Ex Parte Yacoub et alDownload PDFPatent Trials and Appeals BoardAug 26, 201310830599 - (D) (P.T.A.B. Aug. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SHERIF YACOUB and ROLAND JOHN BURNS ____________ Appeal 2011-002589 Application 10/830,599 Technology Center 2600 ____________ Before KRISTEN L. DROESCH, JASON V. MORGAN and MIRIAM L. QUINN, Administrative Patent Judges. DROESCH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002589 Application 10/830,599 2 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. Appeal 2011-002589 Application 10/830,599 3 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. Appeal 2011-002589 Application 10/830,599 4 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 Appeal 2011-002589 Application 10/830,599 5 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’ Appeal 2011-002589 Application 10/830,599 6 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. Appeal 2011-002589 Application 10/830,599 7 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. Appeal 2011-002589 Application 10/830,599 8 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. Appeal 2011-002589 Application 10/830,599 9 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 Appeal 2011-002589 Application 10/830,599 10 “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. Appeal 2011-002589 Application 10/830,599 11 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 tj Copy with citationCopy as parenthetical citation