Ex Parte Caruntu

Patent Trial and Appeal Board

Dec 23, 2016

13163863 (P.T.A.B. Dec. 23, 2016)

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.
13/163,863 06/20/2011 Alexandru Mihai Caruntu P5321US00 1674
11764 7590
Ditthavong & Steiner, P.C.
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
12/28/2016 EXAMINER
GOFMAN, ALEX N
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
12/28/2016 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):
docket@dcpatent.com
Nokia. IPR @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDRU MIHAI CARUNTU
Appeal 2016-0006881
Application 13/163,863
Technology Center 2100
Before STEPHEN C. SIU, JOHNNY A. KUMAR, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—20, which constitute all of the claims pending in the
application. Claims 21—48 are canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We have reviewed Appellant’s arguments in the Appeal Brief and
Reply Brief, and the Examiner’s response to Appellant’s arguments. We
concur with Appellant’s contention the Examiner erred in rejecting
1 Appellant identifies Nokia Corporation as the real party in interest. App.
Br. 1.
Appeal 2016-000688
Application 13/163,863
independent claims 1 and 11 under 35 U.S.C. § 102(b) as being anticipated
by Colledge2 because the cited portions of Colledge do not disclose the
limitation “a processing of a total number of words ... to determine at least
one threshold criteria,” as recited in claims 1 and 11.3 App. Br. 6—12; Reply
Br. 2-3.
The Examiner cites paragraphs 71 and 79 of Colledge as disclosing
“a processing of a total number of words” and cites paragraph 95 of
Colledge as disclosing “to determine at least one threshold criteria,” which
the Examiner interprets “as ascertaining the threshold criteria once the total
number of words is processed.” Ans. 2-4. In particular, the Examiner finds
paragraph 95 of Colledge discloses “determining/ascertaining” the threshold
criteria after word senses have been processed because it states
“[alternatively, a probability threshold may be set and a probability score
may be assigned to the results of each process.” Id. at 4.
Regarding paragraph 95 of Colledge, Appellant argues as follows:
[T]he Examiner fails to explain how Colledge, in paragraph
[0095] describes the claimed “threshold criteria” in its claimed
context. Colledge, at best, describes a threshold without
relation to the words in the knowledge database. The correlated
“probability threshold” simply determines ranking of the words
but not vice versa. Thus processing the knowledge base does
not itself result in a “threshold criteria” as claimed. Rather, as
previously argued, the “probability threshold” of Colledge is
simply arbitrarily selected by the user.
Reply Br. 3 (see also App. Br. 10-11).
2 Colledge et al. (US 2007/0136251 Al; published June 14, 2007)
(“Colledge”).
3 Although Appellant makes other arguments in the Briefs, we do not
address them because we find this issue is dispositive.
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Appeal 2016-000688
Application 13/163,863
We are persuaded by Appellant’s arguments that the Examiner has
erred. “A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987). Here, for the reasons argued by Appellant, we agree that
paragraph 95 of Colledge does not disclose processing a total number of
words “to determine at least one threshold criteria,” either expressly or
inherently. In particular, we agree with Appellant’s argument that
processing the knowledge base in Colledge does not result in a
determination of a threshold criteria, but instead the “probability threshold”
is arbitrarily set. Accordingly, we do not sustain the rejection of claims 1
and 11 under 35 U.S.C. § 102(b), as well as dependent claims 2—10 and 12—
20.
DECISION
We reverse the Examiner’s decision rejecting claims 1—20.
REVERSED
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