Ex Parte Berkowitz

Board of Patent Appeals and Interferences

Jun 29, 2010

11137594 (B.P.A.I. Jun. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SIDNEY BERKOWITZ
____________

Appeal 2009-010773
Application 11/137,594
Technology Center 2600
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Decided: June 30, 2010
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Before KENNETH W. HAIRSTON, THOMAS S. HAHN
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. §§ 6(b) and 134 from the final
rejection of claims 1 and 2. We will reverse, and enter a new ground of
rejection.

Appeal 2009-010773
Application 11/137,594

2
The disclosed invention relates to a method of identifying a topic of a
text by using the singular form of each noun in the text (Fig. 1; Spec. 3-7;
Abstract).
Claim 1 is the only independent claim on appeal, and it reads as
follows:
1. A method of identifying a topic of a text, comprising the steps of:
a) receiving the text, where the text includes words;
b) identifying each unique word in the text that is a noun;
c) determining a singular form of each noun identified in step (b);
d) creating combinations of the singular forms of the nouns
determined in step (c), where the number of singular forms of the nouns in
each combination is a user-definable;
e) determining a frequency of occurrence in the text of each noun
identified in step b);
f) assigning a score to each singular form noun, where the score of
each singular form noun is the frequency of occurrence of the corresponding
noun determined in step (e);
g) assigning a score to each combination of singular form nouns,
where the score of each combination of singular form nouns is a sum of the
scores of the singular form nouns in the combination;
h) selecting a user-definable number of scores of singular form nouns
that are greatest in value;
i) selecting a user-definable number of scores of combinations of
singular form nouns that are greatest in value; and
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j) returning the singular forms of nouns and the combinations of
singular forms nouns that correspond to the scores selected in step (h) and
step (i) as the topic of the text.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nelson US 5,937,422 Aug. 10, 1999
Hu US 2004/0029085 A1 Feb. 12, 2004
The Examiner rejected claims 1 and 2 under 35 U.S.C. § 103(a) based
upon the teachings of Nelson and Hu.
According to the Examiner (Final Rej. 9, 10), Nelson describes steps
(a) through (c) of claim 1, and Hu describes steps (d) through (j) of claim 1.
The Examiner is of the opinion (Final Rej. 10, 11) that it would have been
obvious to one of ordinary skill in the art “to utilize a system that combines
singular forms of the nouns in identifying topics of interest” . . . “to make for
a [sic: an] easier topic identification since word combinations are more
likely to indicate the topic of text.”
Appellant acknowledges (Br. 6, 7) that Nelson describes steps (a)
through (c) and Hu describes steps (e) and (f), but argues (Br. 8, 9, and 11-
15) that the applied references neither teach nor suggest steps (d) and (h)
through (j).
Based upon the foregoing, we have to determine whether the
Examiner erred by finding that the applied references describe steps (d) and
(h) through (j) of claim 1.

Appeal 2009-010773
Application 11/137,594

4
We agree with the Examiner that Nelson describes: step (a) of claim 1
(i.e., receiving a document in the form of text) (col. 3, ll. 24, 25); step (b) of
claim 1 (i.e., identifying each unique word in the text that is a noun) (col. 3,
ll. 28, 29); and step (c) of claim 1 (i.e., determining a singular form of each
noun identified in step (b)) (col. 3, ll. 28, 29). By determining the number of
times a word (e.g., a noun) appears in the document, Nelson also performs
step (e) of claim 1 (i.e., determining a frequency of occurrence in the text of
each noun identified in step (b) (col. 3, ll. 35-38). After performing steps (a)
through (c) and (e), Nelson forms a tree word list with scores for a first noun
(e.g., dog), a tree word list with scores for a second noun (e.g., wolf) (Figs.
4, 5; col. 7, l. 37 to col. 8, l. 26), and then creates a list of the greatest
occurrences of terms that appear in both lists (Fig. 6; col. 8, ll. 27 to 31;
Abstract).
We do not, however, agree with the Examiner that Hu describes steps
(d) through (j) of claim 1. We find that Hu describes: step (a) of claim 1
(i.e., receiving a document in the form of text) (¶ 0022); step (b) of claim 1
(i.e., identifying each unique word in the text that is a noun) (¶ 0022), and
step (e) of claim 1 (i.e., determining a frequency of occurrence in the text of
each noun identified in step (b)) (¶ 0040). After performing steps (a), (b),
and (e), Hu searches a lexical database for a lexical relationship of each
identified noun to other words (Fig. 8a; ¶¶ 0039, 0040, and 0060).
Based upon the foregoing, we agree with Appellant that neither
Nelson nor Hu describes noun operations as set forth in steps (d) and (h)
through (j) of claim 1. Thus, the Examiner erred in finding that the applied
references teach or suggest steps (d) and (h) through (j) of claim 1.
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Application 11/137,594

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In summary, the obviousness rejection of claims 1 and 2 is reversed
because the Examiner failed to establish a factual basis to support a legal
conclusion of obviousness. In re Fine, 837 F.2d 1071, 1073 (Fed. Cir.
1988).

NEW GROUND OF REJECTION
Claims 1 and 2 are rejected under 35 U.S.C. § 101 for nonstatutory
subject matter because the broadly recited method of identifying a topic of a
text can be performed by a human1 reviewing textual material. Stated
differently, the claimed method is not limited to one of the statutory classes
of subject matter (e.g., a machine).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . .

1 At the oral hearing, counsel for Appellant acknowledged that method claim
1 is broad enough to read on a human reviewing a text for nouns and noun
combinations.
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(2) Request rehearing. Request that the proceeding be reheard under
§41.52 by the Board upon the same record. . . .
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).
REVERSED; 37 C.F. R. § 41.50(b)

KIS

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