Ex Parte Chen et alDownload PDFPatent Trial and Appeal BoardDec 19, 201613528895 (P.T.A.B. Dec. 19, 2016) Copy Citation 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. 13/528,895 06/21/2012 Guoyou Chen AUS920120148US1 9958 50170 7590 12/19/2016 IBM CORP. (WIP) c/o WALDER INTELLECTUAL PROPERTY LAW, P.C. 17304 PRESTON ROAD SUITE 200 DALLAS, TX 75252 EXAMINER KOVACEK, DAVID M ART UNIT PAPER NUMBER 2659 MAIL DATE DELIVERY MODE 12/19/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GUO YOU CHEN, WILLIAM B. HUBER, SU LIU, and JENNIFER D. MULSOW Appeal 2016-0032671 Application 13/528,8952 Technology Center 2600 Before JOSEPH L. DIXON, NORMAN H. BEAMER, and SCOTT B. HOWARD, Administrative Patent Judges. HOWARD, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 11—14 and 16—25, which constitute all of the claims pending in this application. Claims 1—10 and 15 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants are reminded of their obligation to identify all appeals which “involve an application or patent owned by the appellant or assignee, are known to appellant, the appellant’s legal representative, or assignee, and may be related to, directly affect or be directly affected by or have a bearing on the Board's decision in the pending appeal.” 37 C.F.R. § 41.37(c)(1)(h); see also In re Guoyou Chen, Appeal No. 2016-003290 (PTAB). 2 Appellants identify International Business Machines Corporation as the real party in interest. App. Br. 2. Appeal 2016-003267 Application 13/528,895 THE INVENTION The disclosed and claimed invention is directed to a data processing apparatus and computer program product with “mechanisms for performing dynamic translation substitution based on real-time analysis of user language related activities.” Spec. 11. Claims 11 and 20, reproduced below with the key limitations emphasized, are illustrative of the claimed subject matter: 11. A computer program product comprising a computer readable storage medium having a computer readable program stored therein, wherein the computer readable program, when executed on a computing device, causes the computing device to: automatically track language based user activities occurring via the computing device to at least one other computing device via a communication connection; automatically analyze the language based user activities to determine a relative priority ordering of one or more languages used by a user performing the user activities; automatically generate a sequence of preferred language translation substitutions for outputting messages based on results of the analysis, wherein the sequence comprises two or more preferred language translation substitutions for outputting the messages; automatically apply the sequence to a received message from a process associated with the computing device to generate a translated message using one of the preferred language translation substitutions in the sequence of preferred language translation substitutions, wherein the computer readable program to automatically apply the sequence to the received message further causes the computing device to: traverse, in a sequence order, the preferred language translation substitutions of the sequence; for each preferred language translation substitution in the sequence order: determine whether a source of the received message has a translation catalog file 2 Appeal 2016-003267 Application 13/528,895 corresponding to the first preferred language translation substitution in the sequence order, wherein each translation catalog file comprises a translation in an associated language; responsive to a failure of the source of the received message having the translation catalog file corresponding to the first preferred language translation substitution in the sequence order, determine whether the source of the received message has a translation catalog file corresponding to the next preferred language translation substitution in the sequence order; and responsive to the source of the received message having the translation catalog file corresponding to the next preferred language translation substitution in the sequence order, select the next preferred language translation substitution as a preferred language translation substitution to use in generating the translated message; and generate the translated message using the selected preferred language translation substitution to translate the received message into a different language from a language in which the received nlessage is received; and output the translated message via an output device of the computing device. 