Ex Parte Bastide et al

Patent Trial and Appeal Board

May 23, 2017

14486373 (P.T.A.B. May. 23, 2017)

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.
14/486,373 09/15/2014 Paul R. Bastide RSW920130150US2 8298
58139 7590
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
05/25/2017 EXAMINER
MERCADO VARGAS, ARIEL
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
05/25/2017 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):
patdocket@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL R. BAS TIDE,
MATTHEW E. BROOMHALL, and ROBERT E. LOREDO
Appeal 2017-000868
Application 14/486,373
Technology Center 2100
Before JOSEPH L. DIXON, ERIC S. FRAHM, and
MATTHEW J. McNEILL, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—7. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ disclosed and claimed invention relates to a method of
presenting tags of a tag cloud in a more understandable and visually
appealing manner by assigning tags to parts of speech and presenting
Appeal 2017-000868
Application 14/486,373
combinations of tags using a determined layout for display (Spec. Tflf 1—3, 6;
Fig. 3; Abs.; claim l).1
RELATED APPEAL
The instant case on appeal, Application No. 14/486,373 and Appeal
No. 2017-000868 (drawn to a method of presenting tags of a tag cloud in a
more understandable and visually appealing manner), is related to
Application No. 14/150,553 and Appeal No. 2017-001076 (drawn to a
computer program product with programming instructions, and a system
with circuitry for, presenting tags of tag cloud in a more understandable and
visually appealing manner) filed by the same assignee (IBM Corporation)
and inventive entity (see Inventors listed supra). See App. Br. 1.
Application No. 14/150,553 was the basis for the Examiner’s provisional
obviousness-type double patenting rejection (now withdrawn) discussed
infra.
Exemplary Claim
Sole independent claim 1 under appeal is exemplary and reads as
follows, with emphasis added to the key disputed portions of the claim:
1. A method for presenting tags of a tag cloud in a
more understandable and visually appealing manner, the method
comprising:
retrieving tags of a tag cloud associated with an object;
assigning said retrieved tags to parts of speech',
generating, by a processor, combinations of said tags
based on said parts of speech assigned to said tags',
determining a layout to display said generated
1 We note that the paragraphs throughout Appellants’ Specification are
incorrectly numbered. See e.g., Spec, pages 1^4 where the same paragraph
numbers are used in several instances.
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Application 14/486,373
combinations of tags; and
presenting said generated combinations of tags of said tag
cloud using said determined layout.
Examiner’s Rejections
(1) The Examiner provisionally rejected claims 1—7 under the
judicially created doctrine of non-statutory, obviousness-type double
patenting over claims 8—21 of Application 14/150,553. Final Act. 3—8.
Because the Examiner has withdrawn the rejection of claims 1—7 under the
judicially created doctrine of obviousness-type double patenting in the
Answer (Ans. 13; see also Advisory Act. 2), we do not reach the merits or
otherwise review this rejection in our decision.
(2) The Examiner rejected claims 1—3, 6, and 7 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Chen (US
2010/0030552 Al; published Feb. 4, 2010) and Park (US 2014/0063555 Al;
published Mar. 6, 2014). Final Act. 8—15; Ans. 3—9.
(3) The Examiner rejected claims 4 and 5 as being unpatentable
under 35 U.S.C. § 103(a) over Chen, Park, and Nathan (US 2008/0221892
Al; published Sep. 11, 2008). Final Act. 15—18; Ans. 9-13.
Issues on Appeal
Based on Appellants’ arguments in the Appeal Brief (App. Br. 2 44)
and the Reply Brief (Reply Br. 2—31), the following issues are presented on
appeal:
(1) Did the Examiner err in rejecting claims 1—3, 6, and 7 as being
obvious under 35 U.S.C. § 103(a) because the combination of Park and Chen
fails to teach or suggest the “generating,” “determining,” and/or “presenting”
steps recited in representative claim 1?
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(2) Did the Examiner err in rejecting claims 4 and 5 as being
obvious under 35 U.S.C. § 103(a) because Nathan is non-analogous to
Appellants’ invention as recited in claims 4 and 5, and is therefore not
properly combinable with Chen and Park?
(3) Did the Examiner err in rejecting claim 4 over the combination
of Chen, Park, and Nathan because Nathan, and thus the resultant
combination, fails to teach or suggest generating a combination of tags using
a template as recited in claim 4?
(4) Did the Examiner err in rejecting claim 5 over the combination
of Chen, Park, and Nathan because neither Nathan nor Chen teach or suggest
parts of speech being “a verb, a noun, a pronoun, an adjective, an adverb, a
preposition, a conjunction and an interjection” as recited in claim 5?
ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 2—18;
Ans. 3—13) in light of Appellants’ contentions in the Appeal Brief (App.
Br. 2-44) and Reply Brief (Reply Br. 2—31) that the Examiner has erred in
light of the Examiner’s response to Appellants’ arguments in the Appeal
Brief (Ans. 14-43). We disagree with Appellants’ contentions.
Claims 1—3, 6, and 7
With regard to representative claim 1, we adopt as our own (1) the
findings and reasons set forth by the Examiner in the Action from which this
appeal is taken (Final Act. 9-11), and (2) the reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief
(see Ans. 3—43). We concur with the conclusions reached by the Examiner
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as to representative claim 1, and highlight and address specific findings and
arguments for emphasis as follows.
We agree with the Examiner (Final Act. 9—11; Ans. 3—6) that Park
teaches or suggests the “determining” and “presenting” steps as well as
generating tag layouts, and Chen (see e.g., 144) teaches or suggests
obtaining combinations of tags based on parts of speech. We also agree with
the Examiner (see Ans. 5—6, 11, 15—18) that it would have been obvious to
combine the teaches and suggestions of Chen and Park to determine a tag
