Ex Parte Clark et al

Patent Trial and Appeal Board

Dec 6, 2017

13804734 (P.T.A.B. Dec. 6, 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.
13/804,734 03/14/2013 Adam T. Clark ROC920130032US4 9428
46797 7590 12/08/2017
Patterson Rr SheriHan T T P
EXAMINER
24 Greenway Plaza, Suite 1600
Houston, TX 77046
NEWAY, SAMUEL G
ART UNIT PAPER NUMBER
2657
NOTIFICATION DATE DELIVERY MODE
12/08/2017 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):
Pair_eOfficeAction@pattersonsheridan.com
IBM@PATTERSONSHERIDAN.COM
rociplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM T. CLARK, JOEL C. DUBBELS,
JEFFREY K. HUEBERT, and JOHN E. PETRI
(Applicant: International Business Machines Corporation)
Appeal 2016-008192
Application 13/804,734
Technology Center 2600
Before BRUCE R. WINSOR, IRVIN E. BRANCH, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 1—7, all of the pending claims of the application. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-008192
Application 13/804,734
RELATED PROCEEDINGS
Appellant identifies co-pending application 13/796,616 as related to
the present application. Appeal Br. 4. Application 13/796,616 is the subject
of Appeal 2016-008136.
STATEMENT OF THE CASE
Invention
According to Appellant, the invention relates to a natural language
processing (“NLP”) system that may re-ingest data from an identified data
source expected to contain an answer to a query upon determining
previously ingested data does not contain the answer to the query. Spec.
14.1
Exemplary Claim
Claim 1 is the independent claim and is reproduced below with
disputed limitations italicized:
A method comprising:
receiving a query for processing by a natural language
processing (NLP) system comprising a corpus containing data
ingested from a plurality of data sources, wherein the data is
formatted and stored into one or more objects;
identifying a data source expected to contain an answer to
the query by correlating one or more elements of the query to
1 This Decision refers to: (1) Appellant’s Specification filed March 14, 2013
(“Spec.”); (2) the Final Office Action (“Final Act.”) mailed August 21,
2015; (3) the Appeal Brief (“Appeal Br.”) filed January 20, 2016; (4) the
Examiner’s Answer (“Ans.”) mailed June 27, 2016; and (5) the Reply Brief
(“Reply Br.”) filed August 29, 2016.
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Application 13/804,734
data previously ingested into the corpus from the identified data
source;
upon determining that the previously ingested data in the
corpus does not contain the answer to the query, determining
whether new material has been added to the identified data
source since the last time the identified data source was ingested
into the corpus;
if so, re-ingesting the identified data source using one or
more computer processors whereby the new material is inserted
into the corpus; and
processing the query to determine if the new material
inserted into the corpus contains the answer to the query.
Appeal Br. 19.
REFERENCES AND REJECTIONS
Claims 1—4, and 7 stand rejected under 35 U.S.C. § 103(a) (pre-AIA)
as being unpatentable over the combination of Hrle et al. (US 2012/0016881
Al; published Jan. 19, 2012) (“Hrle”), and Hotz et al. (US 2004/0039798
Al; published Feb. 26, 2004) (“Hotz”). Final Act. 6—9.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) (pre-AIA) as
being unpatentable over the combination of Hrle, Hotz, and Lee (US
7,065,524 Bl; issued June 20, 2006). Final Act. 9-10.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellant. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. §§ 41.37(c)(l)(iv), 41.39(a)(1).
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ANALYSIS
Rejection of Claims 1—4, and 7 Under § 103(a)
We have considered all of Appellant’s arguments and any evidence
presented. We disagree with Appellant’s arguments and, insofar as they
relate to issues raised in this appeal, we adopt as our own: (1) the findings
and legal conclusions set forth by the Examiner in the Final Office Action
(6—9) from which this appeal is taken, and (2) the findings, legal
conclusions, and explanations set forth in the Answer (2—15) in response to
Appellant’s arguments. We address Appellant’s arguments in the order they
are presented in the Appeal Brief.
Appellant, in responding to the rejection of claim 1, argues combining
the references as proposed in the rejection would result in two staleness
determinations and that “it would not be obvious ... to search the same data
source twice for an answer to the query.” Appeal Br. 10-11. Specifically,
Appellant asserts the combination “results in a completely unnecessary
search of the index of Hrle, because Hrle already determined the index was
stale before the query was applied to it.” Appeal Br. 10. Appellant further
argues “L/r/e’s intended purpose and principle of operation is to reduce the
amount of resources used by the stale index” (Appeal Br. 11) and “the
Office’s suggestion to use more resources to search a stale index twice, for
no added benefit, would render Hrle unsatisfactory for its intended purpose
and would change the principle of operation of Hrle.’ ’ Appeal Br. 11—12.
We are unpersuaded because Appellant’s argument is not responsive
to the specific findings made by the Examiner. That is, the Examiner finds,
and we agree, that rather than search a stale index twice, “the combination
merely substitutes one staleness (needing update) determination with
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Application 13/804,734
another.” Ans. 10. Appellant, in turn, has not disputed the Examiner’s
findings in the Reply Brief and so fails to demonstrate that combining the
references as proposed in the rejection would result in two staleness
determinations.
Furthermore, these contentions are premised on a “physical” or
“bodily” incorporation of limitations of one reference into the other. This,
however, is not the standard. See In re Sneed, 710 F.2d 1544, 1550 (Fed.
Cir. 1983) (“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review”). The
relevant inquiry is whether the claimed subject matter would have been
obvious to those of ordinary skill in the art in light of the combined
teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA
1981). “Combining the teachings of references does not involve an ability
to combine their specific structures.” In reNievelt, 482 F.2d 965, 968
(CCPA 1973). Rather than express obviousness as the physical
incorporation of a structure from one reference into the structure of another
reference, the prior art should be viewed as a combination of teachings from
different sources, and the use of those teachings by one of ordinary skill in
the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (the
