Ex Parte Gail et al

Patent Trial and Appeal Board

Apr 18, 2016

11673173 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111673,173 0210912007
48062 7590 04/20/2016
RYAN, MASON & LEWIS, LLP
1175 Post Road East
2nd Floor
Westport, CT 06880
FIRST NAMED INVENTOR
H. Richard Gail
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
YOR920060424US 1 2155
EXAMINER
SCHALLHORN,TYLERJ
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
04/20/2016 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):
ctoffice@rml-law.com
kmm@rml-law.com
mjc@rml-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte H. RICHARD GAIL, SIDNEY L. HANTLER, MEIR M. LAKER,
JONATHAN LENCHNER and DANIEL MILCH
Appeal2014--003113
Application 11/673, 173
Technology Center 2100
Before ST. JOHN COURTENAY III, CATHERINE SHIANG and
KAMRAN JIVANI, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-25, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Invention
The claimed invention on appeal is directed to "techniques for real-
time spelling correction of words in documents and more particularly, to
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Application 11/673, 173
techniques for automatically detecting spelling errors in one or more
documents, for example, during the creation of a lexicon comprised of words
from the documents." (Spec. 1 ).
Illustrative Claim
1. A method for detecting a spelling error in one or more
documents, comprising:
[L 1] obtaining a maximum edit distance at which a word, w, is
to be considered a possible misspelling of another word, w';
[L2] determining if at least one given word in said one or more
documents satisfies a predefined misspelling criteria, wherein
said predefined misspelling criteria comprises said at least one
given word having a frequency below a predefined low
threshold and said at least one given word being within the
obtained maximum edit distance of one or more other words in
said one or more documents having a frequency above a
predefined high threshold;
identifying a given word as a potentially misspelled word if
said given word satisfies said predefined misspelling criteria;
and
[L3] maintaining a lexicon such that said lexicon will include
said given word if said given word does not satisfj;, said
predefined misspelling criteria and will exclude
said given word if said given word satisfies said predefined
misspelling criteria, wherein one or more of said steps are
performed by a processor.
(Emphasis added regarding the contested limitations, labeled as Ll-L3).
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Claims 1-25 are rejected under 35 U.S.C. § 103(a) as being obvious
over the combined teachings and suggestions of Wilbur et al.
("Spelling Correction in the PubMed search engine," published
September 1, 2006), Wang et al. (US 2004/0210434 Al; published
October 21, 2004) and Bordner et al. (US 2002/0099536 Al;
published July 25, 2002).
Contentions
Regarding the rejection of claim 1, Appellants particularly contend,
inter alia:
The phrase "predefined misspelling criteria" is expressly defined in
each independent claim as (i) "at least one given word having a
frequency below a predefined low threshold and" (ii) "said at least one
given word being within the obtained maximum edit distance of one
or more other words in said one or more documents having a
frequency above a predefined high threshold." These criteria
correspond to (i) low_freq and (ii) near_dist in FIGS. 3 and 4.
Generally, then, the predefined misspelling criteria deletes words from
the lexicon only if they are (i) infrequent, and (ii) within an obtained
maximum edit distance of other more frequent words in the
documents. Wang, Wilbur and Bordner, alone or in any combination,
do not disclose or suggest deleting words from the lexicon only if they
are (i) infrequent, and (ii) within the obtained maximum edit distance
of other more frequent words in the documents. As previously
1 We note the heading of the rejection (Final Act. 3, March 28, 2013) omits
claims 20 and 23-25, although the Examiner provides a detailed statement
of rejection for claims 20 and 23-25. (Final Act. 9-10). See also Final Act.
Summary page: "Claims(s) 1-25 is/are rejected." Cf with Final Act. (2):
"Claims 1-25 are pending ... Claims 1-22 are rejected." See Notice of
Panel Decision from Pre-Appeal Brief Review (Aug. 8, 2013): "Claim(s)
rejected: 1-25." We consider all rejected claims 1-25 before us on appeal.
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Application 11/673, 173
indicated, Wang and Wilbur do not disclose an "obtained maximum
edit distance," as acknowledged by the Examiner (see above).
There is absolutely no notion in Bordner of using the maximum edit
distance in comparison to "other words in said one or more documents
having a frequency above a predefined high threshold."
(App. Br. 5).
Thus, even as combined, Wilbur et al., Wang and Bordner do
not disclose or suggest deleting words from a lexicon if they
satisfy a predefined misspelling criteria as "predefined
misspelling criteria" is expressly defined by each independent
claim.
(App. Br. 6).
ISSUES
Issue: Under§ 103, did the Examiner err by finding the cited
combination of Wilbur, Wang and Bordner would have taught or suggested
at least limitation L2 of contested limitations L 1-L3:
[L2] determining if at least one given word in said one or more
