Ex Parte Parker et al

Patent Trial and Appeal Board

Aug 22, 2018

13886406 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/886,406 05/03/2013 Philip E. Parker
45729 7590 08/24/2018
GA TES & COOPER LLP - IBM
6060 CENTER DRIVE
SUITE 830
LOS ANGELES, CA 90045
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.
SVL920120054US2 1034
EXAMINER
DWIVEDI, MARESH H
ART UNIT PAPER NUMBER
2168
NOTIFICATION DATE DELIVERY MODE
08/24/2018 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):
docketing-us@gates-cooper.com
gates-cooper@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP E. PARKER and PA TRICK W. FINK 1
Appeal2018-002129
Application 13/886,406
Technology Center 2100
Before JOHNNY A. KUMAR, JUSTIN BUSCH, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of method claims 1-7 and 9. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, International Business Machines Corporation is
the real party in interest.
2 Corresponding apparatus/computer program claims are under separate
Appeal 2018-002095, for copending Application 13/538,440.
Appeal2018-002129
Application 13/886,406
STATEMENT OF THE CASE
Invention
The invention on appeal relates to a method "for automatically (i.e.,
without additional user input) creating a subject annotator using subject
expansion, ontological mining, and natural language processing techniques."
Spec. ,r 4.
Representative Claim 1
Exemplary claim 1 under appeal reads as follows (bracketed matter
added):
1. A computer-implemented method for creating a
subject annotator comprising:
[L 1] accepting a user input query that specifies a target
subject within [L2] a knowledge domain;
[L3] gathering related concepts to the user input query by
searching, based on the user input query, for similar words to
the target subject to create a set of related terms;
[L4] further gathering related concepts to the user input
query by searching, using the set of related terms, to identify
further related terms;
[L5] using the set of related terms and further related
terms to automatically create the subject annotator for the
knowledge domain; and
[L6] utilizing the subject annotator to automatically
annotate a document within the knowledge domain using the set
of related terms and further related terms.
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Application 13/886,406
Rejections3
Claims 1-7 and 9 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 9-15, 17-
23, 25, and 26 of copending Application No. 13/538,440.
Claims 1-7 and 9 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Lim et al. (US 2010/0312779; Dec. 9, 2010
("Lim")) in view of IBM Article (Language Ware Resource Workbench 7.2:
Annotate a Document, INTERNATIONAL BUSINESS MACHINES CORP. (2011)
("IBM Article") (referring to Software LRW 7.2, ICA 2.2, released October,
2010)).
Appellants' Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because "the IBM Article only describes the manual
creation of dictionaries for subject annotators. The dictionaries in the IBM
Article are never automatically created using the results of an ontology
search, as recited in Appellant[s'] independent claims." App. Br. 6
(hereinafter "the automatically create" limitation") ( emphasis added).
2. Appellants also contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because "Lim cannot be used to create the
dictionaries found in the IBM Article. There simply is not sufficient
information returned by the ontology or database search results in Lim to
create the dictionaries of the IBM Article." App. Br. 7-8.
3 We, proforma, affirm the double-patenting rejection, which was not
contested by Appellants.
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Application 13/886,406
Issue on Appeal
Did the Examiner err in rejecting claims 1-7 and 9 as being obvious
because the references fail to teach or suggest the claim limitations at issue?
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We disagree with Appellants' arguments, and we adopt as our
own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Answer in response to Appellants' arguments. However, we highlight
and address specific findings and arguments for emphasis in our analysis
below.
The Examiner finds, and we agree, Lim teaches claimed elements
[LI], [L3], [L4], and [L5], whereas the remaining claimed elements [L2] and
[L6] are taught by the IBM Article. Final Act. 9-1 7.
As to Appellants' above contention 1, we are not persuaded the
Examiner erred. Regarding the automatically create limitation, paragraph 35
of Appellants' Specification states "searching is performed automatically
(e.g., without additional user input)." We agree with the Examiner's finding
that Lim teaches the automatically create limitation. Ans. 4--7. In addition,
Lim explicitly discloses "automatically performs" (Lim ,r 31, Fig. 11 ).
As to Appellants' above contention 2, we are not persuaded the
Examiner erred. Appellants' argument essentially is premised on a
"physical" or "bodily" incorporation of limitations of one reference into the
other. This is not the standard of obviousness. See In re Sneed, 710 F .2d
1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the
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Application 13/886,406
references be physically combinable to render obvious the invention under
review") (citations omitted); In re Keller, 642 F.2d 413,425 (CCPA 1981)
("The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.").
Moreover, "[a] reference must be considered for everything it teaches by
way of technology and is not limited to the particular invention it is
describing and attempting to protect." EWP Corp. v. Reliance Universal
Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis omitted).
Furthermore, an ordinarily skilled artisan is not compelled to blindly
follow the teaching of one prior art reference over the other without the
exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp.,
733 F.2d 881, 889 (Fed. Cir. 1984). "[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007).
In particular, the Examiner finds, and we agree:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to combine the teachings of
the cited references because teaching IBM's would have
allowed [Lim' s] to provide a method for using custom
dictionaries to annotate documents, as noted by IBM (Page
103).
Final Act. 17 ( emphasis omitted).
Thus, the Examiner has set forth why an ordinarily skilled artisan
would have been motivated to combine the teachings of Lim and the IBM
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Article to arrive at the claimed invention. Final Act. 17. Appellants have
not presented any persuasive evidence or argument why the ordinarily
skilled artisan would not have possessed the knowledge and skills to know
how to combine the prior-art references. As such, we find that one of
ordinary skill in the art would have recognized how to adjust Lim to
accommodate the teachings from the IBM Article.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art, or in the proper combinability
of the prior-art references as suggested by the Examiner. Therefore, we
sustain the Examiner's obviousness rejection of independent claim 1, and its
dependent claims not argued separately.
We have considered Appellants' arguments in the Reply Brief but find
them unpersuasive to rebut the Examiner's responses. Consequently, we
conclude there is no reversible error in the Examiner's rejections of claims
1-7 and 9.
DECISION
We, proforma, affirm the Examiner's provisional rejection of claims
1-7 and 9 on the grounds of nonstatutory obviousness-type double patenting
as being unpatentable over co-pending Application 13/538,440.
We affirm the Examiner's decision rejecting claims 1-7 and 9 under
35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
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AFFIRMED
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