20. The computer program product of claim 11, wherein the computer readable program causes the computing device to automatically apply the automatically determined sequence to a received message from a process by overriding a user defined sequence of preferred translation substitutions and giving priority to the automatically determined sequence. REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: 3 Appeal 2016-003267 Application 13/528,895 Godoy Prajapat Waibel US 2003/0046056 A1 Mar. 6, 2003 US 2007/0168450 A1 July 19, 2007 US 2009/0281789 A1 Nov. 12, 2009 US 8,788,259 B1 July 22, 2014Buryak filed June 30, 2011 REJECTIONS Claims 11—14 and 16—22 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Final Act. Claims 11—13 and 16—253 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Buryak in view of Godoy and Prajapat. Final Act. 7—18. Claim 14 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Buryak in view of Godoy, Prajapat, and Waibel. Final Act. 18-20. Claim 11—14 and 16—20 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-10 of co-pending Application No. 13/763,783.4 Final Act. 21-22. 3 Although the heading identifies only claims 11—13, 16—23 and 25 (Final Act. 7), the Examiner provides a basis for rejecting claim 24 (Final Act. 18). Appellants acknowledge this ground of rejection applies to claim 24. See App. Br. 10 (“The Examiner rejects claims 11—13 and 15—25 under 35 U.S.C. 4 Although the Final Action identifies claims 11—20 as rejected on this ground (Final Act. 21; see also App. Br. 30), claim 15 has been cancelled. 3-6. § 103(a). . . .”). 4 Appeal 2016-003267 Application 13/528,895 ANALYSIS We have reviewed the Examiner’s rejection in light of Appellants’ arguments that the Examiner erred.5 In reaching this decision, we have considered all evidence presented and all arguments made by Appellants. Section 101 Rejection Appellants argue the claim limitation “computer readable storage medium” recited in claim 11 is not broad enough to encompass a signal per se. App. Br. 5—10; Reply Br. 2-4. According to Appellants, (1) the Specification draws a distinction between computer readable storage medium and computer readable signal medium and (2) a computer readable storage medium is within the statutory category of a manufacture. Id. (citing Spec. 123—25; In reNuijten, 500 F.3d 1346 (Fed. Cir. 2007)). Appellants also argue that our reviewing court in Nuijten “noted that the Board allowed a claim directed to a storage medium because a storage medium is a ‘manufacture,’ which is statutory, drawing a clear distinction between a signal and a storage medium.” Reply Br. 4. Appellants also rely on Ex Parte Hu, 2012 WL 439708 (BPAI Feb. 9, 2012) for the proposition that “computer-readable storage medium” qualifies as patentable subject matter. App. Br. 7—8; Reply Br. 4. The Examiner finds claim 11 is not limited to a non-transitory medium and therefore is broad enough to encompass non-patentable subject 5 Rather than reiterate the entirety of the arguments of Appellants and the positions of the Examiner, we refer to the Appeal Brief (filed July 27, 2015); the Reply Brief (filed Jan. 27, 2016); the Final Office Action (mailed Mar. 12, 2015); and the Examiner’s Answer (mailed Dec. 1, 2015) for the respective details. 5 Appeal 2016-003267 Application 13/528,895 matter such as a signal. Final Act. 5; Ans. 6—7, 11. The Examiner further determines that the Specification sections cited by Appellants failed to limit the claim limitation computer readable storage medium to patentable subject matter. Ans. 5—6.6 If the broadest reasonable interpretation of a claim covers non- patentable subject matter such as a transitory signal, the claim is unpatentable under 35 U.S.C. § 101. See Nuijten, 500 F.3d at 1356—57 (transitory embodiments are not directed to statutory subject matter). Unless limited to non-transitory embodiments, the broadest reasonable interpretation of the phrase “computer readable storage medium” includes both transitory and non-transitory embodiments and would be unpatentable under section 101. Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential). When determining whether a “computer readable storage medium” limitation covers non-patentable subject matter, the following factors must be considered: (1) Extrinsic evidence relevant to the meaning as would be understood by one skilled in the art at the time of the effective filing date of the patent application. . . . (2) Whether there is express intent in applicant’s specification to limit the term, i.e., applicant’s specification is not silent as to the meaning of such terms. (3) Whether the claim expressly limits the medium to “non-transitory” embodiments. 