Apple Inc.

Patent Trials and Appeals Board

Mar 6, 2020

14450726 - (D) (P.T.A.B. Mar. 6, 2020)

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.
14/450,726 08/04/2014 Varun A. VORA P18676US1/77870000163101 1175
150004 7590 03/06/2020
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
RUDOLPH, VINCENT M
ART UNIT PAPER NUMBER
2661
NOTIFICATION DATE DELIVERY MODE
03/06/2020 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):
dentons_PAIR@firsttofile.com
patent.docket@dentons.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VARUN A. VORA and SWAPNIL R. DAVE
Appeal 2018-006434
Application 14/450,726
Technology Center 2600
Before ERIC B. CHEN, NORMAN H. BEAMER, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–30.2 See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Apple Inc. Appeal
Br. 1.
2 The Examiner objected to claims 31–36 as dependent upon a rejected base
claim, but indicated claims 31–36 would be allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claims. Final Act. 10.
Appeal 2018-006434
Application 14/450,726

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CLAIMED SUBJECT MATTER
The claims are directed to auto-activating smart responses based on
activities from remote devices. Claim 1, reproduced below, is illustrative of
the claimed subject matter (disputed limitation italicized):
1. A method of causing a digital assistant to automatically
respond to incoming communications, the method comprising:
at one or more electronic devices each having one or
more processors and memory:
obtaining a speech input from a user;
in response to obtaining the speech input, determining
whether the speech input includes instructions for performing a
specified action in response to receipt of a subsequent incoming
communication from one or more specified senders;
storing the instructions;
after storing the instructions, obtaining an incoming
communication from a respective sender;
determining whether the respective sender is one of the
one or more specified senders; and
upon determining that the respective sender is one of the
one or more specified senders, performing the specified action
in accordance with the instructions and thereafter automatically
deleting the instructions.
REJECTIONS
Claims 1–6, 8–18, 20–26, and 28–30 stand rejected under 35 U.S.C.
§ 103 as unpatentable over the combination of Wohlert (US 2010/0098231
A1, published Apr. 22, 2010) and Kuhlke et al. (US 2011/0045841 A1,
published Feb. 24, 2011) (“Kuhlke”). Final Act. 3.
Claims 7, 19, and 27 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Wohlert, Kuhlke, and Shin (US
2009/0313014 A1, published Dec. 17, 2009). Final Act. 9.
Appeal 2018-006434
Application 14/450,726

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ANALYSIS
Appellant contends the cited portions of Wohlert and Kuhlke do not
teach or suggest “determining whether the speech input includes instructions
for performing a specified action in response to receipt of a subsequent
incoming communication from one or more specified senders,” as recited in
claim 1. Appeal Br. 10–13. Appellant argues that, although Wohlert teaches
receiving voice input, Wohlert does not actively determine whether the
speech input includes instructions, as claim 1 requires. Id.
The Examiner found that Wohlert does not limit the type of interface
that may be used to input the instructions/rules, as evidenced by the fact that
different alternatives are taught. Ans. 10 (citing Wohlert ¶ 92). The
Examiner also found that Wohlert teaches using an interactive voice
response (IVR) system to explicitly or inherently cause a personalized
communication processing system (PCPS) to obtain a speech input from a
user, and in response to obtaining the speech input, determine whether the
speech input includes instructions for performing a specified action in
response to receipt of a subsequent incoming communication from one or
more specified senders. Id. at 10–11 (citing Wohlert Fig. 9, ¶¶ 35, 36, 60, 91,
and 92).
We agree with Appellant that the Examiner erred. The Examiner did
not clearly identify where Wohlert teaches or suggests determining whether
the speech input includes instructions. We agree with Appellant that Wohlert
teaches invoking a method for defining the rules using speech input (id.
at 11; see Spec. ¶ 92), but is silent with regard to determining the contents of
the speech input.
Appeal 2018-006434
Application 14/450,726

4
Moreover, to the extent the Examiner’s findings are based on
inherency, the Examiner has not provided sufficient reasoning to support the
findings. Wohler teaches that a method 900 can be invoked by a user via an
IVR interface, but Wohler is silent regarding whether rules may be provided
or managed using an IVR interface. Even if rules may be provided or
managed through the IVR interface in Wohler, however, there is no teaching
that the contents of the speech input are analyzed in any way. “The fact that
a certain result or characteristic may occur or be present in the prior art is not
sufficient to establish inherency of that result or characteristic.” In re
Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (rejection reversed because
inherency was based on what would result due to optimization of conditions,
not what was necessarily present in the prior art).
For these reasons, we are persuaded that the Examiner erred in finding
that Wohlert teaches or suggests the disputed limitation, as recited in
claim 1. Independent claims 15 and 21 recite limitations similar to the
disputed limitation. The Examiner did not find that either Kuhlke or Shin
teaches or suggests the disputed limitation missing in Wohlert.
Accordingly, we reverse the Examiner’s § 103 rejection of
independent claim 1, as well as the Examiner’s § 103 rejection of
independent claims 15 and 21, and the Examiner’s § 103 rejection of
dependent claims 2–14, 16–20, and 22–30, which stand with the independent
claims from which they depend.
Because it is dispositive that the Examiner has not shown by a
preponderance of evidence that the cited prior art teaches or reasonably
suggests the disputed limitation, we do not address other issues raised by
Appellant’s arguments related to these claims. See Beloit Corp. v. Valmet
Appeal 2018-006434
Application 14/450,726

5
Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency
is at liberty to reach a decision based on “a single dispositive issue”).
DECISION
We reverse the decision of the Examiner rejecting claims 1–30.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–18,
20–26, 28–30
103 Wohlert, Kuhlke 1–6, 8–18,
20–26, 28–30
7, 19, 27 103 Wohlert, Kuhlke,
Shin
7, 19, 27
Overall
Outcome:
1–30

REVERSED