Ex Parte Galitsky et al

Patent Trial and Appeal Board

Dec 1, 2016

12119465 (P.T.A.B. Dec. 1, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/119,465 05/12/2008 Boris Galitsky 058407/427060 3098
826 7590 12/05/2016
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
PEACH, POLINA G
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
12/05/2016 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BORIS GALITSKY and EUGENE WILLIAM McKENNA
Appeal 2015-006193
Application 12/119,465
Technology Center 2100
Before JOHN A. JEFFERY, KRISTEN L. DROESCH, and
JOHN P. PINKERTON, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 6, 8—11, 17, and 19-34. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Appellants’ invention (1) recommends products to users based on
topical and sentiment data extracted from documents, and (2) provides users
quotes from documents relevant to features of interest. See generally Spec.
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Application 12/119,465
Claim 6 is illustrative:
6. A method for extracting quotations related to a
product from a document, comprising:
building a span query relevant to a feature associated with
the product and a sentiment about the feature by:
building syntactic templates from a lexicography relevant
to the feature and the sentiment about the feature, wherein each
syntactic template corresponds to multiple phrasings of the same
meaning, and
determining a first semantic template relevant to the
syntactic templates;
receiving a document;
applying the span query to the document to generate a span
query result, wherein the span query result includes a quotation
from the document relevant to
the feature and the sentiment about the feature, the
quotation satisfying the first semantic template and including
words within relative positions as constrained by the span query;
and
storing the span query result.
THE REJECTIONS1
The Examiner rejected claims 6, 8—11, 22, 23, 26, and 28 under 35
U.S.C. § 103(a) as unpatentable over Bandaru (US 2008/0133488 Al; June
5, 2008) and Liu (US 2008/0294637 Al; Nov. 27, 2008). Final Act. U-9.2
1 Because the Examiner withdrew a previous rejection under § 112 (Ans. 2),
that rejection is not before us.
2 Throughout this opinion, we refer to (1) the Final Rejection mailed May
22, 2014 (“Final Act.”); (2) the Appeal Brief filed February 6, 2015 (“App.
Br.”); (3) the Examiner’s Answer mailed April 7, 2015 (“Ans.”); and (4) the
Reply Brief filed June 4, 2015 (“Reply Br.”).
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Application 12/119,465
The Examiner rejected claims 17, 19-21, 24, 25, 27, and 29-343
under 35 U.S.C. § 103(a) as unpatentable over Liu and Bandaru. Final Act.
10-17.
THE OBVIOUSNESS REJECTION OVER BANDARU AND LIU
Regarding independent claim 6, the Examiner finds that Bandaru
builds a “search structure” involving “(adj, named entity)” pairs in Figure 11
that are relevant to a feature associated with a product and an adjective-
based sentiment about the feature by (1) building pattern-based syntactic
templates, and (2) determining a first semantic template in Figure 6 relevant
to the syntactic templates. Final Act. 4—5. According to the Examiner,
Bandaru applies this “search structure” to a received document to generate a
query result including a relevant document quotation satisfying the semantic
template, and whose words within relative positions are constrained by the
“search structure.” Final Act. 5—6.
Although the Examiner acknowledges that Bandaru does not build a
span query or generate a span query result, the Examiner cites Liu’s
distance-based technique as teaching this feature in concluding that the
claim would have been obvious. Final Act. 6—7.
Appellants argue that the cited prior art does not teach or suggest the
recited “span query” as defined in the Specification, namely “a query that
combines the constraint on occurrence of words with the constraints of
mutual positions of the words.” App. Br. 11—18; Reply Br. 2—\. According
3 Although claim 33 depends on itself, we nevertheless presume that claim
33 depends from claim 32 for purposes of this appeal. We leave to the
Examiner to consider whether this inconsistency renders the claim indefinite
under § 112(b) after our decision.
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to Appellants, Liu’s distance-based method to filter search results differs
from the recited span query application, as does Bandaru’s sentence-by-
sentence approach to extract quotations. App. Br. 14—18; Reply Br. 3^4.
Appellants add that there is no proper motivation to combine Bandaru and
Liu as proposed. App. Br. 19.
ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Bandaru and Liu collectively would have taught or suggested building a
span query, and applying it to a received document to generate the recited
span query result?
ANALYSIS
We begin by noting, as do Appellants, that the key disputed term,
“span query,” is defined in the Specification as “a query that combines the
constraint on the occurrence of words with the constraints of mutual
positions of the words.” Spec. 129 (emphasis added). Our emphasis
underscores two key constraints of a span query, namely the words’
occurrence and mutual positions. As the Specification indicates, the query
“put-1-down,” that allows for zero or one word between “put” and “down,”
is an example of a span query. Id. We, therefore, construe the term “span
query” based on the Specification’s explicit definition of the term.
The Examiner, however, does not construe the recited “span query”
according to this definition, but rather with its plain meaning, namely
“distance query.” Ans. 2—3. In arriving at this construction, the Examiner
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reminds Appellants that limitations from the Specification are not read into
the claims. Id.
The Examiner’s construction is problematic. To be sure, claims are
interpreted broadly, but reasonably, in light of the Specification without
importing limitations from the Specification into the claims. See Phillips v.
AWHCorp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (enbanc).
But where, as here, Appellants act as their own lexicographer by
