Ex Parte Lee et al

Patent Trial and Appeal Board

Mar 16, 2017

12831607 (P.T.A.B. Mar. 16, 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.
12/831,607 07/07/2010 Hyunjung LEE 5540.115847 2768
24978 7590 03/20/2017
GREER, BURNS & CRAIN, LTD
300 S. WACKER DR.
SUITE 2500
CHICAGO, IL 60606
EXAMINER
SPOONER, LAMONT M
ART UNIT PAPER NUMBER
2657
NOTIFICATION DATE DELIVERY MODE
03/20/2017 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):
ptomail @ gbclaw. net
docket @ gbclaw. net
verify @ gbclaw. net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HYUNJUNG LEE, TAEIL KIM, HEE-CHEOL SEO,
and JI HYE LEE
Appeal 2014-003450
Application 12/831,607
Technology Center 2600
Before ST. JOHN COURTENAY III, MICHAEL J. STRAUSS, and
CATHERINE SHIANG, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2014-003450
Application 12/831,607
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—4, 7—13, and 16—20. Claims 5, 6, 14, and 15 are canceled. We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to transforming a Hanja character string into a
vernacular pronunciation using statistical features of the string. Abstract.
Claim 1, reproduced below, is representative of the claimed subject matter:
1 A system for providing Hanja-vernacular pronunciation
conversion, the system comprising:
a vernacular pronunciation extracting unit to extract a
vernacular pronunciation in response to receipt of a Hanja
character string;
a statistical data determining unit to determine statistical
data with respect to the Hanja character string by calculating a
syllable probability and a transition probability with respect to
syllables of the vernacular pronunciation related to the
conversion; and
a vernacular pronunciation transforming unit to transform
the Hanja character string into a vernacular pronunciation using
the extracted vernacular pronunciation and the determined
statistical data.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bai US 6,311,152 B1 Oct. 30,2001
Kang et al., Combination Approaches in Information Retrieval:
Words vs. N-grams and Query Translation vs. Document
Translation, Proceedings of the Fourth NTCIR Workshop
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Meeting, Cross-Lingual Information Retrieval Task, 2004,
pp. 1—8 (hereinafter “Kang”)
Halpem, Lexicon-Based Orthographic Disambiguation in CJK
Intelligent Information Retrieval, 2002, ACL, Vol. 12, pp.
1—7 (hereinafter “Halpem”)
REJECTIONS
The Examiner made the following rejections:
Claims 1—9 stand rejected under 35U.S.C. § 112, sixth paragraph,
because “the written description fails to disclose the corresponding stmcture,
material, or acts for the claimed function.” Final Act. 5.
Claims 1, 2, 7—11, and 16—20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bai and Kang. Final Act. 6—11.
Claims 3, 4, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bai, Kang, and Halpem. Final Act. 11—14.
APPELLANTS’ CONTENTIONS
1) In connection with the rejection under 35 U.S.C. § 112, Appellants
contend
a) Because claim 1 does not use the phrase “means for” or “step for,”
there is a presumption 35 U.S.C. § 112, sixth paragraph, does not
apply. Br. 6—8.
b) Even if interpreted under 35 U.S.C. § 112, sixth paragraph, “the
claims are still definite as the corresponding algorithms of the units
... are described in detail.” Br. 8 (parenthetical references to
Application omitted).
2) In connection with the rejections under 35 U.S.C. § 103(a), Appellants
contend
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a) “The Examiner fails to provide a factual basis to support the
obviousness conclusion” (Br. 9) such that “the Examiner’s lack of
discussion renders the rejections fatally deficient, as failing to satisfy
35 U.S.C. § 132 (a)” (Br. 11).
b) Bai discloses an input of an ideographic language, such as Korean, not
the claimed Hanja character string. Br. 12.
c) “An ordinarily skilled artisan would not equate the claimed ‘extract a
vernacular pronunciation’ to ‘input sentence and subsequent
information extracted, as the Examiner asserted [to be disclosed by
Bai].” Id.
d) “The Examiner appears to ignore qualified claim words e.g., ‘by
calculating a syllable probability and a transition probability with
respect to syllables of the vernacular pronunciation related to the
conversion’” in finding Bai’s disclosure of a module for deriving an
entity finite state grammar (FSG), which produces or recognizes
certain kinds of syllable sequences and models using a Hidden
Markov Model (HMM), teaches or suggests the disputed limitation.
