Ex Parte Palwe et al

Patent Trial and Appeal Board

Jan 30, 2017

12483583 (P.T.A.B. Jan. 30, 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.
12/483,583 06/12/2009 Ganesh Palwe 58083-372349 (B1002) 9554
72058 7590 02/01/2017
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
EXAMINER
WIENER, ERIC A
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
ipefiling @ kilpatrickstockton .com
jlhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GANESH PAL WE and DEBASHISH PAUL
Appeal 2016-001762
Application 12/483,5831
Technology Center 2100
Before MASHID D. SAADAT, JOHN P. PINKERTON, and
JOYCE CRAIG, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3, 5, 8—12, 14—24, and 26—31, which are the
only claims pending in the application. Claims 2, 4, 6, 7, 13, and 25 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Adobe Systems Incorporated as the real party in
interest. App. Br. 4.
Appeal 2016-001762
Application 12/483,583
STATEMENT OF THE CASE
Introduction
Appellants’ disclosed and claimed invention is generally directed to
providing “an assistant application that provides a user interface that can
allow a user of a computing device to utilize advanced features of the device
without requiring excessively complex navigation or input.” Spec. 1 5.2
Claim 1 is representative and reproduced below (with the disputed
limitations emphasized)'.
1. A method, comprising:
receiving, by an assistant application executed by a
processor of a device, natural language input;
evaluating, by the assistant application, the natural
language input to identify a plurality of applications available to
the device, wherein the plurality of applications comprise at least
one application that provides an interface, wherein the interface
is specific to the at least one application and is not displayed
while the natural language input is received',
determining, by the assistant application, a plurality of
suggested commands available to the device based on evaluating
the natural language input, wherein each command of the
plurality of suggested commands is executable by at least one
respective application of the plurality of applications, wherein
the plurality of suggested commands comprises at least one
suggested command for execution hy the at least one application
having the interface that is not displayed while the natural
language input is received',
2 Our Decision refers to the Final Action mailed Dec. 31, 2014 (“Final
Act.”); Appellants’ Appeal Brief filed July 10, 2015 (“App. Br.”) and Reply
Brief filed Nov. 24, 2015 (“Reply Br.”); the Examiner’s Answer mailed
Sept. 24, 2015 (“Ans.”); and the original Specification filed June 12, 2009
(“Spec.”).
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providing, by the assistant application, output at the device
comprising the at least one suggested command; and
invoking the at least one application responsive to
receiving a selection of the at least one suggested command,
wherein invoking the at least one application comprises
displaying the interface for the at least one application at the
device and performing the at least one suggested command using
the interface.
Rejections on Appeal
Claims 1, 3, 8—11, 14—16, 18—21, 27, and 31 are rejected under
35 U.S.C. 102(b) as being anticipated by Hodjat et al. (US 2006/0229889
Al; published Oct. 12, 2006) (“Hodjat”).
Claims 5, 12, and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hodjat in view of Kennewick et al. (US 7,693,720 B2;
issued Apr. 6, 2010) (“Kennewick”).
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hodjat in view of Gurram et al. (US 2006/0206336 Al;
published Sept. 14, 2006) (“Gurram”).
Claims 23, 24, and 30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hodjat in view of Johnson (US 5,748,974; issued
May 5, 1998).
Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hodjat in view of Garcia et al. (US 2009/0248397 Al;
published Oct. 1, 2009) (“Garcia”).
Claims 28 and 29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hodjat in view of Chakrabarti et al. (US 8,301,623 B2;
issued Oct. 30,2012) (“Chakrabarti”).
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Application 12/483,583
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Briefs (App. Br. 8—36, Reply Br. 2—13) and are not
persuaded the Examiner has erred. Unless otherwise noted, we adopt as our
own the findings and reasons set forth by the Examiner in the Office Action
from which this appeal is taken (Final Act. 2—15) and in the Examiner’s
Answer (Ans. 17—34), and we concur with the conclusions reached by the
Examiner. For emphasis, we consider and highlight specific arguments as
presented in the Briefs.
