11094078 (B.P.A.I. Apr. 29, 2011)

Ex Parte Cucerzan

Board of Patent Appeals and InterferencesApr 29, 2011

11094078 (B.P.A.I. Apr. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte SILVIU P. CUCERZAN ____________ Appeal 2009-008190 Application 11/094,078 Technology Center 2100 ____________ Before JEAN R. HOMERE, JOHN A. JEFFERY, and ST. JOHN COURTENAY III, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 1-20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We Affirm-in-Part. Appeal 2009-008190 Application 11/094,078 2 INVENTION Appellant’s invention relates generally to spell checkers. More particularly, the invention on appeal is directed to systems and methods for forming a spell checker of input text that is related to a target data collection based on query logs of a source data collection. (Spec. 1). Claim 1 is illustrative: 1. A method of forming a target error model to facilitate spell checking input text related to a target data collection comprising steps of: a) providing a source query log containing user queries to at least one source data collection; b) generating target relational data based on the source query log including corrective substring suggestions that relate to the target data collection and corresponding misspelled substrings for the corrective substring suggestions extracted from the source query log; c) building a target error model using the target relational data including target statistical occurrence data for the substrings of the target relational data derived from the source query log; and d) storing the target error model on a computer readable medium. Rejections 1. Claims 1-7, 9-15, and 17-20 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Shazeer (US 7,194,684 B1). 2. Claims 8 and 16 stand rejected under 35 U.S.C. § 103(a) as being Appeal 2009-008190 Application 11/094,078 3 unpatentable over the combination of Shazeer and Schabes (US 2004/0093567 A1). 3. Claims 17-20 stand rejected under 35 U.S.C. §101 as being directed to non-statutory subject matter. Rejection under § 102 ISSUE Based upon our review of the administrative record, we have determined that the following issue is dispositive in this appeal regarding the rejection under §102: Did the Examiner err in finding that Shazeer discloses building a target error model using the target relational data including target statistical occurrence data for the substrings of the target relational data derived from the source query log, within the meaning of independent claims 1, 10, and 17? (emphasis added) (See App. Br. 14). FACTUAL FINDINGS (FF) 1. Appellant’s specification states that matches between the corrective substring suggestions of the source relational data 278 and the named entities 288 are selected as the source relational data 284 along with their corresponding misspelled substrings and output by the comparator 287. (Spec. 25, ll. 1-3). Appeal 2009-008190 Application 11/094,078 4 2. Appellant’s Specification states that the target error model is built by a target error model generator 289 based on the target relational data 284. (Spec. 25, ll. 23-25). 3. Appellant’s Specification states that the target error model includes target statistical occurrence data 290 corresponding to the source statistical occurrence data 270 for the corrective substring suggestions and the corresponding misspelled substrings contained in the target relational data 284. (Spec. pg. 25, l. 25 – pg. 26 l. 1). 4. The Examiner maps the “database of contexts” described in Shazeer (col. 2, l. 25-67) to the claimed “target error model,” which the Examiner interprets as a “database of corrective suggestions in response to misspelled text.” (Ans. 4). ANALYSIS We begin our analysis by noting that the issue before us on appeal involves the following limitations that are recited in commensurate form in each independent claim before us on appeal: building a target error model using the target relational data including target statistical occurrence data for the substrings of the target relational data derived from the source query log; (Claim 1)(emphasis added). Appellant contends, inter alia, that the aforementioned limitations are not disclosed by Shazeer. (App. Br. 14-15). The Examiner broadly reads the claimed “target error model” on Shazeer’s “database of contexts.” (FF 4). Appeal 2009-008190 Application 11/094,078 5 At the outset, we find unpersuasive the Examiner’s response that because the database of contexts (target error model) exists, it must have been formed (Ans. 20), because Appellant has claimed a particular manner of forming or building the claimed target error model. Based upon our