6 The Examiner also concludes claim 11 is directed to software per se, and is therefore not directed to patentable subject matter. Final Act. 4, 6. Because, as discussed below, we agree with the Examiner that the claims are broad enough to encompass non-patentable subject matter such a signal, we need not address the Examiner’s alternative rejection based on claiming software per se. 6 Appeal 2016-003267 Application 13/528,895 (4) Whether the claim implicitly limits the medium to “non-transitory” embodiments. The most common form of this is the use of “means plus function” elements in the claim (i.e., a true Beauregard type claim). Such means plus function elements are limited by statute to the corresponding structure in the specification and equivalents thereof. Such a structure requirement limits the claim to non-transitory embodiments. Mewherter, 107 USPQ2d at 1860 n.5. Similar to the facts of Mewherter, Appellants’ Specification does not limit “computer readable storage medium” such that it excludes transitory propagating signals. See Spec. ]Hf 23—25. Although the Specification states that a computer readable signal medium may be a signal and that a computer readable signal medium is not a computer readable storage medium, the Specification does not define readable storage medium such that it cannot be a signal per se. See Spec. ]Hf 24—25. Accordingly, Appellants have not persuaded us the Examiner erred. We are also unpersuaded by Appellants reliance on Hu and Nuijten. Hu is a non-precedential opinion and we are bound to apply this Board’s precedential decision of Mewherter. In Nuijten, our reviewing Court merely noted that the storage medium claim (claim 15) “is not before us on appeal.” 500 F.3d at 1356 n.6. Accordingly, we sustain the Examiner’s rejection of claims 11—14 and 16—22 as being directed to non-statutory subject matter.7 7 We note the USPTO has suggested amending claims such as these so that the claims only read on non-transitory statutory embodiments. See David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. & Trademark Office 212 (Feb. 23, 2010). 7 Appeal 2016-003267 Application 13/528,895 Claims 11—13, 17, 18, and 21—25 (Section 103 Rejection) Appellants argue the Examiner erred in finding Buryak teaches the “automatically generate” limitation recited in claim 11.8 App. Br. 13—20; Reply Br. 5—15. According to Appellants, “the instant claims are directed to a sequence of preferred language translation substitutions for outputting messages, where there are two or more translation substitutions for the preferred language.” Reply Br. 8. Appellants further argue that preferred language translation substitutions are not a list of preferred languages selected by the user but, instead, are “translation substitutions for the preferred language” based on the results of an analysis. Reply Br. 6. According to Appellants, Buryak does not teach that limitation; instead, Buryak merely teaches a list of preferred language. App. Br. 16, 18; Reply Br. 6. The Examiner finds Buryak teaches: obtaining] a set of preferred languages for the user; language indicators may be weighted, averaged, or otherwise analyzed to determine one or more languages that will likely be preferred by the user; preferred languages may be ordered according to a determined likelihood that each language is the user’s preferred language. Final Act. 8 (citing Buryak 1:53—60, 4:18—24, 6:64—66); see also Ans. 13 (citing Buryak 6:36-45, 6:64—66, 7:2—5, 7:45—52). The Examiner further finds Buryak teaches “confidence scores to determine a set of preferred 8 Appellants also argue the Examiner erred in finding Prajapat and Godoy teach the disputed limitation. See App. Br. 16—17, 19-20. However, because we find the Examiner did not err in finding Buryak teaches the disputed limitation, we need not address the Examiner’s alternative grounds and Appellants’ arguments regarding the other references are moot. 8 Appeal 2016-003267 Application 13/528,895 languages for a user [and] identifying the preferred languages relative to other languages.” Final Act. 9 (citing Buryak Fig. 6, 10:16—20, 10:28—32, 11:17—23). The Examiner finds, based on those teachings, Buryak teaches the “automatically generate” limitation recited in claim 1. Final Act 8—9; see also Ans. 11—13. We are not persuaded by Appellants’ argument that the Examiner erred. Although Buryak teaches using an “explicit user preference” if one exists, Buryak also teaches generating a list of additional preferred languages based on various factors such as “email language, browser history, and social network language.” Buryak 6:16-45. That list of additional preferred languages — a list of potential languages for translations that are not selected by the user — is a “sequence of preferred language translation substitutions” as recited in claim 11. Although Buryak uses different language, there is no requirement in an obviousness analysis for the prior art to “contain a description of the subject matter of the appealed claim in ipsissimis verbis.'1'’ In re May, 574 F.2d 1082, 1090 (CCPA 1978). Appellants further argue that because the Examiner also finds Prajapat teaches the disputed limitation, the Examiner acknowledges that there are deficiencies in the findings regarding Buryak. App Br. 16. We are not persuaded by Appellants’ argument that the Examiner erred. As the Examiner notes, and we agree, just “because Prajapat provides teachings that can be applied to particular limitations also taught by Buryak does not mean that Buryak is admitted to be deficient in this regard. It simply means that both references provide teachings applicable to one or more of the same limitations of the claim language.” Ans. 14. 