Rejection of Claims 1, 3, 8, 10, 11, 14—16, 18—21, and 31 under § 102(b)3
Appellants contend that “Hodjat does not disclose evaluating natural
language input to identify an application having an interface that is not
displayed while the natural language input is received, determining a
suggested command for the application based on the natural language input,
and performing the suggested command using the application’s interface in
response to receiving a selection of the suggested command,” as required by
independent claim 1, and as similarly required by independent claims 11 and
20. App. Br. 10, 14—16; Reply Br. 2—8. In particular, Appellants argue
“Hodjat apparently discloses receiving input at an interface and using the
same interface to present data from different back-end applications that may
correspond to the received input,” and “by relying on the same interface for
communicating data from different back-end applications, fails to provide a
user with the option of using interface features specific to different
3 We decide the rejection of claims 1, 3, 8, 10, 11, 14—16, 18—21, and 31,
which are rejected under the first-stated ground of rejection, on the basis of
representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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applications, unlike the invention of claims 1,11, and 20.” App. Br. 14—15;
Reply Br. 2. Appellants also argue the Examiner erred by asserting an
unreasonably broad construction of the limitation “[an] interface [that] is
specific to the at least one application,” which a person of ordinary skill in
the art would interpret as “a computer program that allows a user to interact
with a computer application and that is restricted to interacting with that
particular application.” Reply Br. 3—5. According to Appellants, “the
Hodjat interface cited by the Examiner is a computer program that allows a
user to interact with multiple back-end applications, rather than restricting
the user to interacting with a particular application.” Id. at 5. Appellants
further argue “Hodjat also fails to disclose that the interface depicted in
Hodjat FIG. 9 is not displayed while the natural language input is
received.'” App. Br. 15.
We are not persuaded by Appellants’ arguments that the Examiner has
erred. Regarding claim construction, we note that the disputed limitations of
claim 1 contain several references to the term “interface,” which is discussed
in the Briefs as “the interface for the at least one application:”
• wherein the plurality of applications comprise at least one
application that provides an interface, wherein the interface is
specific to the at least one application
• the plurality of suggested commands comprises at least one
suggested command for execution hy the at least one application
having the interface that is not displayed while the natural
language input is received
• wherein invoking the at least one application comprises
displaying the interface for the at least one application at the
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device and performing the at least one suggested command using
the interface.
The Examiner finds that “[njowhere in Appellants’ Specification is
‘the interface for the at least one application’ described in a limiting way that
would limit an application to only be able to display information from it
through a separate graphical user interface that is operated completely
independently of the ‘application/OS interface 306.’” Ans. 18 (citing Spec.
Tflf46, 52, 53). The Examiner also finds
that the claimed step of “invoking the at least one application
comprises displaying the interface for the at least one application
at the device” is performed by invoking data and services from
the at least one application in order to modify the presently
displayed graphical user interface to display an “interface for the
at least one application” as part of the modified graphical user
interface, wherein this modified graphical user interface is
“specific” to the at least one application, because it specifically
contains specific data and services of the at least one application.
Id. at 19.
For the reasons stated by the Examiner, we agree with the Examiner’s
conclusion that the broadest reasonable construction of the limitations “the
interface is specific to the at least one application” and “the interface for the
at least one application” is the graphical user interface displayed for the
application invoked by selecting the suggested command. We are not
persuaded by Appellants’ proposed construction — “a computer program
that allows a user to interact with a computer application and that is
restricted to interacting with that particular application”—because it
attempts to add limitations that do not appear in the disputed claim
limitations. See In re Self 671 F.2d 1344, 1348 (CCPA 1982)
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(“[AJppellanf s arguments fail from the outset because . . . they are not based
on limitations appearing in the claims.”). For the same reason, we are not
persuaded by Appellants’ argument that “the interface must also be provided
by the invoked application.” See Reply Br. 3^4 (emphasis added). Instead,
the invoking limitation recites “wherein invoking the at least one application
comprises displaying the interface for the at least one application at the
device and performing the at least one suggested command using the
interface,” which does not require the application to exclusively “provide”
the interface, without use, for example, of an interaction agent as in Hodjat.
(emphasis added).
The Examiner finds, and we agree, that Hodjat discloses evaluating
the natural language input to identify “at least one application that provides
an interface, wherein the interface is specific to the at least one application”
and responsive to selecting a command, “displaying the interface for the at
least one application at the device and performing the at least one suggested
command using the interface.” Ans. 19-20 (citing Hodjat Figs. 9, 10,
152—157). In particular, the Examiner finds paragraph 153 of Hodjat
discloses that, if the hint “map John Smith’s address” is selected by the user,
“[t]he Actuation Agent 112 will issue the appropriate command and return
the map image response to the user via the interaction agent 110.” Id. at 19.
