Ex Parte Yacoub et al

Patent Trials and Appeals Board

Aug 26, 2013

10830599 - (D) (P.T.A.B. Aug. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SHERIF YACOUB and ROLAND JOHN BURNS
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Appeal 2011-002589
Application 10/830,599
Technology Center 2600
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Before KRISTEN L. DROESCH, JASON V. MORGAN and
MIRIAM L. QUINN, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE
The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-18 and 21-27.1 We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM-IN-PART.
BACKGROUND
The Appellants’ disclosed invention relates to a method for dialog
management within a call handling system and a system for effecting the
method. The method includes: initiating a dialog between a contact and an
operator; monitoring a dialog attribute; presenting an instantaneous value of
the dialog attribute on an operator display; and effecting a dialog rule in
response to a value of the dialog attribute. Abs.; see also Spec. 3.
Claims 1 and 24 are illustrative and reproduced below (disputed
limitations in italics):
1. A method for dialog management within a call handling
system, comprising:
initiating a dialog between a contact and an operator;
monitoring dialog attributes including generating a dialog
attribute score for each dialog attribute;
presenting an instantaneous value of at least one of the
dialog attributes on an operator display; and
effecting a dialog rule in response to the dialog attribute
scores;
wherein monitoring includes,
identifying computational resources required to
calculate each of the dialog attribute scores;
generating dialog attribute scores hierarchically
beginning with the dialog attribute score requiring a least
amount of computational resources; and

1 Claims 19-20 have been cancelled.
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stopping generation of the dialog attribute scores
once the combined dialog attribute score exceeds a
predetermined threshold.

24. A method for dialog management within a call handling
system, comprising:
initiating a dialog between a contact and an operator;
monitoring an anger dialog attribute and a subject matter
dialog attribute;
presenting a representation of the anger dialog attribute
and the subject matter dialog attribute;
effecting a dialog rule in response to a value of the
dialog attribute and the subject matter dialog attribute;
wherein monitoring the subject matter dialog attribute
includes,
analyzing a subject matter of the dialog and
generating the subject matter dialog attribute
which describes the subject matter of the dialog;
and
wherein the dialog rule results in an advisory message
being presented to the operator on the display.