Id.', see also Bai col. 5,1. 45 — col 6,1. 8.
e) Bai’s word sequence “cannot reasonably be interpreted [as the ]
claimed ‘vernacular pronunciation.’” Id.
f) “Bai and Kang are silent with respect to the problems discovered by
Appellants.” Br. 13.
ISSUES ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (Br. 5—14) the
issues presented on appeal are:
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1. Whether the rejection under 35 U.S.C. § 112, sixth paragraph, is
proper.
2. Whether the Examiner erred in finding the combination of Bai and
Kang teaches or suggests the disputed limitation of the independent
claims.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. In connection with the rejection
under 35 U.S.C. § 112, we conclude the record is not sufficiently developed
to sustain a rejection. In connection with the rejections under 35 U.S.C.
§ 103(a), we disagree with Appellants’ conclusions and adopt as our own (1)
the findings and reasons set forth by the Examiner in the action from which
this appeal is taken (Final Act. 4, 6—14; Advisory Action mailed May 2,
2013, pp. 3—7) and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 13—18)
and concur with the conclusions reached by the Examiner. We highlight the
following for emphasis.
35 U.S.C. §112
Contention 1(a)
Appellants argue, absent use of the phrase “means for” or “step for”,
there is strong presumption 35 U.S.C. § 112, | 6, does not apply to the
interpretation of the claims. Br. 6—8. Appellants rely on Lighting World,
Inc. v. BirchwoodLighting, Inc., 382 F.3d 1354, 1358 (2004) and Inventio
AGv. ThyssenKrupp Elevator Ams. Corp., 649 F.3d 1350, 1357 (Fed. Cir.
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2011) for concluding the presumption created by the absence of the phrase
“means for” is a strong one that is not readily overcome. Br. 6.
Claim 1 recites three “unit[s]”, the name of each unit (e.g., “a
vernacular pronunciation extracting unit”) corresponding to a function to be
performed by the “unit” (e.g., “to extract a vernacular pronunciation in
response to receipt of a Hanja character string”). These limitations do not
include the word “means,” thus, a rebuttable presumption exists these
limitations are not means-plus-function limitations. Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). This presumption can
be overcome if the limitation “fails to recite sufficiently definite structure or
else recites function without reciting sufficient structure for performing that
function.” Id. at 1349 (citation and internal quotation marks omitted).
Contrary to Appellants argument (Br. 6), the presumption is not a “strong”
one.1 As used herein, the term “means for” is replaced by the “nonce
word”2 “unit” thereby connoting one or more generic “black boxes” for
1 Since the filing of Appellants’ Brief, the Federal Circuit has overruled the
strong presumption that a limitation lacking the word “means” is not subject
to § 112, | 6. Williamson, 792 F.3d at 1349.
2 Although termed a “nonce word”, we recognize this characterization is
somewhat inaccurate, the common meaning being “a word invented and
used for a particular occasion.” Morris, W., The American Heritage
Dictionary of the English Language, 892. Houghton Mifflin Company
(1981). However, the word “unit” does have a generally accepted meaning
including “an entire apparatus or the equipment that performs a specific
function.” Id at 1400. Thus, while not a made-up word, on the present facts
the word “unit” at most restricts the preceding functional language to an
apparatus but not to a particular structure (cf “a window-mounted air
conditioning unit”). Instead, the word “unit” is merely a transition between
a shortened description of a function to be performed (e.g., vernacular
pronunciation extracting) and the corresponding full description of that
function (e.g., apparatus “to extract a vernacular pronunciation in response
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performing all of the intended functions recited in claim 1. We are not
persuaded a person of ordinary skill in the art would understand what any of
the claimed “units” are other than something that provides the described
functionality and Appellants have not provided us with any factual evidence
indicating otherwise. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(Mere attorney argument is “not the kind of factual evidence that is required
to rebut a prima facie case of obviousness”); In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984) (explaining arguments of counsel cannot take the place
of factually supported objective evidence). Applying the guidance of
Williamson, 792 F.3d at 1350-51, here, we conclude “unit” may be
interpreted as a nonce word substituting for the term “means” and claim 1
and the claims dependent therefrom are to be interpreted under 35 U.S.C.
§112,16.
Contentions 1 (b)
Having concluded claim 1 is to be interpreted under 35 U.S.C. § 112,
1 6, the scope of these limitations is thusly defined by the respective
structures disclosed in the specification and equivalents of those structures.
Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1331
(Fed. Cir. 2008). Therefore, a determination must be made whether
Appellants’ written description contains corresponding structure for the
respective limitations. Cf. id. at 1331. In computer-implemented inventions
such as the one at issue, see, e.g., Spec. 133, the corresponding structure
to receipt of a Hanja character string”). Thus, as used in claim 1, the term
“unit” is a “non-structural generic placeholder” that is tantamount to the
term “means” because it fails to connote sufficiently definite structure (i.e., a
“nonce word”). Cf. Williamson 792 F.3d at 1350.
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must include an “algorithm that transforms [a] general purpose
microprocessor to a special purpose computer programmed to perform the
disclosed algorithm.” Aristocrat Techs., 521 F.3d at 1338 (citation and
internal quotation marks omitted).
The Examiner concludes “claim [1] is clearly indefinite as the claim
scope is indefinite, wherein the Examiner is unable to make a determination
based on the claim and original disclosure of the applicant, what the
corresponding structure is, i.e. a ‘vernacular pronunciation unit’, a ‘statistical
data determining unit’, a ‘vernacular pronunciation transforming unit.’”
Final Act. 3. Appellants argue “the claims are still definite as the
corresponding algorithms of the units (e.g., a vernacular pronunciation
extracting unit) are described in detail, (see, e.g., FIG. 2 and paragraphs
[0036-0045])” Br. 8.
“If there is no structure in the specification corresponding to the
means-plus-function limitation in the claims, the claim will be found invalid
as indefinite.” Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950
(Fed. Cir. 2007).
Thus, if a claim is determined to be subject to interpretation under 35
U.S.C. § 112, | 6 as a “means plus function” claim, a failure of the written
description to contain corresponding structure for the respective limitations
should result in a rejection under 35 U.S.C. § 112,12, not under | 6. Here,
the Examiner has only specified a rejection under 35 U.S.C. § 112, | 6, not
under 35 U.S.C. § 112,12. Accordingly, we find the Examiner has not fully
developed the record regarding the issue of indefmiteness, because the
Examiner’s rejection on the basis of § 112, sixth paragraph is not the
appropriate rejection.
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Thus, because 35 U.S.C. § 112, | 6 standing alone cannot be a basis of
a rejection and there is no rejection under 35 U.S.C. § 112,12, we do not
sustain the “rejection” under 35 U.S.C. § 112, | 6.
35 U.S.C. § 103(a)
Contention 2(a)
Appellants argue the Examiner has failed to indicate where specific
limitations of the claims are found in the Bai and Kang references. Br. 10—
11. In particular, according to Appellants, the Examiner has failed to set
forth a prima facie case of obvious and the rejection is deficient as failing to
satisfy the notification requirements of 35 U.S.C. § 132. Br. 11.
The Examiner’s burden of establishing a prima facie case is met by
“adequately explaining] the shortcomings [the USPTO] perceives so that
the applicant is properly notified and able to respond.” Hyatt v. Dudas, 492
F.3d 1367, 1370 (Fed. Cir. 2000). In reviewing the record, we find the
Examiner has met the notice requirement of 35 U.S.C. § 132 by providing a
detailed statement of rejection with sufficiently clear mappings and
explanations. Final Act. 6—14, Advisory Action 5—7. We note it is only
“when a rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection” that the prima
facie burden has not been met and the rejection violates the minimal
requirements of 35 U.S.C. § 132. Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990). Therefore, for the reasons supra, Appellants’ contention
2(a) is unpersuasive of Examiner error.
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Contention 2(b)
Appellants argue Bai is deficient because the reference teaches
Korean as input, not a Hanja character string. Br. 12. This argument is
unpersuasive because it fails to address the Examiner’s finding that Kang,
not Bai, teaches Hanja-vernacular pronunciation conversion and the
conversion of Hanja characters into Hangul. Final Act. 8 (citing Kang p. 3,
§ 2.2). “Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (citingIn reKeller, 642 F.2d413, 425 (CCPA 1981)).
Contention 2(c)
Appellants argue Bai’s disclosure of input sentence and subsequent
information extraction fails to teach the claimed limitation of “extract[ing] a
vernacular pronunciation” of claim 1. Br. 12. The Examiner responds by
finding Bai’s syllable sequences, feature extraction and subsequent
information extraction teaches or suggests the disputed limitation of a
vernacular pronunciation extracting unit to extract a vernacular
pronunciation in response to receipt of a Hanja character string. Final Act.
7, Ans. 14.
When construing claim terminology during prosecution before the
Office, claims are to be given their broadest reasonable interpretation
consistent with the specification, reading claim language in light of the
specification as it would be interpreted by one of ordinary skill in the art.
