Ex Parte Nelken et al

Patent Trials and Appeals BoardMay 29, 2013

10839930 - (D) (P.T.A.B. May. 29, 2013)

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. 10/839,930 05/05/2004 Yoram Nelken SVL920050714US2 7968 45729 7590 05/30/2013 GATES & COOPER LLP - IBM 6701 CENTER DRIVE WEST SUITE 1050 LOS ANGELES, CA 90045 EXAMINER LIN, SHEW FEN ART UNIT PAPER NUMBER 2166 MAIL DATE DELIVERY MODE 05/30/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte YORAM NELKEN, RANDY JESSEE and STEVE KIRSHNER ____________________ Appeal 2010-006867 Application 10/839,930 Technology Center 2100 ____________________ Before MAHSHID D. SAADAT, HUNG H. BUI, and LYNNE E. PETTIGREW, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants have filed a Request for Rehearing under 37 C.F.R. § 41.52 for reconsideration of our Decision on Appeal mailed February 27, 2013. In that Decision, we affirmed the Examiner’s final rejection of claims 1-10 and 24-26 under 35 U.S.C. § 103(a) as being unpatentable over Gusick and Zhao. We have considered the arguments presented by Appellants in the Request for Rehearing, but we are not persuaded that any points were misapprehended or overlooked by the Board in issuing the Decision. As such, we decline to change our decision in view of Appellants’ arguments. Appeal 2010-006867 Application 10/839,930 2 ANALYSIS 37 C.F.R. § 41.52 states in relevant part: [t]he request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) [i.e., based upon a recent relevant decision of either the Board or a Federal Court] and (a)(3) [i.e., responding to a new ground of rejection made pursuant to § 41.50(b)] of this section. 37 C.F.R. § 41.52(a)(1) (2008). In this case, Appellants’ Request does not sufficiently identify what points of law or fact were purportedly misapprehended or overlooked by the Board. Instead, Appellants merely disagree with (1) the Board’s suggestion in footnote #4 on page 5 of the Decision mailed February 27, 2013, and (2) the Board’s affirmance of the Examiner’s interpretation that Appellants’ claimed “meta-data” encompasses the customer providing an email address, or alternatively, a telephone number or a post office address, as described in ¶[0049], FIG. 2 of Gusick (Ans. 19-20); and the Board’s adoption of the Examiner’s findings that Zhao further discloses different types of “meta- data” that is peripheral data (Ans. 20); and the Examiner’s conclusion that Gusick and Zhao discloses “meta-data that is peripheral data not associated with the natural language query,” where that “metadata” is also “[analyzed with] the natural language query ... to classify the natural language query into at least one predefined category,” as recited in Appellants’ independent claim 1 (Ans. 21-22). Appeal 2010-006867 Application 10/839,930 3 Specifically, Appellants submit the following points that allegedly have been misapprehended or overlooked by the Board: (1) The Board errs when it asserts that the references disclose that “meta-data” is “[analyzed with] the natural language query ... to classify the natural language query into at least one predefined category,” as recited in Appellants’ independent claim 1; and (2) The Board errs when it asserts that there is no support in Appellants’ specification for Appellants’ claimed “web form including meta-data,” as recited in Appellants’ independent claim 1. We remain unpersuaded by Appellants’ arguments. First, footnote #4 on page 5 of our Decision mailed February 27, 2013 was not dispositive or even part of that Decision. Rather, footnote #4 was simply a suggestion to the Examiner that, in the event of further prosecution, Appellants’ claim 1 should be re-evaluated for compliance with 35 U.S.C. §112, 1st and 2nd paragraphs. Specifically, footnote #4 states that: We note that Appellants’ Specification only describes meta-data as optional and that meta-data is entered by a user along with a natural language query, via a user-interactable element included in a web form (web page). See Appellants’ Spec., ¶[0011] and original claims 1 and 11 as filed. There appears to be no support for such meta-data included in a web form or Appellants’ claimed “web form including meta-data,” as recited in independent claim 1. Therefore, in the event of further prosecution, we leave it to the Examiner to re-evaluate claim 1 for compliance with 35 U.S.C. §112, 1st and 2nd paragraphs. There was no point of law or fact that was purportedly misapprehended or overlooked by the Board in reaching the conclusion Appeal 2010-006867 Application 10/839,930 4 stated in the Decision. Nevertheless, we reaffirm the accuracy of footnote #4. As previously noted, Appellants’ Specification only