The Examiner finds paragraph 153 of Hodjat also discloses that,
alternatively, “the system may produce a ‘map’ icon for the Context Ribbon
924 . . . [and] if selected by the user, the system will bring up a form for a
map object, including one or more fillable fields,” with the “address” field
having “its value pre-filled with John Smith’s address as returned from the
most recent user interaction.” Id. at 19—20. Thus, the Examiner finds, and
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we agree, “[t]he displaying of the ‘map image’ and ‘additionally ... a form
for a map object’ sent from the back-end mapping application sufficiently
corresponds to the displaying of an interface of the mapping application.”
Id. at 20.
We are not persuaded by Appellants’ argument that because Hodjat
uses an interaction agent that is separate from the back-end applications,
Hodjat uses a “single” or “common” interface, or an interface that is not
specific to the invoked application. Reply Br. 2-4. As Hodjat discloses,
although selection of a command by the user causes an actuation to be sent
to the Actuation Agent 112, the Actuation Agent invokes the appropriate
application and returns the corresponding interface for that application. See
Hodjat 1153. Furthermore, contrary to Appellants’ argument that the
interaction agent provides the interface, paragraph 138 of Hodjat, which is
cited by Appellants, discloses that the content displayed “lies with the back­
end applications and services” and “in most cases the interaction agent 110
will format and present the content in a usable manner forthe form factor of
the particular device.” See Reply Br. 4 (citing Hodjat 1138).
We also are not persuaded by Appellants’ argument that Hodjat fails
to disclose that the interface is not displayed while the natural language
input is received, as required by the disputed limitations of claim 1. App.
Br. 15. The Examiner finds, and we agree, this limitation is disclosed in Fig.
10 of Hodjat because it depicts in block 1010 that “user enters user input”
and, after the system interprets the language (as in block 1012) and the
system issues a command to an application based on the interpretation of the
input (as in block 1014), the “system presents GUI page based on current
interpretation” (as in block 1016). That is, the interface of the application
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“is not displayed while the natural language input is received,” but only after
it is received, interpreted, and a command is issued to invoke an application
and display the interface for the application.4
For these reasons, we find a preponderance of the evidence supports
the Examiner’s findings that Hodjat discloses the disputed limitations of
claim 1. Accordingly, we are not persuaded the Examiner erred in finding
that Hodjat anticipates claim 1 under 35 U.S.C. § 102(b), and we sustain the
Examiner’s rejection of claim 1. For the same reasons, we sustain the
Examiner’s rejections of independent claims 11 and 20, as well as dependent
claims 3, 8, 10, 14—16, 18, 19, 21, and 31.
Rejection of Claim 9 under § 102(b)
4 We note the limitation “an interface ... is not displayed while the natural
language input is received” is a negative limitation that was not included in
the originally filed claims (see Spec. 32—37), but was added by amendment
during prosecution. Appellants have failed to identify in the Specification
any description of a reason to not display the interface while the natural
language input is received. In the event of further prosecution of this
application, we leave it to the Examiner to consider whether claims 1,11,
and 20 should be rejected under 35 U.S.C. § 112, first paragraph, for failing
to comply with the written description requirement under Santarus, Inc. v.
Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative
claim limitations are adequately supported when the specification describes
a reason to exclude the relevant limitation. Such written description support
need not rise to the level of disclaimer. In fact, it is possible for the patentee
to support both the inclusion and exclusion of the same material.”). See also
MPEP § 2173.05(i) (“Any negative limitation or exclusionary proviso must
have basis in the original disclosure. . . . The mere absence of a positive
recitation is not basis for an exclusion.”). Although the Board is authorized
to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn
when the Board elects not to do so. See MPEP § 1213.02.
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Appellants contend Hodjat fails to disclose “providing a shortcut
command comprising a stored sequence of device inputs performed in the at
least one application prior to receiving the natural language input f as
recited in claim 9. App. Br. 17—19 (emphasis added). The Examiner finds
the disputed limitations of claim 9 are disclosed by paragraph 153 of Hodjat:
Furthermore, referring to paragraph [0153] of Hodjat, a shortcut
corresponding to ‘map John Smith’s address’ has an associated
sequence of device inputs corresponding at least to the sequential
input of an address and subsequent submission of the address into
the mapping application.