layout (as taught by Park) using the combinations of tags based on parts of
speech (as taught by Chen) “to provide the user with a layout that fits the set
of tags in an organized way, thus providing an improved visual
representation of the set of tags associated with the tag cloud (See Park’s
paragraph 14).” Final Act. 11; Ans. 6 and 16.
In view of the foregoing, we are not persuaded by Appellants’
arguments (App. Br. 2—26; Reply Br. 2—18) that the combination of Park and
Chen fails to teach or suggest the “generating,” “determining,” and/or
“presenting” steps recited in claim 1. Accordingly, we sustain the
Examiner’s obviousness rejection of representative claim 1, as well as
claims 2, 3, 6, and 7 grouped therewith.
Claims 4 and 5
With regard to claims 4 and 5, Appellants argue (App. Br. 33—36;
Reply Br. 22—23) that Nathan is a non-analogous reference because the
Examiner fails to explain how Nathan is (i) in the same field of endeavor as
the claimed invention; and (ii) reasonably pertinent to the problem faced by
Appellants. Appellants contend that “Nathan focuses on providing an
automated avatar driver with contextual recommendation ability” (App. Br.
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35) in order “to provide a highly believable virtual avatar or character with
interactive ability and knowledge representation and recommendation
ability” (App. Br. 35), whereas Appellants’ claimed invention “provides a
means for presenting tags of a tag cloud in a more understandable and
visually appealing manner thereby enabling the user to extract insight from
the tag cloud” (App. Br. 36).
A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention. In re Klein,
647 F.3d 1343, 1348 (Fed. Cir. 2011); Innovention Toys, LLC v. MCA
Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011); In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992).
A reference is considered analogous prior art: (1) if the reference is from the
same field of endeavor as the claimed subjected matter, regardless of the
problem addressed, or (2) if “the reference still is reasonably pertinent to the
particular problem with which the inventor is involved,” even though the
reference is not within the field of the inventor’s endeavor. Bigio, 381 F.3d
at 1325. The “field of endeavor” test asks if the structure and function of the
prior art is such that it would be considered by a person of ordinary skill in
the art, because of the similarity to the structure and function of the claimed
invention as disclosed in the application. Bigio, 381 F.3d at 1325—27.
We agree with the Examiner (Final Act. 17, 30—33; Ans. 33—44) that
Nathan is analogous to Appellants’ invention as recited in claims 4 and 5,
and is therefore properly combinable with Chen and Park. More
specifically, we agree with the Examiner that “Nathan teaches or suggests a
method that identifies and tag[s] parts of [sic] speech in order to create
chunks by combining the tagged parts of speech in a template that comprises
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particular tags associated with the part[s] of [sic] speech” (Ans. 34).
Specifically, Nathan teaches “generating] tag clouds” (Abs.) and uses a
Speech Tagger 223 to annotate elements with tags that classify the elements
with pre-defmed categories (1 83). This is akin to, and encompassed by,
Appellants’ use of “a template” of combinations of parts of speech (see
Nathan’s ^flf 83, 84, Tables 1 and 2 listing the parts of speech). Therefore,
we agree with the Examiner (Ans. 34) that Nathan teaches the limitation of
claim 4 of “generating said combinations of said tags based on said parts of
speech assigned to said tags using a template of one or more combinations of
said parts of speech.” Because Nathan teaches generating tag clouds (Abs.)
and annotating elements with tags that classify the elements with pre-defmed
categories (1 83), Nathan is from the same field of endeavor as the claimed
subjected matter and is therefore analogous to the method of presenting tags
of a tag cloud including generating tags based on parts of speech using a
template as recited in claims 4 and 5. In this light, we cannot agree with
Appellants’ contentions that (i) that Nathan is non-analogous art because
Nathan provides an automated avatar driver with contextual
recommendation ability in order to provide a highly believable virtual avatar
or character with interactive ability and knowledge representation and
recommendation ability (see App. Br. 33—36); and (ii) the Examiner has not
explained how/why Nathan is analogous to Appellants’ invention (see App.
Br. 35-36).
Nathan (see ^flf 83, 84, Tables 1 and 2), taken in combination with
Chen and Park, teaches or suggests (i) generating a combination of tags as
recited in claim 4; and (ii) parts of speech being “a verb, a noun, a pronoun,
an adjective, an adverb, a preposition, a conjunction and an interjection” as
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recited in claim 5. And, Nathan and Chen both pertain to tag clouds, and
more specifically generating combinations of tags based on parts of speech.
Finally, because we agree with the Examiner that it would have been
obvious to modify Chen and Park with Nathan “to provide a method that
create[s] chunks using the tagged parts of speech, thus facilitating
downstream semantic analysis and pattern recognition (See Nathan par
0084)” (Ans. 35), we do not find persuasive Appellants’ arguments that the
combination of Chen, Park, and Nathan fails to teach or suggest the method
of presenting tags in a tag cloud recited in claims 4 and 5.
Summary
In view of the foregoing, we sustain the Examiner’s obviousness
rejection of representative and sole independent claim 1, as well as claims 2,
3, 6, and 7 grouped therewith. For similar reasons as provided for claim 1
supra, and based on the Examiner’s findings and reasoning and the
amplifications provided supra, we also sustain the Examiner’s remaining
obviousness rejection of claims 4 and 5.
DECISION
The Examiner’s obviousness rejections of claims 1—7 under
35 U.S.C. § 103(a) are affirmed.
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). See 37 C.F.R.
§§ 41.50(f), 41.52(b) (2013).
AFFIRMED
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