describes that a “web form” (web page) as transmitted from a web server 220 included in a customer service interface 115, shown in FIG. 1, FIG. 2 and FIG. 3, includes “at least one user-interactable element” and that “web form” including the user-interactable element is then used by a client 105, shown in FIG. 5, to enter a natural language query and any optional “meta-data” at the client 105 so that a language analysis server 210 can analyze both the natural language query and the “meta-data” in order to classify the natural language query into at least one predefined category. See Appellants’ Spec., ¶[0011] and original claims 1, 11, 21 and 22 as filed. In other words, when the “web form” is transmitted at the web server 220, that “web form” only includes “at least one user-interactable element” and does not include any “meta- data” as recited in Appellants’ independent claim 1, at least until the user at the client 105 inputs the natural language query and the meta-data consistent with Appellants’ Spec., ¶[0011] and original claims 1, 11, 21 and 22 (“transmitting a web page to a client, the web form including at least one user-interactable element for [user] entering a natural language query and optional meta-data”) (emphasis added). Second, Appellants continue to argue that: there is no discussion in Gusick of the email address (or any other metadata) being “[analyzed with] the natural language query... to classify the natural language query into at least one predefined category,” as recited in Appellants’ independent claim 1. Instead, the email address is merely used by the system of Gusick for logins or routing responses. Indeed, the above-cited portions of Gusick refer only to the processing of the natural language query, without any processing of the email address in association with the query. Appeal 2010-006867 Application 10/839,930 5 Request for Rehearing, at page 7 (emphasis added). However, the Board has not misapprehended or overlooked any points of law or fact. As explained in our Decision, we agree not only with the Examiner’s broad interpretation of Appellants’ claimed “meta-data” but also with the Examiner’s analysis of Gusick regarding “meta-data” (see Ans. 21- 22), which we adopted, i.e., Gusick discloses “meta-data that is peripheral data not associated with the natural language query,” where that “metadata” is also “[analyzed with] the natural language query... to classify the natural language query into at least one predefined category,” as recited in Appellants’ independent claim 1. Decision 7-8 (citing Ans. 21-22). In particular, we agree with the Examiner’s broad interpretation that the peripheral “metadata” also encompasses Gusick’s product, supplier or manufacturer information used to categorize the natural language queries. Specifically, as explained by the Examiner: Gusick also teaches the metadata that is being used to categorize the query as in FIG. 6 a party managing customer service system (and not retailer 600) may also manage the content associated with knowledge base 620. Again, knowledge base 620 preferably includes question/answer pairs categorized by product, and this information may be further subcategorized by product line and/or supplier (e.g., manufacturer). In this embodiment, a customer or a representative of a subscribing party (such as retailer 600) may access knowledge base 620 by submitting a product specific code (such as a UPC or ISBN code) through any of the above-described system interfaces. As described above, when an information requester does not find sought-after information, a query may be submitted to the system. In this embodiment, the customer service system preferably routs the query automatically to an appropriate party that has been associated with the particular product code (typically the supplier of the product) (Gusick Paragraph 0088). Appeal 2010-006867 Application 10/839,930 6 Ans. 21-22 (emphasis added). Appellants have not presented sufficient evidence or argument to persuade us of error in the Examiner’s findings. Absent such evidence or argument, we do not find error in the Examiner’s findings and conclusions, and, therefore, reaffirm the Examiner’s obviousness rejection of claims 1-10 and 24-26. CONCLUSION Appellants may disagree with the Examiner’s analysis of Gusick relative to the language of independent claim 1, but the Board has not misapprehended or overlooked any points of law or fact. We therefore deny Appellants’ request to make any changes in our Decision. DECISION Appellants’ request for rehearing is denied. The Examiner’s decision rejecting claims 1-10 and 24-26 under 35 U.S.C. § 103(a) remains AFFIRMED. REHEARING DENIED msc