Ans. 23.
Appellants’ arguments regarding the disclosure of the shortcut or hint
“map John Smith’s address” in paragraph 153 of Hodjat are conclusory and,
therefore, not persuasive. See App. Br. 18—19. In the Reply Brief,
Appellants do not address the Examiner’s findings regarding claim 9. Thus,
we agree with the Examiner’s findings that paragraph 153 of Hodjat
discloses the disputed limitations of claim 9, and we sustain the Examiner’s
rejection of claim 9 for anticipation under § 102(b).
Rejection of Claim 27 under § 102(b)
Appellants contend Hodjat fails to disclose the limitation “wherein the
at least one application is not being executed while the natural language
input is received,” as recited in claim 27. App. Br. 19-21; Reply Br. 8—10.
In particular, Appellants argue paragraph 146 of Hodjat “obliquely
references back-end applications without describing whether these back-end
applications are executed when inputs are received by Hodjat's interface.”
App. Br. at 19. Appellants also argue that, even if the Examiner’s
construction of claim 27 in the Answer is proper, the disclosure in paragraph
146 of Hodjat of forwarding commands to a back-end application “suggests
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that the back-end application is running a program or carrying out an
instruction (i.e., that the back-end application is ‘executing’).” Reply Br. 9.
We are not persuaded by Appellants’ arguments. First, for the reasons
stated by the Examiner, we agree with the Examiner’s conclusion that the
term “being executed” is broadly and reasonably interpreted to mean “to
carry out (an instruction in a program).” Ans. 24. Second, the Examiner
finds that, based on this interpretation of “being executed,” paragraph 146
discloses the disputed limitation. Ans. 24. Paragraph 146 of Hodjat
discloses that, after the user’s input has been received, “the form is
forwarded to the back-end application as a command.” Thus, the Examiner
finds, and we agree, Hodjat discloses the back-end applications “are not
active or executing until they are called upon to carry out an instruction,
such as by receiving a command interpreted from the natural language input,
after the natural language input has been received.” Id.
Accordingly, we agree with the Examiner’s finding that Hodjat
discloses the limitation “wherein the at least one application is not being
executed while the natural language input is received,”5 as recited in claim
5 We note this limitation is a negative limitation that was not included in the
originally filed claims (see Spec. 32—37), but was added by amendment
during prosecution. Appellants have failed to identify in the Specification
any description of a reason to not execute the application while the natural
language input is received. In the event of further prosecution of this
application, we leave it to the Examiner to consider whether claim 27 should
be rejected under 35 U.S.C. § 112, first paragraph, for failing to comply with
the written description requirement under Santarus, Inc. v. Par
Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative
claim limitations are adequately supported when the specification describes
a reason to exclude the relevant limitation. Such written description support
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27, and therefore, we sustain the Examiner’s rejection of claim 27 for
anticipation under § 102(b).
Rejection of Claims 5, 12, and 22 under § 103(a)
Appellants note claim 5* * * * * 6 recites that “the at least one application
[identified by evaluating the natural language input] is not installed on the
device” and that “invoking the at least one application further comprises . . .
executing the at least one application at the device subsequent to
downloading the at least one application to perform the at least one
suggested command.” App. Br. 21. The Examiner rejected claim 5
under § 103(a) based on the combination of Hodjat and Kennewick and
relies on Kennewick as teaching or suggesting these limitations. See Final
Act. 9—11. Appellants contend this constitutes reversible error “because the
combination would both change the principle of operation of the invention
disclosed in Hodjat and render the system disclosed in Hodjat inoperable for
its intended purpose.” App. Br. 23—24; Reply Br. 10—13. In particular,
Appellants argue Hodjat “operates by using a single interaction agent on a
user device to interact with multiple back-end applications” and
“[cjombining Hodjat with Kennewick would therefore change Hodjat’s
need not rise to the level of disclaimer. In fact, it is possible for the patentee
to support both the inclusion and exclusion of the same material.”). See also
MPEP § 2173.05(i) (“Any negative limitation or exclusionary proviso must
have basis in the original disclosure. . . . The mere absence of a positive
recitation is not basis for an exclusion.”). Although the Board is authorized
to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn
when the Board elects not to do so. See MPEP § 1213.02.