review of the evidence, we are in accord with the Appellant’s contention that “[w]hile Appellant agrees that the ‘database of contexts’ cited as the target error model must be formed in some manner, its existence does not disclose any particular method of forming a target error model.” (App. Br. 11)(underline in original). We note that Appellant refers to various embodiments A-F of Shazeer where the corresponding portions of Shazeer are copied on pages 8-10 of the Brief. In particular, embodiment B is copied on page 8 of the Brief, and embodiments C and E of Shazeer are copied on page 9 of the Brief. As pointed out by Appellant, “the Examiner found [Shazeer’s] spell-checking embodiment C [col. 2, ll. 45-63] to disclose ‘statistical occurrence data of target data’ and the combination of the spell-checking embodiments C and E [col. 3, ll. 1-15] to disclose ‘use of statistical data to determine and formulate corrective suggestions for input queries.’” (App. Br. 15). Appellant contends that “[t]hese findings, even if taken as true, fail to disclose the building step of claim 1.” (Id.). Appellant further contends: First, there is no discernible interaction or relationship between the distinct spell-checking embodiments C and E of Shazeer, which the Examiner contends. Second, as discussed above, the Examiner has yet to identify the element of Shazeer that corresponds to the "source query log" and the Examiner has not identified any relationship between such a source query log and the elements of the building step as provided in Appeal 2009-008190 Application 11/094,078 6 claim 1. Third, there is no disclosed relationship between the cited elements of the spell-checking embodiments C and E and the cited "target error model" (i.e., database of contexts of the spell-checking embodiment B [col. 2, ll. 22-44]) of Shazeer, as the Examiner contends. Thus, there is no disclosure of the spell-checking embodiments C and E forming the database or corpus of the spell- checking embodiment B (i.e., cited target error model), as the Examiner contends. Also with regard to the building step, the Examiner states that[:] As noted previous[ly,] Shazeer does in fact teach building or generation of a target error model, thus the statistical data associated with the target relational data is used to build a target error model[.] It is difficult to understand the Examiner's logic here. The Examiner appears to contend that it is inherent in the existence of the "database of contexts" of the spell- checking embodiment B (i.e., target error model), that it is built using the cited "statistical data" of the spell- checking embodiment C with the cited "relational data” of the spell-checking embodiment D/Col. 10, lines 1-11. Shazeer provides no support for this finding. (App. Br. 15). We observe that in the “Response to Argument” section of the Answer, the Examiner fails to address the question of separate, distinct embodiments being relied upon in the context of anticipation. (Ans. 20-24). In particular, regarding forming or building the claimed “target error model,” the Examiner essentially restates the basis for the rejection in the response: Appeal 2009-008190 Application 11/094,078 7 As noted previously Shazeer teaches (column 2, lines 1- 4) (column 2, lines 4-11, 25-31, column 10, lines 1-11) building or forming of a target error model. Shazeer further teaches (column 3, lines 1-15) use of relational data (noted above) which includes target statistical occurrence data (column 3, lines 26-36) from the query logs. (Ans. 22). Based upon our review of the evidence, we agree with the positions articulated by the Appellant regarding the Examiner’s reliance on various embodiments of Shazeer in the anticipation rejection. (App. Br. 15). As pointed out by Appellant, the Examiner reaches a finding of anticipation by combining separate, distinct embodiments of Shazeer. (Id.). In particular, the respective portions of Shazeer’s columns 2, 3, and 10 that are relied on by the Examiner refer to different disclosed embodiments, as clearly indicated by the first sentence of each paragraph in Shazeer’s columns 2 and 3, and the first sentence of each of the first two paragraphs of column 10: e.g., “According to another general example embodiment of the present invention . . . .” (col. 2, ll. 22-23), “In another example embodiment of the present invention . . . .” (col. 3, l. 1), “According to a further example embodiment of the present invention . . . .” (col. 10, ll. 1-2). While “combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness,” Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009), we note that the court in Boston Scientific Scimed was considering a question of obviousness, in contrast to the question of anticipation presented here. In the context of anticipation, a prior art reference anticipates the claimed invention under 35 U.S.C. § 102 only if every element of a claimed Appeal 2009-008190 Application 11/094,078 8 invention is identically shown in that single reference, arranged as they are in the claims. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). According to Appellant’s independent claims (and Specification), the claimed target error model is formed or built using target relational data that includes target statistical occurrence data for the substrings of the target relational data derived from the source query log. (FF 1-3). On this record, we do not find, and the Examiner has not established, that the target statistical occurrence data the Examiner finds is disclosed by one of Shazeer’s embodiments in column 2, lines 45-63 (in the rejection of claim 1, Ans. 5), and later finds is disclosed in another embodiment of Shazeer in column 3, ll. 26-36 ( “Response to Arguments” Ans. 22) is included in the target relation data (the Examiner finds is disclosed in another embodiment of Shazeer in col. 10, ll. 1-11, Ans. 5) that is used to build the target error model the Examiner references in yet another embodiment of Shazeer. (FF 4; Shazeer (col. 2, l. 25-67). Because of the Examiner’s reliance on multiple distinct embodiments in Shazeer, we are in accord with the Appellant that the elements of the claimed invention are not identically shown in the reference, arranged as they are in the claims.1 Therefore, on this record, we agree that the target error model is not built or generated in the manner claimed. (Claims 1, 10, 1 To anticipate under § 102, the prior art reference “must not only disclose all elements within the four corners of the document, but must also disclose those elements arranged as in the claim.” Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (citation and internal quotation marks omitted). “Thus, it is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 1371. (underline added). Appeal 2009-008190 Application 11/094,078 9 17). We note that the aforementioned limitations argued by Appellant are recited in commensurate form in each independent claim before us on appeal. Therefore, for essentially the same reasons argued by Appellant, and for the reasons further discussed above, we reverse the Examiner’s anticipation rejection for each independent claim on appeal (Claims 1, 10, and 17). Because we have reversed the Examiner’s rejection of each independent claim on appeal, we also reverse the Examiner’s anticipation rejection for dependent claims 2-7, 9, 11-15, and 18-20. §103 rejection of claims 8 and 16 Regarding the § 103 rejection of dependent claims 8 and 16, Appellant contends that “[c]laims 8 and 16 are nonobvious in view of the cited references at least due to the reasons set forth above with regard to independent claims 1 and 10, from which they depend.” (App. Br. 22). However, we note that that Appellant’s arguments regarding the Examiner’s improper reliance on separate, distinct, embodiments of Shazeer in the context of anticipation are not applicable to the Examiner’s reliance upon separate embodiments of Shazeer (and the secondary Schabes reference) in the context of obviousness. See Boston Scientific Scimed, Inc. 554 F.3d at 991 (“combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness”). Therefore, because Appellant has not shown reversible error2 in the 2 See In re Jung, No. 2010-1019, 2011 WL 1235093, at *7 (Fed. Cir. Mar. 28, 2011) (“Jung argues that the Board gave improper deference to the examiner’s rejection by requiring Jung to ‘identif[y] a reversible error’ by the examiner, which improperly shifted the burden of proving patentability Appeal 2009-008190 Application 11/094,078 10 Examiner’s obviousness rejection of dependent claims 8 and 16, we sustain the Examiner’s § 103 rejection of these claims.3 §101 Rejection ISSUE Did the Examiner err in concluding that claims 17-20 are directed to non-statutory subject matter? (See Ans. 24). FACTUAL FINDINGS (FF) 5. Appellant’s Specification discloses that by way of example, and not limitation, that computer readable media may comprise computer storage media and communication media. (Spec. 10, ll. 2-4)(emphasis added). 