Rejections
Claims 1-18, 21 and 24 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claim 24 stands rejected under 35 U.S.C. § 102(e) as being
anticipated by Eilbacher (US 6,724,887 B1, Apr. 20, 2004).
Claims 1-18, 21-23 and 25-27 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Petrushin (US 2002/0194002 A1, Dec. 19, 2002),
Eilbacher and Epstein (US 6,754,626 B2, Jun. 22, 2004, filed Mar. 1, 2001).
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Petrushin and Eilbacher.
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ISSUES
Did the Examiner err in finding that the subject matter of claims 1-18,
21 and 24 is directed to non-statutory subject matter?
Did the Examiner err in finding that the combination of Petrushin,
Eilbacher and Epstein teaches or suggests “generating dialog attribute scores
hierarchically beginning with the dialog attribute score requiring a least
amount of computational resources,” as recited in independent claims 1 and
26?
Did the Examiner err in finding that the combination of Petrushin and
Eilbacher or the combination of Petrushin, Eilbacher and Epstein teaches or
suggests “effecting a dialog rule in response to a value of the dialog attribute
and the subject matter dialog attribute,” as recited in independent claim 24,
and similarly recited in independent claims 25 and 27?
ANALYSIS
We have reviewed the Examiner’s rejection in light of the Appellants’
arguments in the Appeal Brief presented in response to the Final Office
Action and the Reply Brief presented in response to the Answer. We
highlight and address specific findings and arguments as follows.
Rejection of Claims 1-18, 21 and 24 under § 101
We agree with, and adopt as our own, the Examiner’s finding that
independent claims 1 and 24 are directed to non-statutory subject matter
because initiating a dialog, monitoring a dialog attribute, presenting an
instantaneous value or representation of the dialog attribute, and effecting a
dialog rule in response to a value of the dialog attribute, as recited in claims
1 and 24, can be performed by a person or with the aid of pencil and paper.
Ans. 3-5, 18-20. We further agree with the Examiner’s finding that although
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claim 1 recites an operator display and computational resources, and claim
24 recites a display, the claim language does not require the operator
display, computation resources or the display to perform any steps of the
method. Id.
We are not persuaded by the Appellants’ assertions that claims 1 and
24 are directed to statutory subject matter because: 1) “[c]learly, a computer
system or some circuit is needed to present a dialog attribute value on the
display;” 2) “presenting an instantaneous value of dialog attributes on the
display must be performed by a computer system and an electronic display
presenting the value of dialog attributes to the operator;” 3) “presenting a
dialog attribute value or an advisory message on the display needs the
display to perform the presenting on the display;” 4) “the step of generating
[a dialog attribute score and identifying computational resources to calculate
the score] must be performed by computational resources;” and 5) “the
relevant step of effecting the dialog rule is tied to a machine, i.e., the
display.” App. Br. 9; Reply Br. 4-5. The Appellants’ assertions are not
commensurate in scope with the plain language of claims 1 and 24. Claims 1
and 24 do not require the recited display or computational resources to
perform any of the steps recited in the claims (i.e., presenting, calculating,
generating, etc.). While we recognize that the machine-or-transformation test
is not the sole test for determining subject matter eligibility, it is nonetheless
an important indicator and the only issue raised in the Appeal before us. See
Bilski v. Kappos, 130 S. Ct. 3218, 3221 (2010).
Similarly, we are also not persuaded by the Appellants’ argument that
the recited display cannot be paper, and the computational resources cannot
be a person because this interpretation is inconsistent with the Appellants’
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Specification, which describes the display as an electronic display and
describes computational complexity of keyword classifiers as artificial
intelligence classifiers. Reply Br. 4-5 (citing Spec. Fig. 2; p. 12, ll. 4-5, 8-
16). We agree with the Examiner’s broad yet reasonable interpretation of the
claim terms and decline to read limitations into the claims as suggested by
the Appellants. For these reasons, we sustain the rejection of claims 1-18, 21
and 24 as directed to non-statutory subject matter.
Rejection of Claims 1-18, 21-23 and 26 under § 103
We agree with the Appellants’ arguments that Petrushin, Epstein and
Eilbacher do not teach or suggest determining which dialog attribute score
requires a least amount of computational resources, and thus do not teach or
suggest “generating scores hierarchically beginning with the dialog attribute
score requiring a least amount of computational resources.” App. Br. 14
(citing Petrushin ¶ 81; Epstein col. 12, ll. 10-14); Reply Br. 9-10; see Ans. 8-
10. The Examiner relies on Petrushin to teach the disputed limitations. Ans.
25 (citing ¶¶ 0005-0009; Tables 1-4). However, the Examiner does not
sufficiently explain how Petrushin meets the claimed limitation. For
example, the record lacks sufficient evidence showing that the statistics
shown in Tables 1-4 and the corresponding disclosure, discussing the ability
of test subjects to accurately recognize specific emotions portrayed in
speech, teach or suggest which dialog attribute (i.e., emotion) scores require
a least amount of computational resources.
For this reasons, we are constrained to reverse the rejection of claims
1-18, 21-23 and 26 as obvious over Petrushin, Epstein and Eilbacher.
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Rejection of Claim 24 under § 103
We are not persuaded by the Appellants’ arguments that Petrushin and
Eilbacher do not describe a subject matter dialog attribute value describing
subject matter of the dialog. App. Br. 16. In particular, we are not persuaded
by the Appellants’ argument that Eilbacher’s description of curse words are
not dialog attributes or subject matter attributes, but are instead the actual
dialog and the actual subject matter. App. Br. 16. Contrary to Appellants’
argument, we broadly construe the term “attribute” to include a