6 We decide the rejection of claims 5, 12, and 22 which are rejected under
the second-stated ground of rejection, on the basis of representative claim 5.
See 37 C.F.R. § 41.37(c)(l)(iv).
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principle of operation from relying on a network of distributed agents for
interpreting natural language input for controlling back-end applications to
relying on locally executed programs for interpreting and responding to
natural language input.” App. Br. 23—24.
We are not persuaded by Appellants’ arguments. First, Appellants’
arguments regarding changing the principle of Hodjat and rendering it
inoperable for its intended purpose are not persuasive because they presume
a bodily incorporation of the features of Kennewick into the structure of
Hodjat, which is not the proper standard under 35 U.S.C. § 103(a). “[A]
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.” In re Mouttet,
686 F. 3d 1322, 1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for
obviousness whether a secondary reference’s features can be bodily
incorporated into the structure of the primary reference. In re Keller, 642
F.2d 413, 425 (CCPA 1981). Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. Id.
Second, Appellants have not provided persuasive evidence or
arguments that combining Kennewick with Hodjat would render Hodjat
inoperable or actually change the principle of operation of Hodjat, as
opposed to simply providing additional data sources to the back-end
applications of Hodjat to fulfill natural language inputs. In that regard, the
Examiner finds, and we agree, as follows:
Kennewick also discloses that depending on the nature of
natural language input, there may not be a simple set of queries
returning an adequate response and several queries may need to
be initiated, chained, or concatenated to achieve a complete
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result, wherein no single available source may include the entire
set of results requires and, thus, multiple queries, perhaps with
several parts, may need to be made to multiple data sources,
which can be both local or on a network (Kennewick; column 2,
lines 13—22).
See Final Act. 10; Ans. 26.
In the Answer, the Examiner follows the above quoted language with
the finding that “this suggestion of accessing remote data sources to fulfill
natural language commands would have been desirable by Hodjat, who
desires to improve effectiveness of natural language user interaction (Hodjat;
[0002]).” Ans. 26. We agree with this finding and that it supports
combining Kennewick with Hodjat to teach or suggest the limitations of
claim 5 because it teaches or at least suggests “invoking the at least one
application further comprises . . . executing the at least one application at the
device subsequent to downloading the at least one application to perform the
at least one suggested command.” Appellants’ argument that the Examiner’s
finding suggests relying “on remote data sources to fulfill commands,”
rather than downloading an application, is based on a misinterpretation of
the Examiner’s finding. See Reply Br. 12.
Thus, we are not persuaded the Examiner erred by combining the
teachings of Kennewick with Hodjat or in finding that the combined
teachings of these references would have rendered the subject matter of
claim 5 obvious under § 103(a). Thus, we sustain the Examiner’s rejection
of claim 5, as well as the rejection of claims 12, and 22.
Rejection of Claim 17 under § 103(a)
Claim 17 is rejected under the third-stated ground of rejection above
for obviousness over Hodjat and Gurram. Appellants argue the rejection of
claim 17 should be reversed because it depends from independent claim 11,
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which Appellants argue is allowable for the reasons discussed regarding
claim 1. App. Br. 25. Because we have sustained the Examiner’s rejection
of claim 1, as well as claim 11, for the reasons discussed supra, we also
sustain the Examiner’s rejection of claim 17.
Rejection of Claims 23, 24, and 30 under § 103(a)
Claims 23, 24, and 30 are rejected for obviousness over Hodjat and
Johnson. Appellants argue the rejection of claims 23 and 24 should be
reversed because they depend from independent claim 20, which Appellants
argue is allowable for the reasons discussed regarding claim 1. App. Br. 26.
Because we have sustained the Examiner’s rejection of claim 20 for the
reasons discussed supra, we also sustain the Examiner’s rejection of claims
23 and 24.
Appellants argue claim 30 is allowable because it depends from
allowable claim 1. Id. Appellants also argue the combination of Hodjat and
Johnson fails to teach or suggest the following emphasized limitations of
claim 30:
.. . copying data from at least one additional application to a
clipboard function accessible by the assistant application, the
at least one application, and at least one additional application,
wherein the data is selected using at least one additional
interface provided by the at least one additional application;
determining, in response to receipt of the natural language
input, a suggested parameter value from the data stored by the
clipboard function; and
. . . wherein invoking the at least one application further
comprises performing the at least one suggested command
using the suggested parameter value.
