Ex Parte Kirshenbaum

Patent Trial and Appeal Board

Nov 21, 2012

11700465 (P.T.A.B. Nov. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte EVAN R. KIRSHENBAUM
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Appeal 2010-006115
Application 11/700,465
Technology Center 2600
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Before JOSEPH L. DIXON, THU A. DANG, and
JAMES R. HUGHES, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 8-15, and 18-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appeal 2010-006115
Application 11/700,465

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STATEMENT OF THE CASE
Appellant’s claimed invention is a computer executable method
includes receiving word senses associated with respective definitions, and
providing a position-based dictionary that assigns the word senses to
respective semantic positions in a semantic space.
Independent claims 1 and 13, reproduced below, are representative of
the subject matter on appeal.
1. A method executable by a computer, comprising:

receiving word senses associated with respective
definitions, wherein each of the definitions includes one or
more words; and

providing a position-based dictionary that assigns the
word senses to respective semantic positions in a semantic
space, wherein the semantic positions of the word senses are
related to each other based upon words contained in the
respective definitions of the word senses.

13. A method executable by a computer, comprising:

receiving definitions of word senses provided by at least
a first dictionary;

based on the received definitions, constructing a graph
having nodes representing at least some of the word senses, the
graph further having edges connecting the nodes to represent
relationships between the respective word senses; and

producing a position-based dictionary based on the
graph, the position-based dictionary assigning semantic
positions in a semantic space to respective word senses.

Appeal 2010-006115
Application 11/700,465

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REFERENCE and REJECTION
The Examiner rejected claims 1-3, 8-15, and 18-20 under 35 U.S.C.
§ 102(b) based upon the teachings of Mao (U.S. Patent Application
Publication Number 2003/0177000 A1, published September 18, 2003).
(Ans. 3-6.)

ANALYSIS
The Examiner has indicated that claim 7 is allowable over the prior
art. (Ans. 6).
The Examiner has indicated that claims 4-6, 16, 17, 21, and 22 are
objected to as being depended upon a rejected base claim but would be
allowable if rewritten in independent form including all the limitations of the
base claim and any intervening claims. (Ans. 7).
In response to the Examiner's Answer, Appellant did not file a Reply
Brief, but elected to file an After Final amendment, on December 1, 2009.
The Examiner denied entry of the After Final amendment and indicated that
the amendment did not place the application in condition for allowance since
claims 1-3, 8-15, and 18-20 were still on appeal. Therefore, we address the
claims as filed in the claims appendix to the Appeal Brief.
With respect to the provisional non-statutory obviousness-type double
patenting rejection of claims 1, 13, and 18, the Examiner indicates that
Appellant's arguments are persuasive and the rejection has been withdrawn
by the Examiner. (Ans. 8).
With respect to the rejection of claims 21 and 22 under
35 U.S.C. §112, second paragraph, the Examiner indicates that Appellant's
arguments are persuasive, and the Examiner has withdrawn the rejection.
Appeal 2010-006115
Application 11/700,465

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35 U.S.C. §102
With respect to the Examiner's rejection of claims 1-3, 8-15, and 18-
20, the Examiner finds Appellant's arguments to be unpersuasive. First,
Appellant sets forth arguments for independent claim 13 which include
limitations with respect to "constructing a graph" and details thereof and use
of the graph. (App. Br. 6-10) Second, Appellant sets forth brief arguments
with respect to independent claims 1 and 18. (App. Br. 10). The Examiner
spends a majority of the responsive arguments addressing the "graph"
limitation of independent claim 13 (Ans. 9-11), but the Examiner does not
clearly address the merits of Appellant's arguments with respect to
independent claims 1 and 18 which do not have the "graph" limitation.
Therefore, we find that the Examiner has not addressed these limitations and
has not addressed substantively Appellant's contentions with respect to
independent claims 1 and 18.
With respect to independent claim 13, in the responsive arguments,
the Examiner repeatedly uses the term "implies" (Ans. 10 and 11) in an
attempt to bolster the lack of an express teaching of a "graph." We note that
the rejection is based upon anticipation and the limitations must be expressly
described by the reference or necessarily be present. Therefore, the
Examiner's speculation is inappropriate and such conjecture would require
us to resort to speculation, unfounded assumptions, or hindsight
reconstruction. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). We
will not resort to such speculation or assumptions to cure the deficiencies in
the factual basis in order to support the Examiner’s anticipation rejection.
Appeal 2010-006115
Application 11/700,465

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Additionally, we note that the Examiner identifies paragraph [00013]
(Ans. 11), in addition to paragraphs [0019], [0020], [0052], and [0061]
(Ans. 4), which refers to the "related art" section of the Mao reference.
Therefore, the Examiner's reliance upon this portion of the reference in
addition to the other sections does not evidence that the claimed invention
was described by the Mao reference for an anticipation rejection. With
respect to the rejection of independent claim 13, we find the Examiner's
reliance upon the "tree representation" in the Mao reference to be
unreasonable with respect to the claimed "constructing a graph" limitation.
Therefore, we cannot sustain the rejection of independent claim 13.
Independent claims 1 and 18 do not have the "constructing a graph"
limitation. The Examiner again relies upon paragraphs 19, 20, and 61 of the
Mao reference. (Ans. 3). Appellant contends that "Although Mao refers to
creating definition vectors for corresponding word senses, it is noted that
Mao provides no hint of relating semantic positions of word senses to each
other based upon words contained in respective definitions of the word
senses". (App. Br. 10). Appellant summarizes and contrasts the teachings
of these three paragraphs relied upon by the Examiner (App. Br. 10), but the
Examiner does not address Appellants' contentions in the responsive
arguments. (Ans. 10-12). From our review of the limited citations by the
Examiner, we agree with Appellant that the Examiner has not shown that
Mao reference describes the invention as recited in the language of
independent claims 1 and 18. Therefore, we find that the Examiner has not
made the requisite showing for anticipation.

Appeal 2010-006115
Application 11/700,465

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CONCLUSION
The Examiner erred in rejecting independent claims 1, 13, and 18
under 35 U.S.C. §102. Therefore, we cannot sustain the rejection of
dependent claims 2, 3, 8- 12, 14, 15, 19, and 20.

DECISION
The Examiner’s decision rejecting claims 1-3, 8-15, and 18-20 is
reversed.

REVERSED

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