Ex Parte Heck et al

Patent Trial and Appeal BoardJul 26, 2018

13077233 (P.T.A.B. Jul. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/077,233 03/31/2011 27488 7590 07/30/2018 MERCHANT & GOULD (MICROSOFT) P.O. BOX 2903 MINNEAPOLIS, MN 55402-0903 FIRST NAMED INVENTOR Larry Paul Heck 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. 14917.1629US01/331058.0l 5209 EXAMINER KAZEMINEZHAD, FARZAD ART UNIT PAPER NUMBER 2657 NOTIFICATION DATE DELIVERY MODE 07/30/2018 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): USPT027 488@merchantgould.com usdocket@microsoft.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LARRY PAUL HECK, MADHUSUDAN CHINTHAKUNTA, DAVID MITBY, and LISA STIFELMAN Appeal2018-001879 Application 13/077,233 1 Technology Center 2600 Before ALLEN R. MacDONALD, HUNG H. BUI, and AARON W. MOORE, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-20, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 2 1 According to Appellants, the real party in interest is Microsoft Corporation. App. Br. 3. 2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed June 12, 2017; Examiner's Answer ("Ans.") mailed August 4, 2017; Final Office Action ("Final Act.") mailed November 10, 2016; and original Specification ("Spec.") filed March 31, 2011. Appeal2018-001879 Application 13/077,233 STATEMENT OF THE CASE Appellants' invention relates to "[ c ]onversational dialog learning and correction." Abstract. Claims 1, 10, and 20 are independent. Representative claim 1 illustrates Appellants' invention, as reproduced below: 1. A computer-implemented method for providing conversational learning and correction, the method comprising: [ 1] receiving, at a computing device, a natural language phrase from a first user; [2] identifying at least one second user associated with the natural language phrase; [3] creating, using the computing device, a context state based at least in part on a relationship between the first user and the at least one second user, wherein the relationship is one of: a friend relationship, a work relationship, and a family relationship; [ 4] translating, using the computing device, the natural language phrase into a suggested action based at least in part on the context state; [5] providing the suggested action to the first user; [ 6] receiving a correction to the suggested action from the first user; [7] updating the context state according to the received correction; [8] receiving, at the computing device after a predetermined period of time, a second natural language phrase from the first user; [9] identifying the second user; [ 10] identifying the context state associated with the second user; [ 11] translating the second natural language phrase into a second suggested action based at least in part on the context state; and [12] providing the second suggested action to the first user. 2 Appeal2018-001879 Application 13/077,233 App. Br. 28 (Claims App'x) (bracketing added). Evidence Considered Cha et al. US 2011/0105190 Al Horvitz US 2007/0136068 Al Gadd et al. US 2005/0033582 Al EXAMINER'S REJECTIONS May 5, 2011 June 14, 2007 Feb. 10,2005 (1) Claims 1-20 stand rejected under 35 U.S.C. Â§ 112(a) as failing to comply with the written description requirement. Final Act. 6-8. (2) Claims 1-20 stand rejected under 35 U.S.C. Â§ 112(b) as being indefinite. Final Act. 8-10. (3) Claims 1-11, 13-17, and 20 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Horvitz and Cha. Final Act. 10-30. (4) Claims 12, 18, and 19 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Horvitz, Cha, and Gadd. Final Act. 31-33. (5) Claims 1 and 10 stand rejected on the ground ofnonstatutory double patenting as being unpatentable over claims 1 and 10 of co-pending application No. 13/076,862. Final Act. 33-37. ( 6) Claim 1 stands rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of co-pending application No. 13/077,431. Final Act. 37-38. ANALYSIS At the outset, we note Appellants do not address the non-statutory obviousness-type double patenting rejections of (1) claims 1 and 10 based on claims 1 and 10 of co-pending application No. 13/076,862; and (2) claim I 3 Appeal2018-001879 Application 13/077,233 based on claim 1 of co-pending application No. 13/077 ,431. App. Br. 26. As such, the rejections of these claims on the ground of non-statutory obviousness-type double patenting are sustained proforma. However, a terminal disclaimer can be filed once a claim in either application is allowed. 