013 FAY SHARPE LLP / XEROX - PARC 1228 EUCLID AVENUE, 5TH FLOOR THE HALLE BUILDING CLEVELAND, OH 44115 EXAMINER BURKE, JEFF A ART UNIT PAPER NUMBER 2159 MAIL DATE DELIVERY MODE 07/31/2013 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 FRANCINE R. CHEN, AYMAN O. FARAHAT and THORSTEN H. BRANTS ____________________ Appeal 2010-005592 Application 10/626,875 Technology Center 2100 ____________________ Before ALLEN R. MacDONALD, ROBERT E. NAPPI and KRISTEN L. DROESCH, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005592 Application 10/626,875 2 STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1-88. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claims Exemplary claims 1 and 77 under appeal read as follows (emphasis added): 1. A computer-implemented method of determining predictive models for a linked event detection system comprising the steps of: determining source-identified training stories; determining inter-story similarity vectors in a memory for at least one story-pair of the source-identified training stories; determining link label information for the at least one story- pair, the link label information indicating the existence of at least one link between a pair of stories in the source-identified training stories and that the linked source-identified stories are related to the same event; and determining and storing at least one predictive model in the memory based on the inter-story similarity vectors and the link label information. 77. A method of determining a stopword list comprising the steps of: determining a source-identified training corpus of text information; determining a verified first source-mode transformation of the source-identified training corpus text from a first mode to a second mode based on at least one of a verified transcription and a verified translation; determining an un-verified second source-mode transformation of the source-identified training corpus text from a first mode to a second mode; Appeal 2010-005592 Application 10/626,875 3 determining at least one transformation error associated with distribution differences between the first and second transformations and identified sources; determining and storing at least one source-specific transformation action for the determined transformation errors in a memory; and identifying and transforming transformation errors in other transformed source-identified texts based on the source-specific transformation actions in the memory. Rejections on Appeal The Examiner rejected claims 77-80 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. (Non-final Rej. 4-5). 1 The Examiner rejected claims 77-80 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wayne (“Topic Detection and Tracking in English and Chinese”) and Brown (“Dynamic Stopwording for Story Link Detection”). (Ans. 31-34). 2 The Examiner rejected claims 1-76 and 81-88 under 35 U.S.C. § 103(a) as being unpatentable over either the combination of Sundaresan (US 6,606,620 B1), Pirolli (US 5,835,905), and Maybury (US 6,961,954 B1); or these references in further combination with Gange (US 2004/0006559 Al) or Zhou (US 2004/0002849 Al). (Ans. 6-31). 1 As to this rejection, separate patentability is not argued for claims 78-80. Except for our ultimate decision, the rejection of these claims is not discussed further herein. 2 As to this rejection, separate patentability is not argued for claims 78-80. Except for our ultimate decision, the rejection of these claims is not discussed further herein. Appeal 2010-005592 Application 10/626,875 4 Appellants’ Contentions 1. Appellants contend that the Examiner erred in rejecting claims 1-76 and 81-88 under § 103(a) because “Neither Sundaresan Nor [the] Combination of References Teach Use of Source Identification.” (App. Br. 15-17). 2. Appellants contend that the Examiner erred in rejecting claims 1-76 and 81-88 under § 103(a) because the “Neither Maybury Nor [the] Combination of References Teach Indicating Existence of Stories Linked to the Same Event.” (App. Br. 17-18). 3 3. Appellants contend that the Examiner erred in rejecting claim 77 under § 103(a) because: Also with regard to claim 77, the Examiner's Answer (page 37) maintains the 35 U.S.C. §103(a) rejection by stating that "nowhere in the claim language does the claim require the transformation to occur in the 'actual' text or the 'body' of the text" and further that it is enough "that the transformations merely occur, it is irrelevant where they occur according to the claim." The Appellant respectfully disagrees, and points to the claim language that identifies and transforms transformation errors in other transformed source-identified texts. (Reply Br. 6). 