documents satisfies a predefined misspelling criteria, wherein
said predefined misspelling criteria comprises said at least one
given word having a frequency below a predefined low
threshold and said at least one given word being within the
obtained maximum edit distance of one or more other words in
said one or more documents having a frequency above a
predefined high threshold;
within the meaning of representative claim 1? (Emphasis and
underline added.)
ANALYSIS
We focus our analysis on contested limitation L2, and need not reach
contested limitations L 1 and L3 to decide this appeal.
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Application 11/673, 173
The Examiner responds to Appellants' contentions regarding
limitation L2, and refers generally to page 554 of Wilbur, and paragraph 201
of Bordner. (Ans. 3). The Examiner finds, and further explains (Ans. 3):
this particular limitation [i.e., edit distance in combination with
a frequency] was rejected in view of a combination including
Wilbur and Wang, which both teach a fixed edit distance used
in combination with a frequency threshold to judge the
correctness of a word. Wilbur even acknowledges that the
number of edits should be constrained for shorter words
(Wilbur, p. 554), which is consistent with the teachings of
Bordner of using a dynamic edit distance that is calculated
based on the length of the string in question (Bordner i-f 201 ).
We focus specifically on Appellants' argument relating to "one or
more documents having a frequency above a predefined high threshold," as
recited in contested limitation L2 of claim 1. (App. Br. 5, emphasis added).
The Examiner (Ans. 3) refers to page 554 of Wilbur regarding a
frequency threshold. (See also Final Act. 4, citing Wilbur, pp. 544, 553).
However, no mention of a threshold appears on page 554 of Wilbur.2
Wilbur (553) refers to "high frequency string ('riboflavin')," but does not
describe "a frequency above a predefined threshold" (claim 1 ), as alleged by
the Examiner. (Page 553 was cited by the Examiner in the final rejection of
claim 1). (See Final Act. 4).
Instead, Wilbur refers, by way of example, to the selection of a
correction word based on occurrences in a database of terms. Specifically,
Wilbur, at page 553, describes: "In Stage 2 another OneEdit is tried on the
2 But cf Wilbur (554): "(C) Changes that produce a string of high frequency
in the database are preferred over those of similar magnitude that do not."
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Application 11/673, 173
correction and produces 'riboflavin' which occurs 7380 times in the
database. In Stage 3, because of its high frequency in the database,
'riboflavin' is returned as the correction."
However, in the sections cited by the Examiner (id.), we find no
teaching or suggestion of "a frequency above a predefined high threshold,"
within the meaning of claim 1. We therefore find a preponderance of the
evidence supports Appellants' argument there is no teaching in the cited
references of "a frequency above a predefined high threshold," as recited in
claim 1. (See App. Br. 5).
Remaining independent claims 12 and 22 each recite contested
limitation L2 in commensurate form. Therefore, for the aforementioned
reasons, we reverse the Examiner's obviousness rejection of independent
claims 1, 12, and 22 over the combination of Wilbur, Wang and Bordner.
Because we have reversed the rejection of each independent claim on
appeal, we also reverse the§ 103 rejection of each associated dependent
claim. 3
3 Regarding the "tangible machine readable recordable medium" of claim
22, we note the corresponding support in Appellants' Specification (p. 10, 11.
11-16): "The computer readable medium may be a recordable medium (e.g.,
floppy disks, hard drives, compact disks, or memory cards) or may be a
transmission medium ( e g, a network comprising fiber-optics, the world-
wide web, cables, or a wireless channel using time-division multiple access,
code-division multiple access, or other radio-frequency channel). Any
medium known or developed that can store information suitable for use with
a computer system may be used." (Emphasis added).
Therefore, under our jurisprudence, the scope of the recited "tangible
machine readable recordable medium" of claim 22 appears to encompass
transitory media. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013)
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Conclusion
On this record, and by a preponderance of the evidence, we are
persuaded the Examiner erred in rejecting claims 1-25 under§ 103(a), for at
least the reasons argued on page 5 of the Brief, as further discussed above.
DECISION
We reverse the Examiner's rejection of claims 1-25 under§ 103(a).
REVERSED
(precedential) (holding recited machine-readable storage medium ineligible
under§ 101 since it encompasses transitory media).
Accordingly, we leave it to the Examiner to consider a rejection under
35 U.S.C. §101 for at least claim 22, and associated dependent claim 25.
Although the Board is authorized to reject claims under 37 C.F.R.
§41.50(b ), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) §1213.02.
In the alternative, the Examiner could remedy the aforementioned
deficiency by adding "non-transitory" (by Examiner's amendment) to the
"medium" of claim 22, if such amendment is authorized by Appellants.
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