conclusion of obviousness can be based on the interrelated teachings of
multiple patents, the effects of demands known to the design community or
present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art.)
Because the Examiner finds the combination results in a single
staleness determination, we find unpersuasive Appellant’s argument that
combining the references would result in two staleness determinations and,
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thus, render I hie unsatisfactory for its intended purpose and change the
principle of operation of Hrle.
Still further, Appellant’s argument that the combination lacks the
required motivation (Appeal Br. 11—12) is not persuasive of error because
Appellant does not address the motivation identified by the Examiner. See
Final Act. 7. That is, the Examiner has found actual teachings in the prior
art and has additionally provided a rationale for the combination:
It would have been obvious to one with ordinary skill in the art
at the time of the invention to have combined the references to
yield the predictable result of determining whether Hrle’s new
material has been added to the identified data source since the
last time the identified data source was ingested into the corpus
upon determining that the identified data source in the corpus
does not contain the answer to the query as disclosed by Hotz in
order to determine result staleness based on queries.
Final Act. 7 (citing Hotz 133).
We determine the combination of Hrle and Hotz involves the
predictable use of prior art elements according to their established functions
and we agree, therefore, with the Examiner that the combination yields
predictable results. “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results” (KSR, 550 U.S. at 416), especially if the combination
would not be “uniquely challenging or difficult for one of ordinary skill in
the art ” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 420). We consequently determine
the Examiner has provided sufficient reasoning for combining the teachings
of Hrle and Hotz and that Appellant fails to demonstrate error in the
Examiner’s conclusion of obviousness.
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Appellant argues the combination of Hrle and Hotz “does not teach
‘determining that the previously ingested data in the corpus does not contain
the answer to the query. Appeal Br. 12. Specifically, Appellant argues
Hrle’s stale index does not contain answers to a query. “Rather, the stale
index of Hrle contains pointers to a table. The index is merely an
intermediary that directs the query to the appropriate table which contains
the requested data. Thus, the teachings of Hrle require a query to go to the
table, and not the index.” Appeal Br. 13.
In response, the Examiner points out “it was Hotz which was used to
teach determining that the previously ingested data in the corpus does not
contain the answer to the query.” Ans. 12 (citing Hotz 133).
Appellant’s argument against Hrle, without addressing Hotz, does not
persuasively rebut the combination made by the Examiner. One cannot
show non-obviousness by attacking references individually, where the
rejections are based on combinations of references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); see also Keller, 642 F.2d at 425-26.
Appellant fails to specifically rebut the Examiner’s finding that Hotz teaches
the disputed feature in its teaching of acquiring the answer from a database
“if the answer exists in the data cache and the answer is stale’’ or if the
answer does not exist in the data cache. Final Act. 7 (citing Hotz 133); see
also Ans. 13. Moreover, we understand Appellant’s argument to rely on a
physical combination of the cited references. See Appeal Br. 12. As
indicated supra, “[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.” The
relevant inquiry is whether the claimed subject matter would have been
obvious to those of ordinary skill in the art in light of the combined
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teachings of those references. See Keller, 642 at 425. Appellant, thus, fails
to persuasively establish the Examiner errs in finding the combination
teaches the disputed feature.
Appellant argues the combination of Hrle and Hotz does not teach
receiving queries for processing by a Natural Language Processing system,
as claimed, because “neither Hotz nor Hrle mention ‘natural language
processing.’” Appeal Br. 14.
We are not persuaded. We determine NLP, as recited in the disputed
limitation, is merely an intended use of the claimed method. Appellant fails
to demonstrate anything in the claim that delineates how the method
functions as a “NLP system.” See Appeal Br. 15—17. Thus, the mere
recitation of NLP alone cannot distinguish the invention because as used in
the claim it is no more than an obvious intended use limitation. All of the
claimed functional elements are just as applicable to the processing of
queries using predefined formats or formal syntax as they are to NLP
queries. That persons of ordinary skill in the art would have understood that,
absent some functional difference, techniques for handling queries formal
format or syntax queries (e.g., SQL) are equally applicable to NLP queries,
rendering the recitation of NLP as an obvious intended use, is evidenced by
Lee at column 3, lines 22—33. We refer to Lee here not as prior art, but
merely as evidence of the general knowledge in the art at the time of the
invention. We note Appellant is not without remedy. Appellant always has
the opportunity to amend the claims during prosecution, and broad
interpretation by the Examiner reduces the possibility that the claim, once
issued, will be interpreted more broadly than is justified. In re Prater, 415
L.2d 1393, 1404—05 (CCPA 1969).
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Consequently, Appellant has not shown error in the Examiner’s
factual findings or conclusion of obviousness and we sustain the 35 U.S.C.
§ 103(a) rejection of representative independent claim 1. Dependent claims
2—\ and 7 are not argued separately, and are therefore rejected for the same
reasons as independent claim 1. See generally Appeal Br. 8—17.
Rejection of Claims 5 and 6 Under § 103
For the § 103 rejection of claims 5 and 6, Appellant urges reversal for
the reasons discussed with respect to claim 1. Appeal Br. 17. Because we
find Appellant’s arguments regarding claim 1 unpersuasive for the reasons
discussed supra, we sustain the Examiner’s rejection of claims 5 and 6.
DECISION
We affirm the Examiner’s decision rejecting claims 1—7 under
35 U.S.C. § 103(a).
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
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