Ex Parte Bomma

Patent Trial and Appeal Board

Aug 5, 2014

11935758 (P.T.A.B. Aug. 5, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SHASHIDHAR BOMMA
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Appeal 2011-003303
Application 11/935,758
Technology Center 2400
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Before ROBERT E. NAPPI, BRUCE R. WINSOR, and
MINN CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1–20, which constitute all the claims pending in this application.1
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellant’s invention relates to hint-based email address construction.
(See Abstract.) Claim 1, which is illustrative, reads as follows:

1 The real party in interest identified by Appellant is International Business
Machines Corporation. (Br. 1.)
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1. A method of hint-based email address
construction, the method comprising:
receiving in an email address constructor, an email
address hint specified by a user, the email address hint
representing an email address for an email recipient;
parsing, by the email address constructor, the email
address hint for a plurality of hint tokens, each of the hint
tokens specifying a user attribute for the email recipient, and at
least one of the hint tokens specifying an attribute other than the
email recipient’s name, further comprising:
determining an attribute type associated with each
of the hint tokens by looking up each hint token in an
attribute type identification table that associates common
attribute types with particular words; and
selecting, from the attribute type identification
table, the attribute type associated with each hint token;
and
determining, by the email address constructor, the email
address for the email recipient in dependence upon the plurality
of hint tokens.

The Examiner relies on the following prior art in rejecting the claims:
Dougherty US 2002/0035619 Al Mar. 21, 2002
Harrison US 2003/0069880 Al Apr. 10, 2003
Kennewick US 2007/0265850 Al Nov. 15, 2007

Claims 1, 3, 4, 6–8, 10, 11, 13, 15, 16, and 18–20 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Harrison. (Ans. 5.)
Claims 5, 12, and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Harrison and Kennewick. (Ans. 15.)
Claims 2, 9, and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Harrison and Dougherty. (Ans. 19.)
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Application 11/935,758

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Rather than repeat the arguments here, we refer to the Appeal Brief
(“Br.” filed June 29, 2010) and the Answer (“Ans.” mailed Sept. 2, 2010) for
the respective positions of Appellant and the Examiner.

ISSUE
The dispositive issue presented by Appellant’s contentions is as
follows: Did the Examiner err in finding that Harrison teaches “determining
an attribute type associated with each of the hint tokens by looking up each
hint token in an attribute type identification table that associates common
attribute types with particular words,” as recited in claims 1, 8, and 13?

ANALYSIS
In rejecting claims 1, 8, and 13, the Examiner finds that paragraphs 32
and 33 of Harrison disclose the disputed limitation. (See Ans. 6.) In
particular, the Examiner interprets the term “attribute type” as “something
that is associated with a token” and finds that synonyms and hyponyms of a
token described in the cited passages of Harrison constitute attribute types
under the Examiner’s interpretation. (Id.) Appellant contends that Harrison
does not teach or suggest the disputed limitation because a synonym or a
hyponym described in the cited passages of the prior art is not an attribute
type of a hint token. (See Br. 7.) Appellant argues that the Examiner’s
proposed claim interpretation is far too broad because “the plain meaning of
the term ‘attribute type’ is not merely ‘something.’” (Br. 8.) Appellant also
contends that a synonym or a hyponym is not an attribute type under a
“broadest reasonable interpretation consistent with the specification.” (See
Br. 8–9.) Appellant argues that Appellant’s Specification provides examples
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of attribute types such as a location, a given name, an organizational
department, and a company, none of which is a synonym or a hyponym of a
token. (See id.) Appellant, however, does not put forth Appellant’s own
proposed interpretation of “attribute type” or explain why a synonym or a
hyponym would not satisfy the claim limitation under Appellant’s proposed
claim interpretation.
In response, the Examiner elaborates that the Examiner is interpreting
“attribute type” to be “‘something’ (anything) related to the token that can
be classified.” (Ans. 25–26.) Under this interpretation, the Examiner
explains, a hyponym is an attribute type because by knowing the
hyponym—e.g., tulip or daisy—of a term—e.g., flower—“one knows an
attribute of the word, namely, the genus . . . .” (Ans. 26.)
In view of the foregoing, we are not persuaded of error in the
Examiner’s findings and conclusion. We agree with the Examiner that
hyponyms and synonyms described in Harrison constitute “attribute types”
in Appellant’s claims under a broadest reasonable interpretation consistent
with Appellant’s Specification. We further note that paragraph 34 of
Harrison describes identifying an email address or a phone number and
searching for the phone number of the Kansas City store of a particular
company (see Harrison ¶ 34, ll. 3–19), which teaches or suggests using
attribute types such as a location and a company, similar to the attribute type
examples Appellant provided from Appellant’s Specification (see Br. 8).
Accordingly, we are not persuaded that the Examiner erred in
rejecting claims 1, 8, and 13, and therefore sustain the Examiner’s rejection
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of these independent claims.2 Appellant has not separately argued any of the
rejections of the following dependent claims: claims 2–7, which depend
from claim 1; claims 9–12, which depend from claim 8; and claims 14–20,
which depend from claim 13. (See Br. 9–11.) We, therefore, sustain the
Examiner’s rejection of these dependent claims for the same reasons
discussed above with respect to independent claims 1, 8, and 13.

DECISION
The decision of the Examiner to reject claims 1–20 is affirmed.

2 The Patent Trial and Appeal Board is a review forum and not a place of
initial examination. In the event of further prosecution of claims 13–20, or
claims in similar form, we leave to the Examiner to determine whether the
claims recite patent-eligible subject matter under 35 U.S.C. § 101.
Appellant’s Specification does not define the computer readable medium to
exclude transitory media. (See Spec. 26, ll. 5–6 (“Such computer readable
media may be transmission media or recordable media for machine-readable
information”), ll. 10–13 (“Examples of transmission media include
telephone networks . . . and digital data communications networks . . . as
well as wireless transmission media”).) The broadest reasonable
interpretation of “computer readable medium” recited by claim 13 generally
includes transitory propagating signals, especially where, as here,
Appellant’s written description and claim do not preclude this interpretation.
See David J. Kappos, Subject Matter Eligibility of Computer Readable
Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). When the broadest
reasonable interpretation of a claim includes transitory propagating signals,
the claim encompasses non-statutory subject matter. See In re Nuijten, 500
F.3d 1346, 1356–57 (Fed. Cir. 2007). The USPTO has stated that a claim
drawn to such a computer readable medium may be amended to narrow the
claim to cover only statutory embodiments to avoid a rejection under 35
U.S.C. § 101 by adding the limitation “‘non-transitory’” to the claim. See
Kappos, 1351 Off. Gaz. Pat. Office at 212.
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Application 11/935,758

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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

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