Ex Parte Clark et alDownload PDFPatent Trial and Appeal BoardDec 6, 201713804734 (P.T.A.B. Dec. 6, 2017) 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. 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. 2 Appeal 2016-008192 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). 3 Appeal 2016-008192 Application 13/804,734 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 4 Appeal 2016-008192 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, 5 Appeal 2016-008192 Application 13/804,734 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. 6 Appeal 2016-008192 Application 13/804,734 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 7 Appeal 2016-008192 Application 13/804,734 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). 8 Appeal 2016-008192 Application 13/804,734 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 9 Copy with citationCopy as parenthetical citation