Apple Inc.

Patent Trials and Appeals Board

Jan 25, 2021

2020006363 (P.T.A.B. Jan. 25, 2021)

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.
16/146,883 09/28/2018 Ari WEINSTEIN P38147US4/77870000301104 3776
150004 7590 01/25/2021
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
SHARMA, NEERAJ
ART UNIT PAPER NUMBER
2659
NOTIFICATION DATE DELIVERY MODE
01/25/2021 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 ARI WEINSTEIN, OLUWATOMIWA ALABI,
KELLIE ALBERT, JOHN BLATZ, CYRUS D. IRANI,
IEYUKI KAWASHIMA, and STEPHEN O. LEMAY

Appeal 2020-006363
Application 16/146,883
Technology Center 2600

Before MAHSHID D. SAADAT, JEAN R. HOMERE, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision rejecting claims 1–5 and 7–24, all of the claims
pending.2 Appeal Br. 7. Claim 6 has been objected as being dependent
upon a rejected base claim, but would otherwise be allowable if rewritten in

1 We refer to the Specification filed Sept. 28, 2018 (“Spec.”); the Final
Office Action, mailed Sept. 16, 2019 (“Final Act.”); the Appeal Brief, filed
April 30, 2020 (“Appeal Br.”); the Examiner’s Answer, mailed July 10,
2020 (“Ans.”); and the Reply Brief, filed Sept. 10, 2020 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Apple Inc. as the real party-in-
interest. Appeal Br. 1.
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independent form to include the limitation of the base claim any intervening
claims. Id. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing
was held in this appeal on January 11, 2021. A transcript of the oral hearing
will be entered into the record in due course.
We REVERSE.
II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to an
electronic device including a digital assistant (e.g., SIRI) for accelerating
task performance. Spec. ¶¶ 2, 4.
Figure 10R, reproduced and discussed below, is useful for
understanding the claimed subject matter:
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Figure 10R above illustrates electronic device (1000) including display
(1001), interface (1004), touch-sensitive surface, and digital assistant stored
in memory. Id. ¶ 313.
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In particular, upon receiving from a user a natural-language speech
input, electronic device (1000) determines a previously recorded voice
shortcut or user-generated phrase (e.g., “Coffee Time”, “Coffee Me”)
associated with the input to perform a task corresponding therewith (e.g.,
ordering a large cup of coffee) among tasks identified by candidate task
affordance module (1008). Id. ¶¶ 325–328. The electronic device
subsequently provides the user with a positive feedback (“e.g. your large
latte will be ready in 20 min”) if the selected task was performed
successfully, or otherwise provides the user with a negative feedback (e.g.
“something went wrong”, “your card balance is insufficient”) if the selected
task was not performed successfully. Id. ¶¶ 436, 465–468, 477.
Claims 1, 19, and 22 are independent. Claim 1, reproduced below
with disputed limitations emphasized, is illustrative:
1. A non-transitory computer-readable storage medium
storing one or more programs, the one or more programs
comprising instructions, which when executed by one or more
processors of a first electronic device, cause the first electronic
device to:
receive, with a digital assistant, a natural-language
speech input;
determine a voice shortcut associated with the natural-
language speech input, wherein the voice shortcut is a user-
generated phrase customized by a user of the electronic device;
determine a task corresponding to the voice shortcut;
cause an application to initiate performance of the task,
wherein the application is preloaded with one or more
customized parameters associated with the voice shortcut, the
one or more customized parameters defined by the user prior to
receiving the speech input;
receive a response from the application, wherein the
response is associated with the task;
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determine, based on the response, whether the task was
successfully performed; and
provide an output indicating whether the task was
successfully performed.