35 US.C. Â§ l l 2(a): Claims 1-20 In support of theÂ§ 112(a) rejection, the Examiner finds the limitations: (1) "receiving, at the computing device after a predetermined period of time, a second natural language phrase from the first user" recited in claim 1, 3 and (2) "receiving, after a predetermined period of time, fl: second spoken natural language phrase from the first user" recited in claims 10 and 20 are not disclosed or supported in Appellants' Specification. Final Act. 6-8. In particular, the Examiner asserts (1) nowhere in the original Specification is there any disclosure of a "'predetermined period of time' defined to characterize a period between reception of 'natural language phrase[s]"' and (2) Figure 2B and paragraph 16 of the Specification fail to describe any "predetermined period of time." Final Act. 6-8. Appellants contend the Examiner erred because paragraphs 16 and 20 of Appellants' Specification describe ( 1) the context associated with a first user and a second user; (2) "the agent may learn to associate such updates with conversations between these two users and may remember them for use 3 The limitation "the relationship is one of: a friend relationship, a work relationship, and a family relationship" recited in claims 1, 10, and 20 was also found without any written description support (Final Act. 6). However, the Examiner withdrew the Â§ 112(a) rejection regarding that limitation. As such, we need not address Appellants' arguments regarding that limitation (Ans. 2). 4 Appeal2018-001879 Application 13/077,233 in future conversations" (Spec. ,r 16); (3) "[ s ]uch a context state may comprise details of previous interactions between the two users, such as prior meetings, communications, speech habits, and/or preferences" (Spec. ,r 20) and, as such, (3) suggest support for the phrase "after a predetermined period of time" between (A) "receiving, at a computing device, a natural language phrase from a first user" and (B) "receiving, at the computing device ... , a second natural language phrase from the first user" as recited in claim 1. App. Br. 19 ( citing Spec. ,r,r 16, 20). In response, the Examiner maintains the position that paragraphs 16 and 20 of Appellants' Specification "simply imply 'certain associa[tions]' with a 'conversation' 'may be remember[ed]' 'for future,"' but are otherwise "silent on the specifics of those 'associat[ions]"' and "any specific length of times (i.e., 'predetermined' 'period') into the 'future' that they 'may be' 'remembered."' Ans. 3-5. We agree with the Examiner. At the outset, we note the written description requirement under 35 U.S.C. Â§ 112(a) requires Appellants to "reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). "[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology." Id. In some cases, "drawings alone may provide a 'written description' of an invention as required byÂ§ 112." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991). Regardless, the disclosure must convey with reasonable 5 Appeal2018-001879 Application 13/077,233 clarity to those skilled in the art that the inventor was in possession of the invention. Id. at 1563-1564. As correctly recognized by the Examiner, [ n Jo where in the original disclosure one can find any specific or "predetermined" "period of time" defined between two subsequent conversations of the same user before which a conversation is not allowed by not accepting "a second spoken natural language" and after which the conversation is allowed by accepting "a second spoken natural language." Ans. 3--4. For example, Appellants' Figure 3 shows, and Appellants' Specification describes the claimed "method for providing conversational learning and correction" starting with ( 1) "receiving . . . a natural language phrase from a first user" (see Fig. 3, step 31 O; Spec. ,r 18); (2) "identifying at least one second user associated with the natural language phrase" (see Fig. 3, step 315; Spec. ,r 19); (3) "creating ... a context state based at least in part on a relationship between the first user and the at least one second user" (see Fig. 3, step 325; Spec. ,r 20); (4) "translating ... the natural language phrase into a suggested action based at least in part on the context state" (see Fig. 3, steps 335, 340; Spec. ,r 23); (5) "providing the suggested action to the first user" (see Fig. 3, step 345; Spec. ,r 24); (6) "receiving a correction to the suggested action from the first user" (see Fig. 3, step 350; Spec. ,r 25); and ending with (7) "updating the context state according to the received correction" (see Fig. 3, step 355; Spec. ,r,r 27-28). Contrary to Appellants' arguments, paragraphs 16 and 20 of Appellants' Specification merely describe how the "context state" can be updated "with conversations between these two users" and such updates can be remembered "for use in future conversations." See Spec. ,r,r 16, 20. 