4. Appellants contend that the Examiner erred in rejecting claim 77 under § 103(a) because: [T]he cited portion of Brown explicitly teaches away from this transforming source-identified texts: Each test document then has the weights of the stopwords for the cluster containing it set to zero in its term vector prior to computing the cosine similarity, effectively removing the stopwords 3 Appellants’ remaining contentions as to dependent claims are not reproduced herein as our decision renders these arguments moot. Appeal 2010-005592 Application 10/626,875 5 without actually altering the document stored in memory. (Brown, page 2, column 1, lines 2-6; emphasis added). Thus, the cited portion of Brown never actually transforms transformation errors in transformed source-identified texts based on source-specific transformation actions in memory. Additionally, Wayne does not transform transformation errors in source-identified texts either. Therefore, the combination of Wayne and Brown does not address each and every limitation of independent claim 77. (App. Br. 23-24). 5. Appellants also contend that the Examiner erred in rejecting claim 77 under § 103(a) because: Independent claim 77 recites a method of determining a stopword list that includes identifying and transforming transformation errors in transformed source-identified texts based on source-specific transformation actions in memory. The process of transforming of transformation errors in transformed source-identified texts transforms particular articles (source- identified texts), and thus is statutory under § 101. As acknowledged by the Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. §101 of August 24, 2009: An article can be electronic data that represents a physical object or substance. ... The data should be more than an abstract value. Data can be specifically identified by indicating what the data represents, the particular type or nature of the data, and/or how or from where the data was obtained. (page 5, next-to-last paragraph)[now MPEP § 2106 II.B.1.(b)(second full paragraph); 8th Ed., Rev. 9]. The source-identified texts recited in independent claim 77 are considered articles because they are electronic data that represents a physical text, such as an [sic] news article or story. (App. Br. 22)(emphasis added). Appeal 2010-005592 Application 10/626,875 6 6. Appellants also contend that the Examiner erred in rejecting claim 77 under § 101 because: Here, with respect to claim 77, a particular article (source- identified texts) is transformed into a different state or thing through the process of "transforming transformation errors in other transformed source-identified texts based on the source- specific transformation actions in the memory." The source- identified texts are not merely abstract data. The source- identified texts represent a story or article, which is used to communicate information to a reader. Thus, they are articles within the scope of In re Bilski. Furthermore, the articles are transformed to a different state through the process of correcting errors in the articles. Accordingly, claim 77 is appropriate subject matter under 35 U.S.C. §101. (Reply Br. 6). ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. As to Appellants’ above contention 1, we disagree for the reasons set forth by the Examiner at pages 33-35 of the Answer. As to above contention 2, we agree with Appellants. This renders moot Appellants’ remaining arguments as to claims 1-76 and 81-88. As to Appellants’ above contention 3, we agree with Appellants. This renders moot Appellants’ contention 4. As to Appellants’ above contentions 5 and 6, we disagree. Contrary to the foundation of Appellants’ argument, “text” is not “physical.” Text is not a tangible article or commodity. Cf. In re Nuijten, 500 F.3d 1346, 1356 (Fed. Cir. 2007). Rather, Appellants’ text is merely the printed matter on the physical substrate (i.e., document). Appellants data in memory is not a data Appeal 2010-005592 Application 10/626,875 7 representation of the document (e.g., a scanned image of the physical document and its abstract text information), but rather a data representation of only the abstract information printed on the document. As such we find no basis for Appellants to argue that the claimed transformation of text is transformation of an article which renders the claim patentable under 35 U.S.C. §101. Additionally, unlike claim 1, Appellants’ claim 77 is not limited to a “computer implemented method” and instead encompasses performance of the “determining”, and “identifying and transforming” steps as mental activity by a human being. Even the act of using “a memory” as the storage for the text information encompasses storage in a human memory. Even if claim 77 were construed as requiring the memory to be some tangible machine recording medium, the essence of claim 77 would encompass a method using mental activity alone with insignificant “extra-solution” activity in the form of storage in a recording medium. CONCLUSIONS (1) Appellants have established that the Examiner erred in rejecting claims 1-76 and 81-88 as being unpatentable under 35 U.S.C. § 103(a). (2) Appellants have established that the Examiner erred in rejecting claims 77-80 under 35 U.S.C. § 103(a). (3) The Examiner did not err in rejecting claims 77-80 under 35 U.S.C. § 101. Appeal 2010-005592 Application 10/626,875 8 DECISION The Examiner’s rejections of claims 1-88 under 35 U.S.C. § 103(a) are reversed. The Examiner’s rejection of claims 77-80 under 35 U.S.C. § 101 are 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)(1)(iv). AFFIRMED-IN-PART ELD Copy with citationCopy as parenthetical citation