Ex Parte Gail et al

Patent Trial and Appeal BoardApr 18, 2016

11673173 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111673,173 0210912007 48062 7590 04/20/2016 RYAN, MASON & LEWIS, LLP 1175 Post Road East 2nd Floor Westport, CT 06880 FIRST NAMED INVENTOR H. Richard Gail 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 ATTORNEY DOCKET NO. CONFIRMATION NO. YOR920060424US 1 2155 EXAMINER SCHALLHORN,TYLERJ ART UNIT PAPER NUMBER 2177 NOTIFICATION DATE DELIVERY MODE 04/20/2016 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): ctoffice@rml-law.com kmm@rml-law.com mjc@rml-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte H. RICHARD GAIL, SIDNEY L. HANTLER, MEIR M. LAKER, JONATHAN LENCHNER and DANIEL MILCH Appeal2014--003113 Application 11/673, 173 Technology Center 2100 Before ST. JOHN COURTENAY III, CATHERINE SHIANG and KAMRAN JIVANI, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-25, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. Invention The claimed invention on appeal is directed to "techniques for real- time spelling correction of words in documents and more particularly, to Appeal2014--003113 Application 11/673, 173 techniques for automatically detecting spelling errors in one or more documents, for example, during the creation of a lexicon comprised of words from the documents." (Spec. 1 ). Illustrative Claim 1. A method for detecting a spelling error in one or more documents, comprising: [L 1] obtaining a maximum edit distance at which a word, w, is to be considered a possible misspelling of another word, w'; [L2] determining if at least one given word in said one or more documents satisfies a predefined misspelling criteria, wherein said predefined misspelling criteria comprises said at least one given word having a frequency below a predefined low threshold and said at least one given word being within the obtained maximum edit distance of one or more other words in said one or more documents having a frequency above a predefined high threshold; identifying a given word as a potentially misspelled word if said given word satisfies said predefined misspelling criteria; and [L3] maintaining a lexicon such that said lexicon will include said given word if said given word does not satisfj;, said predefined misspelling criteria and will exclude said given word if said given word satisfies said predefined misspelling criteria, wherein one or more of said steps are performed by a processor. (Emphasis added regarding the contested limitations, labeled as Ll-L3). 2 Appeal2014--003113 Application 11/673, 173 Claims 1-25 are rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combined teachings and suggestions of Wilbur et al. ("Spelling Correction in the PubMed search engine," published September 1, 2006), Wang et al. (US 2004/0210434 Al; published October 21, 2004) and Bordner et al. (US 2002/0099536 Al; published July 25, 2002). Contentions Regarding the rejection of claim 1, Appellants particularly contend, inter alia: The phrase "predefined misspelling criteria" is expressly defined in each independent claim as (i) "at least one given word having a frequency below a predefined low threshold and" (ii) "said at least one given word being within the obtained maximum edit distance of one or more other words in said one or more documents having a frequency above a predefined high threshold." These criteria correspond to (i) low_freq and (ii) near_dist in FIGS. 3 and 4. Generally, then, the predefined misspelling criteria deletes words from the lexicon only if they are (i) infrequent, and (ii) within an obtained maximum edit distance of other more frequent words in the documents. Wang, Wilbur and Bordner, alone or in any combination, do not disclose or suggest deleting words from the lexicon only if they are (i) infrequent, and (ii) within the obtained maximum edit distance of other more frequent words in the documents. As previously 1 We note the heading of the rejection (Final Act. 3, March 28, 2013) omits claims 20 and 23-25, although the Examiner provides a detailed statement of rejection for claims 20 and 23-25. (Final Act. 9-10). See also Final Act. Summary page: "Claims(s) 1-25 is/are rejected." Cf with Final Act. (2): "Claims 1-25 are pending ... Claims 1-22 are rejected." See Notice of Panel Decision from Pre-Appeal Brief Review (Aug. 8, 2013): "Claim(s) rejected: 1-25." We consider all rejected claims 1-25 before us on appeal. 3 Appeal2014--003113 Application 11/673, 173 indicated, Wang and Wilbur do not disclose an "obtained maximum edit distance," as acknowledged by the Examiner (see above). There is absolutely no notion in Bordner of using the maximum edit distance in comparison to "other words in said one or more documents having a frequency above a predefined high threshold." (App. Br. 5). Thus, even as combined, Wilbur et al., Wang and Bordner do not disclose or suggest deleting words from a lexicon if they satisfy a predefined misspelling criteria as "predefined misspelling criteria" is expressly defined by each independent claim. (App. Br. 6). ISSUES Issue: UnderÂ§ 103, did the Examiner err by finding the cited combination of Wilbur, Wang and Bordner would have taught or suggested at least limitation L2 of contested limitations L 1-L3: [L2] determining if at least one given word in said one or more documents satisfies a predefined misspelling criteria, wherein said predefined misspelling criteria comprises said at least one given word having a frequency below a predefined low threshold and said at least one given word being within the obtained maximum edit distance of one or more other words in said one or more documents having a frequency above a predefined high threshold; within the meaning of representative claim 1? (Emphasis and underline added.) ANALYSIS We focus our analysis on contested limitation L2, and need not reach contested limitations L 1 and L3 to decide this appeal. 