Appeal Br. 38 (Claims App.).
III. REFERENCES
The Examiner relies upon the following references.3
Name Reference Date
Yoshizawa US 2003/0191629 A1 Oct. 9, 2003
Cash US 2015/0045007 A1 Feb. 12, 2015
Nelson US 2015/0053781 A1 Feb. 26, 2015
Klein US 2015/0254058 A1 Sept. 10, 2015
Sharifi US 2016/0140962 A1 May 19, 2016
Adan US 2018/0336449 A1 Nov. 22, 2018
IV. REJECTIONS
The Examiner rejects claims 1, 2, and 5–12 as follows:
Claims 1–3, 8, 11–15, 17, and 19–24 are rejected under 35 U.S.C.
§ 102(a) as being anticipated by Klein. Final Act. 5–14.
Claims 4, 5, and 7 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combined teachings of Klein and Yoshizawa. Final
Act. 14–17.
Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over
the combined teachings of Klein and Adan. Final Act. 17–18.

3 All reference citations are to the first named inventor only.
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Claim 10 is rejected under 35 U.S.C. § 103 as being unpatentable over
the combined teachings of Klein and Sharifi. Final Act. 18–19.
Claim 16 is rejected under 35 U.S.C. § 103 as being unpatentable over
the combined teachings of Klein and Cash. Final Act. 19–20.
Claim 18 is rejected under 35 U.S.C. § 103 as being unpatentable over
the combined teachings of Klein and Nelson. Final Act. 20.

V. ANALYSIS
1. Anticipation Rejection
Appellant argues that Klein does not describe the limitations, “receive
a response from the application, wherein the response is associated with the
task; determine, based on the response, whether the task was successfully
performed; and provide an output indicating whether the task was
successfully performed,” as recited in independent claim 1. Appeal Br. 23.
According to Appellant, Klein’s disclosure of signing in to a particular
user’s profile does not describe the disputed claim limitations. Id. at 23–24
(citing Klein ¶¶ 55, 56). In particular, Appellant argues that the Examiner
improperly mapped both the limitations of receiving a response from an
application and providing an output to Klein’s disclosure of signing in a user
to a particular profile. Id. at 24.
Appellant’s arguments are persuasive of reversible Examiner error.
Klein discloses a system for providing a parametrized voice command
suggestion to a user within a contextual state of a graphical user interface.
Klein, Abstr. In particular, Klein discloses upon the user customizing a
voice command obtained from a library to invoke the performance of a task
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(e.g. sign in user), a computing system configures a home page based on the
user’s preferences. Id. ¶¶ 55, 56.
We do not agree with the Examiner that Klein’s disclosure of
configuring the home screen based on the user’s preferences teaches both the
claimed limitations. Final Act. 8–9, Ans. 14 (citing Klein ¶ 56, Fig. 3). We
agree with Appellant that the cited portion of Klein teaches at most an
indication that the requested task associated with the voice command was
successfully or unsuccessfully processed. Appeal Br. 24.
However, as noted by Appellant, the Examiner’s reliance upon the
same disclosure of Klein falls short of also describing the separate limitation
of providing an output to the user indicating that the task was successfully or
unsuccessfully processed by a separate application (at least not under an
anticipation standard). Id. Because Appellant has shown at least one
reversible error in the Examiner’s anticipation rejection of independent
claim 1, we do not reach Appellant’s remaining arguments. Accordingly,
we do not sustain the Examiner’s anticipation rejection of independent
claims 1, 19, and 22, each of which includes the argued disputed limitations.
Likewise, we do not sustain the rejection of dependent claims 2, 3, 8, 11–15,
17, 20, 21, 23, and 24, which also recite the disputed limitations.
.
2. Obviousness Rejections
Because dependent claims 4, 5, 7, 9, 10, 16, and 18 incorporate the
disputed limitations of independent claims 1, 19, and 22, and the Examiner
has not identified any teachings in the secondary references relied upon for
the obviousness rejections that cures the noted deficiencies of the
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independent claims discussed above, we do not sustain the Examiner’s
obviousness rejections of claims 4, 5, 7, 9, 10, 16, and 18.
VI. CONCLUSION
We reverse the Examiner’s rejections of claims 1–5 and 7–24.

VII. DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 8, 11–15,
17, 19–24 102 Klein
1–3, 8, 11–
15, 17, 19–
24
4, 5, 7 103 Klein, Yoshizawa 4, 5, 7
9 103 Klein, Adan 9
10 103 Klein, Sharifi 10
16 103 Klein, Cash 16
18 103 Klein, Nelson 18
Overall
Outcome 1–5, 7–24

REVERSED