6. Appellant’s Specification further discloses: Communication media typically embodies computer readable instructions, data structures, program modules or other data in a modulated data signal such as carrier wave or other onto Jung. Decision at 11. This is a hollow argument, because, as discussed above, the examiner established a prima facie case of anticipation and the burden was properly shifted to Jung to rebut it. . . . ‘[R]eversible error’ means that the applicant must identify to the Board what the examiner did wrong . . . .”). 3 We decline to set forth new grounds of rejection under §103 in this Decision. But cf. Avantis Pharma Deutschland GmbH v. Lupin, Ltd., 499 F.3d 1293, 1300 (Fed. Cir. 2007); Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319-20 (Fed. Cir. 2007) (law of the case that a dependent claim was obvious means the parent claim must also have been obvious); In re Muchmore, 433 F.2d 824, 824-25 (CCPA 1970) ("Since we agree with the [B]oard's conclusion of obviousness as to these narrow claims, the broader claims must likewise be obvious."). We leave this question of obviousness to the Examiner in the event of further prosecution. Appeal 2009-008190 Application 11/094,078 11 transport mechanism and includes any information delivery media. The term “modulated data signal” means a signal that has one or more of its characteristics set or changed in such a manner as to encode information in the signal. By way of example, and not limitation, communication media includes wired media such as a wired network or direct-wired connection, and wireless media such as acoustic, FR, infrared and other wireless media. (Spec. 10, ll. 17-29) (emphasis added) ANALYSIS (§ 101) Appellant contends that claim 17 “manifestly provides an apparatus having a useful, concrete, and tangible result.” (App. Br. 26). In particular, Appellant contends that the resultant formation of the target error model represents a useful result, regardless of the Examiner’s interpretation of its physical state. (App. Br. 27). Regarding Appellant's contentions on page 26 of the Brief, we note that our reviewing court has determined that the “useful, concrete, and tangible result” test associated with State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1373 (Fed. Cir. 1998) is inadequate. In re Bilski, 545 F.3d 943, 959-60 (Fed. Cir. 2008) (en banc); see also Bilski v. Kappos, 130 S.Ct. 3218, 3231 (2010) (“[N]othing in today’s opinion should be read as endorsing interpretations of § 101 that the [CAFC] has used in the past. See, e.g., State Street, 149 F.3d, at 1373; AT&T Corp., 172 F.3d, at 1357.”). Therefore, we find Appellant’s § 101 argument unavailing to the extent that it relies on the “useful, concrete and tangible” test of State Street. (See App. Br. 26-27). We also refer Appellant to the Feb. 23, 2010 “Subject Matter Eligibility of Computer Readable Media” policy statement by PTO Director Appeal 2009-008190 Application 11/094,078 12 David J. Kappos in the Official Gazette of the USPTO (reproduced in part below): The United States Patent and Trademark Office (USPTO) is obliged to give claims their broadest reasonable interpretation consistent with the specification during proceedings before the USPTO. See In re Zletz, 893 F.2d 319(Fed. Cir. 1989) (during patent examination the pending claims must be interpreted as broadly as their terms reasonably allow). The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. See MPEP 2111.01. When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter) and Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2. 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010), available at http://www.uspto.gov/web/offices/com/sol/og/2010/week08/TOC.htm#ref20 This reasoning is applicable here. We also conclude that the claimed “source query log,” “target relational data generator,” and “target error model generator” of claim 17 are directed to software per se. Thus, we conclude the scope of claim 17 covers non-statutory subject matter under § 101. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007). Therefore, we sustain the Examiner’s rejection of independent claim 17 and dependent claims 18-20 (not argued separately) under § 101 because the Appeal 2009-008190 Application 11/094,078 13 broadest reasonable interpretation of the claimed computer-readable medium covers transitory propagating signals per se.4 DECISION We reverse the Examiner’s § 102 rejection of claims 1-7, 9-15, and 17-20. We affirm the Examiner’s § 103 rejection of claims 8 and 16. We affirm the Examiner’s §101 rejection of claims 17-20. ORDER AFFIRMED IN PART TL/pgc 4 “[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. . . . [C]laims may embrace ‘different subject matter than is illustrated in the specific embodiments in the specification.’” Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (citations and internal quotation marks omitted).