6 Appeal2018-001879 Application 13/077,233 Neither Appellants' Figure 3 nor Appellants' Specification describes any repetitive or continuous process beginning with (8) "receiving ... after a predetermined period of time, a second natural language phrase from the first user"; (9) "identifying the second user"; (10) "identifying the context state associated with the second user"; (11) "translating the second natural language phrase into a second suggested action based at least in part on the context state"; and ending with (12) "providing the second suggested action to the first user." (Emphasis added). As such, we agree with the Examiner that Appellants' Specification does not provide any written description support for any specific or "predetermined period of time" defined between two conversations between the same user. Ans. 3-5. In addition, we also find Appellants' Specification fails to provide written description support for any repetitive process recited in Appellants' claim 1 beginning with (8) "receiving ... after a predetermined period of time, a second natural language phrase from the first user"; (9) "identifying the second user"; (10) "identifying the context state associated with the second user"; (11) "translating the second natural language phrase into a second suggested action based at least in part on the context state"; and ending with (12) "providing the second suggested action to the first user." These limitations were added in the Amendment filed on August 18, 2016, but Appellants never provided support for these limitations. In the Appeal Brief, Appellants refer paragraphs 18-23 of the Specification for support. However, the cited paragraphs 18-23 of Appellants' Specification only provide written description support for steps ( 1 }-(7) of the claimed "method for providing conversational learning and correction," but not steps 7 Appeal2018-001879 Application 13/077,233 (8}-(12) of Appellants' claim 1 and, certainly, not any type of continuity or transition from step (7) to step (8) of Appellants' claim 1. Because Appellants have not shown that there is sufficient structure and description in the specification as filed, we sustain the Â§ 112(a) rejection of claims 1-20 for failure to comply with the "written description" requirement. 35 US.C. Â§ l 12(b): Claims 1-20 The Examiner finds claim 1 indefinite due to redundancy between steps (8}-(12) and steps (1 }-(7). In particular, the Examiner finds the 9th step of "identifying the second user" is redundant from the 2nd step of "identifying at least one second user associated with the natural language phrase" because the second user has already been identified, unless "the 'second user' in the two limitations do not refer to the same person." Final Act. 8. Similarly, the Examiner finds "the combination of 'creating' and 'updating' 'the context state' amounts to its identification, which also implies the 10th limitation is reciting a redundant step, unless 'the context state' associated with the two differ." Final Act. 8-9. Appellants argue (1) the 2nd step and the 9th step of claim 1 are "not redundant" because the 2nd step requires "identifying at least one second user associated with the natural language phrase" whereas the 9th step only requires "identifying the second user"; and (2) the Examiner has conflated the "creating," "updating," and "identifying" steps of claim 1. App. Br. 20. Appellants' arguments are not persuasive. Instead, we find the Examiner has provided a comprehensive response to Appellants' arguments supported by a preponderance of evidence. Ans. 5-7. Therefore, we adopt 8 Appeal2018-001879 Application 13/077,233 the Examiner's findings and explanations provided therein. To the extent that claim 1 and, similarly, claims 10 and 20 can be understood, these claims are indefinite for the reasons discussed by the Examiner. Accordingly, we sustain the Examiner's rejection of claims 1-20 under 35 U.S.C. Â§ 112(b ). 35 USCÂ§ 103(a): Claims 1-11, 13-17, and 20 In support of the obviousness rejection of claim 1 and similarly, claim 20, and to the extent claims 1 and 20 can be understood given the 35 U.S.C. Â§ 112(a) andÂ§ 112(b) problems identified above, the Examiner finds the combination of Horvitz and Cha teaches all the claim limitations. Final Act. 10-15, 25-30. For example, the Examiner finds Horvitz teaches most aspects of Appellants' method claim 1, including steps (1 }-(7). Final Act. 10-13 (citing Horvitz ,r,r 14, 50-52, 57, 61, 67). The Examiner then relies on Cha for teaching the remaining steps (8}-(12) of Appellants' claim 1 to support the conclusion of obviousness. Final Act. 14--15 (citing Cha ,r 167, Figs. 9A-9B). Appellants dispute the Examiner's factual findings regarding Horvitz. App. Br. 21-25. In particular, Appellants acknowledge Horvitz teaches (1) "a language