9 Appeal 2016-003267 Application 13/528,895 Appellants also argues that if the user is not multilingual, then Buryak “only utilizes the identified primary preferred language as the language with which to perform translations.” App. Br. 15. Claim 11 is directed to computer readable instructions that causes a computer device to perform certain steps. Appellants’ argument ignores the instructions as a whole and focuses on what happens in a limited circumstance. That is, Appellants do not address the situation where the user is multilingual and has only identified one language as a preferred language. See Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002 (Fed. Cir. 2016) (“It does not matter that the use of alphabetical order for locations would not always result in farther- over-nearer ordering. It is enough that the combination would sometimes perform all the method steps, including farther-over-nearer ordering.”) (citing Hewlett-Packard Co. v. MustekSys., Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003)). Because Appellants’ argument is not commensurate with the scope of the claims, it is unpersuasive. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Appellants also argue the Examiner erred in finding Godoy teaches the “determine”, “responsive to a failure” and “responsive to the source” limitations recited in claim 11. App. Br. 20—23; Reply Br. 15—18. According to Appellants, Godoy does not teach that the source of the received messages has the “translation catalog file.” Id.', see also Reply Br. 16. The Examiner finds Buryak teaches “the sequence of preferred language translation substitution” and the “received message” and Godoy teaches the steps of determining if there is a translations corresponding to a specific list of languages. Final Act. 8—11. 10 Appeal 2016-003267 Application 13/528,895 Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for obviousness is not whether the claimed invention is expressly suggested in any one or ah of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Because Appellants’ argument focuses solely on the teachings of Godoy and does not address the combined teachings of Buryak and Godoy, we are not persuaded by Appellants’ argument that the Examiner erred. Accordingly, we sustain the Examiner’s rejection of claim 11 as being unpatentable over Buryak in view of Godoy and Prajapat, along with the rejection of claim 23, which is argued on the same grounds, and claims 12, 13, 17, 18, 21, 22, 24, and 25, which are not argued separately. Claim 16 (Section 103 Rejection) Appellants argue the Examiner erred in finding Buryak teaches “generat[ing] the translated message by utilizing the translation catalog file associated with the source of the received message which matches the selected preferred language translation substitution,” as recited in claim 16. App. Br. 24—25. Instead, according to Appellants, Buryak teaches using a translation catalog file. Id The Examiner finds the combination of “Buryak in view of Godoy and in further view of Prajapat discloses or renders obvious ah limitations of claim 11 as applied above,” and that Buryak, when applied to that 11 Appeal 2016-003267 Application 13/528,895 combination, teaches the additional limitation of claim 16. Final Act. 14. Specifically, the Examiner finds Buryak teaches “providing said output in the preferred language.” Id. Because Appellants’ argument is directed to Buryak alone and not the combination of the teachings of the three references as applied by the Examiner, we are not persuaded that the Examiner erred. See Merck, 800 F.2d at 1097; Keller, 642 F.2d at 425. Instead, we agree with and adopt the Examiner’s findings. Accordingly, we sustain the Examiner’s rejection of claim 16 as being unpatentable over Buryak in view of Godoy and Prajapat. Claim 19 (Section 103 Rejection) Appellants argue because “Buryak merely utilizes the identified user’s primary preferred language, which may or may not be based on the user preference,” it does not teach “providing a priority of a user defined sequence of preferred translation substitutions over the automatically determined sequence,” as recited in claim 19. App Br. 25—27. The Examiner finds Buryak teaches “an exemplary order in which a user’s explicit preference is given highest priority in the order of preferred languages.” Final Act. 16 (citing Buryak 6:15—18). We agree with the Examiner. Buryak teaches various rules to determine which language to use, including a user selected language. Buryak 