In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
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Here, we are not persuaded by Appellants’ arguments asserting lack of
sufficient evidence or reasoningby the Examiner. . In particular, other than
making the naked assertion Bai’s teachings are not equivalent to the disputed
limitation (Br. 12), Appellants do not provide evidence in support of their
conclusion3 or explain why Bai’s production of syllable sequences and
extraction of features and information fails to teach or suggest the disputed
limitation of vernacular pronunciation extraction. Our rules requires more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art. 37 C.F.R. § 41.37(c)(l)(iv); see also In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011). Therefore, for the reasons discussed
supra, Appellants’ contention 2(c) is unpersuasive of Examiner error.
Contention 2(d)
Appellants argue “[t]he Examiner appears to ignore qualified claim
words [of claim 1] e.g., ‘by calculating a syllable probability and a transition
probability with respect to syllables of the vernacular pronunciation related
to the conversion’” in finding Bai’s syllable recognition and use of a Hidden
Markov Model (HMM) teaches or suggests the disputed limitation. Br. 12.
However, once again, Appellants fail to provide sufficient evidence or
technical explanation in support of their contention. In particular, other than
the unsupported conclusory statement, Appellants do not explain why the
3 It is well settled that mere attorney arguments and conclusory statements,
which are unsupported by factual evidence, are entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not
evidence).
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cited disclosures of Bai are insufficient under a broad but reasonable
interpretation of the disputed claim language. For example, Appellants do
not address why Bai’s use of a HMM, which is “a statistical Markov
model”4 fails to teach or suggest calculating the recited syllable and
transition probabilities. Therefore, in the absence of sufficient evidence or
substantive argument (see 37 C.F.R. § 41.37(c)(l)(iv)) Appellants’
contention 2(d) is unpersuasive of Examiner error.
Contention 2(e)
Appellants’ contention 2(e) is unpersuasive for lack of sufficient
supporting evidence or technical explanation. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Contention 2(f)
Appellants argue Bai and Kang fail to appreciate the “problems
associated with the same Hanja character with two or more pronunciations”
to which Appellants’invention is directed. Br. 12—13. Such argument is
unpersuasive of Examiner error because, inter alia, the argued feature of
multiple Hanja character pronunciations is not required by the argued claim
limitations. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations
not appearing in the claims cannot be relied upon for patentability).
4 “Hidden Markov model.” Wikipedia. March 06, 2017. Last visited March
13, 2017. Available at https://en.wikipedia.org/wiki/Hidden_Markov_model
(“A hidden Markov model (HMM) is a statistical Markov model in which
the system being modeled is assumed to be a Markov process with
unobserved (hidden) states. ... In a hidden Markov model, the state is not
directly visible, but the output, dependent on the state, is visible. Each state
has a probability distribution over the possible output tokens.”)
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Furthermore, in connection with the Examiner’s determination of
obviousness, we note the reason to modify a reference may often prompt a
person of ordinary skill in the art to do what the inventor has done, but for a
different purpose or to solve a different problem; it is not necessary that the
prior art suggest the modification to achieve the same advantage or result
discovered by an applicant. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006).
In the absence of persuasive evidence or argument to the contrary, we find
the Examiner has articulated reasoning with rational underpinnings
sufficient to justify the legal conclusion of obviousness. See Final Act. 8—9;
see also Kahn, 441 F.3d at 988 (cited with approval in KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)).
Summary
For the reasons discussed supra in connection with the rejection under
35 U.S.C. § 103(a), we are unpersuaded of Examiner error. Accordingly, we
sustain the rejection of independent claim 1 and, for the same reasons,
independent claims 10 and 20 under 35 U.S.C. § 103(a) over Bai and Kang
together with the rejections of dependent claims 2, 7—11, and 16—19, which
are not separately argued with particularity. We further sustain the rejection
of dependent claims 3, 4, 12, and 13 under 35 U.S.C. § 103(a) over Bai,
Kang, and Halpem, as these dependent claims also are not separately argued
with particularity.
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CONCLUSIONS
The rejection under 35 U.S.C. 112, sixth paragraph, is improper and is
reversed.
Appellants’ arguments fail to persuade us the Examiner erred in
finding the combination of Bai and Kang teach or suggest the disputed
limitation of the independent claims and we affirm the rejections under 35
U.S.C. § 103(a).
DECISION
We affirm the Examiner’s decision rejecting claims 1—4, 7—13, and
16-20.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
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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