characteristic. Eilbacher’s description of using word spotting to detect
certain inflammatory words and performing this analysis on recorded audio,
such as a telephone call (col. 11, ll. 26-47), teaches that the certain
inflammatory words or curse words are a characteristic or attribute of the
dialog or subject matter (i.e., recorded audio).
The Appellants also argue that claim 24 recites a value of the subject
matter attribute, and that even if the subject matter is determined to be an
attribute of the subject matter, there is still no value of the subject matter
attribute. App. Br. 16. Appellants’ argument is not commensurate in scope
with the claim language. Instead, claim 24 recites: “effecting a dialog rule in
response to a value of the dialog attribute and the subject matter dialog
attribute.” In other words, the use of the term “value” in the language of
claim 24 modifies the recited “dialog attribute,” but does not modify the
recited “subject matter dialog attribute.” We further note that our
construction of the claim language is consistent with Appellants’
Specification, which is silent regarding a value for a subject matter dialog
attribute.
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The Appellants also argue that Petrushin in view of Eilbacher fails to
teach or suggest “effecting a dialog rule in response to a value of the dialog
attribute and the subject matter dialog attribute.” App. Br. 16. We are not
persuaded by the Appellants’ argument because it addresses the Eilbacher
reference, but does not explain the error in the Examiner’s finding that
Petrushin teaches the disputed limitations (Ans. 16 (citing Petrushin Fig. 14;
¶ 0072)).
For these reasons we sustain the rejection of claim 24 as obvious over
Petrushin and Eilbacher. Since we sustain the rejection of claim 24 as
obvious over Petrushin and Eilbacher, we need not, and will not, consider
the rejection of claim 24 as anticipated by Eilbacher.
Rejection of Claims 25 and 27 under § 103
For the same reasons as those explained above for claim 24, we are
not persuaded by the Appellants’ arguments that: 1) the combination of
Petrushin, Eilbacher and Epstein does not disclose generating a subject
matter dialog attribute which describes the subject matter of a dialog; 2)
Eilbacher’s curse words are not dialog attributes or subject matter attributes;
and 3) claim 25 recites a value of the subject matter attribute. App. Br. 15.
We are also not persuaded by the Appellants’ additional argument that
Epstein does not teach determining a subject matter dialog attribute value for
the speech, which describes the subject matter of the dialog. Id. Appellants’
argument is not commensurate in scope with the claim because claim 25
does not recite either “a subject matter dialog attribute value” or “a value of
the subject matter dialog attribute.”
For these reasons, we sustain the rejection of claims 25 and 27 as
obvious over Petrushin, Eilbacher and Epstein.
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In the Event of Further Prosecution
We have decided the Appeal before us. We direct the Examiner’s
attention to dependent claims 22 and 23, which depend from claims 1 and
21, which stand rejected under 35 U.S.C. § 101 as being directed to non-
statutory subject matter. Claims 22 and 23 further describe a method
including measuring, monitoring, and identifying, but do not require the
computational resources or display recited in claim 1 to perform the
measuring, monitoring, and identifying. In the event of further prosecution,
we leave it to the Examiner to determine whether claims 22 and 23 are
directed to statutory subject matter.
We further direct the Examiner’s attention to independent claim 25
which recites: “[a] computer-usable medium embodying computer program
code.” In the event of further prosecution, we leave it to the Examiner to
determine whether claim 25 encompasses statutory subject matter under 35
U.S.C. § 101. See U.S. Patent & Trademark Office, Interim Examination
Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C.
§ 101, Aug. 2009, at 2, available at http://www.uspto.gov/
patents/law/comments/2009-08-25_interim_101_instructions.pdf. In
particular, we note that the claimed “computer-usable medium embodying
computer program code” may be broadly construed as encompassing
transitory, propagating signals which are not patentable subject matter under
§ 101. See In re Nuijten,500 F.3d 1346, 1353-54 (Fed. Cir. 2007).
We also direct the Examiner’s attention to claim 26 which recites
“means for initiating a dialog . . . , means for monitoring dialog
attributes . . . , means for effecting a dialog rule . . . ,” etc. In the event of
further prosecution, we leave it to the Examiner to determine whether the
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“means for” limitations recited in claim 26 invoke 35 U.S.C. § 112, 6th
paragraph, and, if so, whether claim 26 complies with 35 U.S.C. § 112, 1st
and 2nd paragraph. We note that Appellants direct attention to the call
handling system 102, dialog manager 106, and display 122 as structure
corresponding to the “means for” recitations in claim 26. App. Br. 6. We
leave it to the Examiner to determine whether the call handling system 102
and dialog manager 106 are disclosed in Appellants’ Specification as general
purpose computers or disclosed as including an algorithm to transform
general purpose computers or microprocessors to special purpose computers
for performing the claimed functions. See Aristocrat Techs Australia Pty
Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). (“In cases
involving a computer-implemented invention in which the inventor has
invoked means-plus-function claiming, [the Federal Circuit] has consistently
required that the structure disclosed in the specification be more than simply
a general purpose computer or microprocessor.”)
DECISION
We AFFIRM the rejection of claims 1-18, 21 and 24 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
We REVERSE the rejection of claims 1-18, 21-23 and 26 under 35
U.S.C. § 103(a) as being unpatentable over Petrushin, Eilbacher and Epstein.
We AFFIRM the rejection of claim 24 under 35 U.S.C. § 103(a) as
being unpatentable over Petrushin and Eilbacher.
We AFFIRM the rejection of claims 25 and 27 under 35 U.S.C.
§ 103(a) as being unpatentable over Petrushin, Eilbacher and Epstein.
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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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