App. Br. 26—28.
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Appellants also argue “Johnson’s only reference to a clipboard feature
clearly disparages the use of such a feature.” App. Br. 28 (citing Johnson
col. 4.11.21-29).
We are not persuaded by Appellants’ arguments that the Examiner has
erred. Appellants’ arguments are not persuasive because, as the Examiner
finds, they attack the references individually, whereas the Examiner’s
rejection is based on the combined teachings of Hodjat and Johnson. See
Final Act. 13; Ans. 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). The relevant inquiry is whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of the references. See In re Keller, 642 F.2d 413, 425
(CCPA 1981). Here, the Examiner finds, and we agree, Hodjat teaches
“determining, in response to receipt of the natural language input, a
suggested parameter value from the data” (Final Act. 13, citing
Hodjat |146) and “providing the suggested parameter value in the output
with the at least one suggested command, wherein invoking the at least one
application further comprises performing the at least one suggested
command using the suggested parameter value.” Final Act. 13 (citing
Hodjat || 35, 36 (“wherein [0035] describes identifying prepositions in
relation to surrounding natural language input in order to contextually
determine the intention of the language including such as types of parameter
values like city name or days of a week” and “wherein [0036] describes that
‘the system 100 interprets the user’s intent and generates the specific signals
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and syntax required by the back end application to effect that intent.”)). The
Examiner also finds, and we agree, Johnson discloses
the well-known use of clipboard functions to copy and paste
information within analogous prior art of natural language
interfaces, which corresponds to the claim language of prior to
receiving natural language input, copying data from at least one
additional application to a clipboard function accessible by an
assistant application, the at least one application, and at least
one additional application, wherein the data is selected using at
least one additional interface provided by the at least one
additional application.
Ans. 28 (citing Johnson col. 4,11. 18—53); Final Act. 13.
The Examiner also finds that Hodjat teaches “context coming from
‘recent history of prior interactions between the user and the system, ’ among
other current context information. Information copied to a clipboard would
have been obvious to one of ordinary skill in the art as corresponding to
information of ‘recent history of prior interactions between the user and the
system.’” Ans. 29 (citing Hodjat || 149, 150). The Examiner further finds:
Therefore, because Johnson's disclosure of information copied to
a clipboard would have been interpreted by one of ordinary skill
in the art as obviously corresponding to a form of information of
“recent history of prior interactions between the user and the
system,” Johnson's disclosure does not disparage the use of
clipboard information in ways such as other information of
“recent history of prior interactions between the user and the
system,” as disclosed by Hodjat. In other words, it would have
been obvious to one of ordinary skill in the art at the time of
invention to enable the device of Hodjat to have copy and paste
functionality and, therefore, it would have been obvious to one
of ordinary skill in the art at the time of invention to contextually
use such copy and paste information, because by the nature of a
clipboard that is well known to only contain recently copied
information, anything still copied onto the clipboard would be
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considered a “recent history of prior interactions between the
user and the system.”
Ans. 29.
Thus, based on the Examiner’s foregoing findings and reasons, we
agree with the Examiner’s (1) findings that the combination of Hodjat and
Johnson teaches or suggests the disputed limitations of claim 30 and (2)
conclusion that claim 30 would have been rendered obvious under § 103(a)
based on the combined teachings of Hodjat and Johnson. Accordingly, we
sustain the Examiner’s rejection of claim 30.
Rejection of Claim 26 under § 103(a)
Claim 26 is rejected under the fifth-stated ground of rejection above
for obviousness over Hodjat and Garcia. Appellants argue the rejection of
claim 26 should be reversed because it depends from independent claim 1,
which Appellants argue is allowable for the reasons discussed regarding
claim 1. App. Br. 28. Because we have sustained the Examiner’s rejection
of claim 1 for the reasons discussed supra, we also sustain the Examiner’s
rejection of claim 26.