4 Appeal2014--003113 Application 11/673, 173 The Examiner responds to Appellants' contentions regarding limitation L2, and refers generally to page 554 of Wilbur, and paragraph 201 of Bordner. (Ans. 3). The Examiner finds, and further explains (Ans. 3): this particular limitation [i.e., edit distance in combination with a frequency] was rejected in view of a combination including Wilbur and Wang, which both teach a fixed edit distance used in combination with a frequency threshold to judge the correctness of a word. Wilbur even acknowledges that the number of edits should be constrained for shorter words (Wilbur, p. 554), which is consistent with the teachings of Bordner of using a dynamic edit distance that is calculated based on the length of the string in question (Bordner i-f 201 ). We focus specifically on Appellants' argument relating to "one or more documents having a frequency above a predefined high threshold," as recited in contested limitation L2 of claim 1. (App. Br. 5, emphasis added). The Examiner (Ans. 3) refers to page 554 of Wilbur regarding a frequency threshold. (See also Final Act. 4, citing Wilbur, pp. 544, 553). However, no mention of a threshold appears on page 554 of Wilbur.2 Wilbur (553) refers to "high frequency string ('riboflavin')," but does not describe "a frequency above a predefined threshold" (claim 1 ), as alleged by the Examiner. (Page 553 was cited by the Examiner in the final rejection of claim 1). (See Final Act. 4). Instead, Wilbur refers, by way of example, to the selection of a correction word based on occurrences in a database of terms. Specifically, Wilbur, at page 553, describes: "In Stage 2 another OneEdit is tried on the 2 But cf Wilbur (554): "(C) Changes that produce a string of high frequency in the database are preferred over those of similar magnitude that do not." 5 Appeal2014--003113 Application 11/673, 173 correction and produces 'riboflavin' which occurs 7380 times in the database. In Stage 3, because of its high frequency in the database, 'riboflavin' is returned as the correction." However, in the sections cited by the Examiner (id.), we find no teaching or suggestion of "a frequency above a predefined high threshold," within the meaning of claim 1. We therefore find a preponderance of the evidence supports Appellants' argument there is no teaching in the cited references of "a frequency above a predefined high threshold," as recited in claim 1. (See App. Br. 5). Remaining independent claims 12 and 22 each recite contested limitation L2 in commensurate form. Therefore, for the aforementioned reasons, we reverse the Examiner's obviousness rejection of independent claims 1, 12, and 22 over the combination of Wilbur, Wang and Bordner. Because we have reversed the rejection of each independent claim on appeal, we also reverse theÂ§ 103 rejection of each associated dependent claim. 3 3 Regarding the "tangible machine readable recordable medium" of claim 22, we note the corresponding support in Appellants' Specification (p. 10, 11. 11-16): "The computer readable medium may be a recordable medium (e.g., floppy disks, hard drives, compact disks, or memory cards) or may be a transmission medium ( e g, a network comprising fiber-optics, the world- wide web, cables, or a wireless channel using time-division multiple access, code-division multiple access, or other radio-frequency channel). Any medium known or developed that can store information suitable for use with a computer system may be used." (Emphasis added). Therefore, under our jurisprudence, the scope of the recited "tangible machine readable recordable medium" of claim 22 appears to encompass transitory media. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) 6 Appeal2014--003113 Application 11/673, 173 Conclusion On this record, and by a preponderance of the evidence, we are persuaded the Examiner erred in rejecting claims 1-25 underÂ§ 103(a), for at least the reasons argued on page 5 of the Brief, as further discussed above. DECISION We reverse the Examiner's rejection of claims 1-25 underÂ§ 103(a). REVERSED (precedential) (holding recited machine-readable storage medium ineligible underÂ§ 101 since it encompasses transitory media). Accordingly, we leave it to the Examiner to consider a rejection under 35 U.S.C. Â§101 for at least claim 22, and associated dependent claim 25. Although the Board is authorized to reject claims under 37 C.F.R. Â§41.50(b ), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) Â§1213.02. In the alternative, the Examiner could remedy the aforementioned deficiency by adding "non-transitory" (by Examiner's amendment) to the "medium" of claim 22, if such amendment is authorized by Appellants. 7