translation system that translates speech between two people who do not speak the same language" and (2) using a context interpretation component to process "context data, such as, for example, dishes, candles, and food, in order for the system to apply the appropriate restaurant language model for the translation." App. Br. 22-23 ( citing Horvitz ,r,r 33, 34, 36, 40). However, Appellants contend Horvitz's "context" refers to a "physical location in which the users are located" and "is not a context state that is based on a relationship between users, such as a friend relationship, a 9 Appeal2018-001879 Application 13/077,233 work relationship, and a family relationship" as recited in claim 1. App. Br. 23 (emphasis added, Appellants' emphasis omitted). As such, Appellants argue Horvitz does not teach or suggest "receiving a correction to the suggested action from the first user; [ and] updating the context state according to the received correction" as recited in claim 1. App. Br. 23. Appellants also argue "Cha fails to overcome these deficiencies of Horvitz" because Cha is only "directed to a mobile terminal that can receive voice inputs and translate that input to text." App. Br. 24 (citing Cha ,r,r 3, 161, Figs. 9A-9B). Appellants' arguments are not persuasive. Rather, we find the Examiner has provided a comprehensive response to Appellants' arguments supported by a preponderance of evidence. Ans. 5-11. Therefore, we adopt the Examiner's findings and explanations provided therein. At the outset, we note Horvitz's context data is not limited to a "physical location in which the users are located" as Appellants argue. App. Br. 23. Instead, Horvitz teaches that "context data" can also include, but not limited to: recent activity by people (e.g., language of an utterance heard within some time horizon, recent gesture, recent interaction with a device or object, ... ), recent activity by machines being used by people ( e.g., support provided or accepted by a person, failure of a system to provide a user with appropriate information or services, ... ), geographical information (e.g., geographical coordinates), events in progress in the vicinity ( e.g., sporting event, rally, carnival, parade, . . . ), proximal structures, organizations, or services ( e.g., shopping centers, parks, bathrooms, hospitals, banks, government offices, . . . ), and characteristics of one or more of the people in the context ( e.g., voice signals, relationship between the people, color of skin, attire, body frame, hair color, eye color, facial structure, biometrics, ... ), just to name a few types of the context data. 10 Appeal2018-001879 Application 13/077,233 Horvitz ,r,r 7, 34 ( emphasis added). Horvitz also teaches that ( 1) "context data" can be updated to process communications between users based on feedback (in the form of questions and answers posed to participants in the communication session or body language of a participant in response to a question or a statement ( e.g., nodding or shaking of the head, eye movement, lip movement); and (2) "context data" can be used to facilitate conversions between users. Horvitz ,r,r 37-38, 40-42, 50-52. As such, we agree with the Examiner that Horvitz teaches the disputed limitations: "creating, using the computing device, a context state based at least in part on a relationship between the first user and the at least one second user, wherein the relationship is one of: a friend relationship, a work relationship, and a family relationship;" "receiving a correction to the suggested action from the first user;" and "updating the context state according to the received correction" as recited in claim 1. Because Appellants' arguments do not persuade us of Examiner error, we sustain the Examiner's obviousness rejection of independent claims 1, 10, and 20, and their respective dependent claims 2-9, 11, and 13-17. For the same reasons discussed, we also sustain the Examiner's remaining obviousness rejection of claims 12, 18, and 19 as obvious over Horvitz, Cha, and Gadd. 11 Appeal2018-001879 Application 13/077,233 CONCLUSION On the record before us, we conclude Appellants have not demonstrated the Examiner erred in rejecting: (1) claims 1-20 under 35 U.S.C. Â§ 112(a) as failing to comply with the written description requirement; (2) claims 1-20 under 35 U.S.C. Â§ 112(b) as being indefinite; and (3) claims 1-20 under 35 U.S.C. Â§ 103(a). DECISION As such, we AFFIRM the Examiner's rejections of (I) claims 1-20 under 35 U.S.C. Â§ 112(a) as failing to comply with the written description requirement; (2) claims 1-20 under 35 U.S.C. Â§ 112(b) as being indefinite; and (3) claims 1-20 under 35 U.S.C. Â§ 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 12