Rejection of Claims 28 and 29 under § 103(a)
Appellants argue the relevant language of claims 28 and 29 includes:
28. The method of claim 27, further comprising, prior to
providing the output, excluding, by the assistant application, at
least some commands from a subset of suggested commands
29. The method of claim 28, wherein excluding the at least
some commands .. . comprises: determining weights associated
with each of the subset of suggested commands based on
previous selections of the respective command; and excluding
the at least some commands based on the at least some
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commands having a lower weight than non-excluded
commands.
App. Br. 32.
Appellants contend the rejection of these claims should be reversed
because (1) they depend form allowable base claims, (2) the Examiner’s
rationale does not explain why a person of ordinary skill in the art would
combine the teachings of Hodjat and Chakrabarti, and (3) the combination of
Hodjat and Chakrabarti does not teach the invention of claim 29. See App.
Br. 29-36.
Regarding Appellants’ first contention, we are not persuaded of
Examiner error because, for the reasons discussed supra, we have sustained
the Examiner’s rejection of claim 1, from which claims 28 and 29 ultimately
depend.
Regarding Appellants’ third contention, Appellants argue
“Chakrabarti's only disclosures with respect to using weights in a
recommendation algorithm fail to teach excluding recommended items
based on the weights, let alone excluding at least some suggested commands
using weights that are based on previous selections of the excluded
commands, as required by claim 29.” App. Br. 32—33. Regarding
Appellants’ second contention, Appellants argue the Examiner failed to
articulate or explain a reason that would have prompted a person or ordinary
skill to combine elements as in claims 28 and 29. Id. at 33—36.
We are not persuaded by Appellants’ arguments. Instead, regarding
Appellants’ third contention, we agree with the Examiner’s finding that:
Furthermore, referring to column 5, line 40 — column 6, line 31
of Chakrabarti, the step of identifying candidate items that
further “includes discarding items having candidate scores below
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a threshold” sufficiently corresponds to excluding items having
weights below a threshold, because a score may be considered a
form of a weight.
Ans. 31 (see also Final Act. 14—15).
In regard to Appellants’ second contention, the Examiner finds:
In this case, Hodjat, in paragraphs [0142]-[0152],
describes the desire to provide suggestions to the user, based on
context. Furthermore, Hodjat discloses the desire to improve
upon techniques for suggesting contextually relevant
information to a user (Hodjat; [0002]). Therefore, Hodjat would
appreciate Chakrabarti’s teaching for improving techniques for
suggesting contextually relevant information to a user, because
Chakrabarti discloses that present systems for providing
suggestions of data in an interface are deficient in that they
ordinarily seek to only suggest the ‘best’ matches, to the
exclusion of other information that may still represent a good
match and that it would be beneficial to one of ordinary skill in
the art to be able to more effectively give weight to differing
information of differing relevance (Chakrabarti; column 1, lines
41-54). Therefore, Hodjat would greatly appreciate such
improved methods pertaining to contextual suggestions, as
provided by Chakrabarti. Thus, it would have been obvious to
one of ordinary skill in the art at the time of invention to combine
the teachings of Hodjat and Chakrabarti.
Id. at 32—33.
Thus, contrary to Appellants’ arguments, we find the Examiner
provides sufficient articulated reasoning having a rational underpinning,
such that a person of ordinary skill in the art would have been motivated to
combine the teachings of Hodjat and Chakrabarti, so as to render obvious the
subject matter of claims 28 and 29. See KSR Int 7 Co. v. Teleflex Co., 550
U.S. 398,418 (2007).
Based on the Examiner’s findings and reasons set forth above, we find
a preponderance of the evidence supports the Examiner’s findings that the
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combined teachings of Hodjat and Chakrabarti would have taught or
suggested the disputed limitations of claims 28 and 29. Accordingly, we are
not persuaded the Examiner erred in (1) finding the combined teachings of
Hodjat and Chakrabarti teach or suggest the disputed limitations of claims
28 and 29 and (2) concluding that the combination of Hodjat and
Chakrabarti renders the subject matter of claims 28 and 29 obvious under 35
U.S.C. § 103(a). Accordingly, we sustain the Examiner’s rejection of claims
28 and 29.
DECISION
We affirm the Examiner’s rejections of claims 1, 3, 8—11, 14—16, 18—
21, 27, and 31 under 35 U.S.C. § 102(b).
We affirm the Examiner’s rejections of claims 5, 12, 17, 22, 23, 24,
26, 28, 29, and 30 under 35 U.S.C. § 103(a).
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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