5:65—6:7. Under those rules, if the user selects a language, the selected language is used over the preferred languages that may be generated based on “email language, browser history, and social network language.” Buryak 6:17—18; accord App. Br. 26 (“In this section, Buryak describes that 12 Appeal 2016-003267 Application 13/528,895 the rule set specifies an order in which obtained language indicators should be considered, for example, explicit user preference, email language, browser history, and social network language. That is, an explicit user preference language indicator may be the highest-ordered, the email language indicator the second-highest, and so on.”). In other words, the user selected language is used and not the generated sequence of preferred language translation substitutions. Accordingly, we sustain the Examiner’s rejection of claim 19 as being unpatentable over Buryak in view of Godoy and Prajapat. Claim 20 (Section 103 Rejection) Appellants argue Buryak describes various rules for determining a primary preferred language, such as being “based on a several language indicators, such as counting the number of indicators that suggest each language.” App. Br. 28 (citing Buryak 6:15—18, 6:37-45). However, Appellants argue because “none of these sections override a user defined sequence of preferred translation substitutions and give priority to the automatically determined sequence,” the Examiner erred in finding Buryak teaches the additional limitation of claim 20. App. Br. 28. The Examiner finds Buryak teaches “that the rules may assign any order to the indicators [and] an exemplary order in which a user’s explicit preference is given highest priority in the order of preferred languages.” Final Act. 17 (citing Buryak 6:3—4, 15—18, 37-45). The Examiner further finds none of the rules “in the example [use] explicit user preference.” Id. We are persuaded by Appellants’ arguments as the Examiner has not identified sufficient evidence or provided sufficient explanation as to how 13 Appeal 2016-003267 Application 13/528,895 Buryak teaches “overriding a user defined sequence of preferred translation substitutions and giving priority to the automatically determined sequence,” as recited in claim 20. The only specific set of rules in the cited section of Buryak indicates that the “explicit user preference language indicator may be the highest ordered” and that other indicators are used “[i]f no explicit user preference indicator exists.” Buryak 6:15—36. The cited section of Buryak does not teach or suggest overriding that explicit user preference. Therefore, based on the current record, we conclude that the Examiner’s finding is not supported by Buryak. Accordingly, we are constrained on this record to reverse the Examiner’s rejection of claim 20. Claim 14 (Section 103 Rejection) With respect to dependent claim 14, Appellants merely contend that because the additional reference used in the rejections of that claim (Waibel) does not cure the shortcomings of the other references applied against claim 11, the Examiner failed to make a prima facie case of obviousness for these claims. App. Br. 29—30. Because we determine that the rejection of claim 11 is not erroneous, we sustain the rejection of this claim. Provisional Obviousness-Type Double Patenting Appellants “request that this provisional rejection be held in abeyance until such time as one or both of the co-pending applications are indicated to be allowable.” App. Br. 30. We decline to do so as the Appeal Brief "shall explain why the examiner erred as to each ground of the rejection contested by appellant.” 37 C.F.R. § 41.37(c)(iv) (emphasis added). 14 Appeal 2016-003267 Application 13/528,895 Appellants have not identified any errors in the Examiners conclusions regarding the provisional obviousness-type double patenting rejection. “If an appellant fails to present arguments on a particular issue — or, more broadly, on a particular rejection — the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.” Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Accordingly, we summarily affirm the provisional rejection of claims 11—14 and 16—20 on the ground of nonstatutory double patenting over claims 1—10 of copending Application No. 13/763,783. DECISION For the above reasons, we affirm the Examiner’s decisions rejecting claims 11—14, 16—19, and 21—25. For the above reasons, we affirm the Examiner’s decisions rejecting claim 20 under 35 U.S.C. § 101 as directed to non-statutory subject matter. For the above reasons, we affirm the Examiner’s decisions rejecting claim 20 on the ground of nonstatutory double patenting over claims 1—10 of co-pending Application No. 13/763,783. For the above reasons, we reverse the Examiner’s decision rejecting claim 20 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 15 Copy with citationCopy as parenthetical citation