clearly and unambiguously defining the term “span query” with a specific
meaning, the term must be so construed—even if it departs from its ordinary
and customary meaning in the art. See Multiform Desiccants Inc. v.
Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer
v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008)
(“A patentee may act as its own lexicographer and assign to a term a unique
definition that is different from its ordinary and customary meaning;
however, a patentee must clearly express that intent in the written
description.”) (citations omitted).
Therefore, the Examiner’s construction of the recited “span query” as
merely a “distance query” (Ans. 3) ignores the clear and unambiguous
definition of “span query” in paragraph 29 of the Specification that so limits
its construction. The Examiner’s rejection is, therefore, problematic for that
reason alone.
Turning to the rejection, the Examiner acknowledges that Bandaru
does not build nor apply a span query—even under the Examiner’s
erroneous “distance query” interpretation—and cites Liu to cure this
perceived deficiency. Final Act. 7; Ans. 3^4. Liu filters search results by
calculating the distance between keywords and a keyword-based origin. Liu
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223, 225, 233 40. Even assuming, without deciding, that this distance-
based filtering technique somehow involves a “span query” under the
Examiner’s plain meaning interpretation (Ans. 3—4), we still fail to see—nor
has the Examiner shown—how Liu teaches or suggests a “span query” as
defined in paragraph 29 of the Specification which, as noted above, requires
constraints on the occurrence and mutual positions of particular words. To
the extent that Liu’s distance-based method involves these two constraints,
we cannot say on this record. Nor will we speculate in that regard here in
the first instance on appeal.
We do note, however, that Appellants acknowledge that Bandaru’s
quotation-extraction technique assumes that entities and adjectives
matchable to a given pattern are in the same sentence. Reply Br. 4—5. To
the extent that this sentence-based constraint suggests constraints on the
occurrence and mutual positions of particular words (i.e., that they appear in
the same sentence) to constitute a “span query” as defined in the
Specification,4 such a position has not been articulated on this record, nor
will we speculate in that regard here in the first instance on appeal. Rather,
we leave that question to the Examiner to consider after this decision.
4 Notably, some sentences may be quite short—even two words. See, e.g.,
Sentence Patterns, The Writing Center at UNC-Chapel Hill, at
http://writingcenter.unc.edu/handouts/sentence-pattems (citing examples of
two-word sentences). To the extent that Bandam’s sentence-based query
can apply to two-word sentences, and that such a query combines constraints
on the words’ occurrences and mutual positions (i.e., their adjacency to each
other in a two-word sentence) to constitute a “span query,” such a position
has not been articulated on this record, nor will we speculate in that regard
here in the first instance on appeal. We leave this question to the Examiner
to consider after this opinion.
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So even assuming, without deciding, that the references are
combinable as the Examiner proposes (Final Act. 7; Ans. 4), the Examiner
has still not shown that the cited prior art teaches or suggests building and
applying a span query to a received document to generate a span query result
as claimed.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 6, and (2) dependent claims 8—11, 22, 23, 26, and 28 for
similar reasons. Since this issue is dispositive regarding our reversing the
rejection of these claims, we need not address Appellants’ other arguments.
THE OBVIOUSNESS REJECTION OVER LIU AND BANDARU
We likewise will not sustain the Examiner’s obviousness rejection of
claims 17, 19-21, 24, 25, 27, and 29—34 over Liu and Bandam. Fin. Act.
10—17. Although the Examiner transposes the base and secondary
references in rejecting independent claims 17 and 30 despite their reciting
limitations commensurate with those in independent claim 1, the Examiner
nevertheless finds that Liu’s “distance query” is analogous to the recited
span query (Final Act. 10-11, 14—15; Ans. 5)—a finding that is based on an
erroneous plain-meaning interpretation as noted previously in connection
with claim 1. Therefore, for the reasons noted above, we are persuaded that
the Examiner erred in rejecting (1) independent claim 17; (2) independent
claim 30 which recite commensurate limitations; and (3) dependent claims
19-21, 24, 25, 27, 29, and 31—34 for similar reasons. Because this issue is
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dispositive regarding our reversing the rejection of these claims, we need not
address Appellants’ other arguments.5,6
CONCLUSION
The Examiner erred in rejecting claims 6, 8—11, 17, and 19-34 under
§103.
5 We note, however, that Appellants’ arguments regarding resolving a
conflict by applying defeasible logic programming in connection with
dependent claim 19 are inconsistent with the language of that claim, but
rather are consistent with claim 31 which was grouped with claim 19. See
App. Br. 24. Based on the claim language, Appellants’ arguments appear to
be directed to claims 21 and 31 (and perhaps claim 10)—not claim 19.
6 We also note that the processor in independent claim 30 is recited solely in
functional terms and, therefore, raises the question of whether such a
processor lacks sufficient structure to render the claim equivalent to a
means-plus-fimction claim under § 112(f). See MPEP § 2181 (A)
(discussing guidelines for determining whether recited “non-structural
generic placeholders” are simply substitutes for “means” terms to overcome
the presumption that means-plus-fimction treatment does not apply when
claims lack the term “means”). Notably, expanded panels of this Board have
held that the term “processor” is such a non-structural generic placeholder
sufficient to invoke functional claiming under § 112(f). See Ex parte
Lakkala, No. 2011-001526 (PTAB Mar. 13, 2013) (informative); Ex parte
Erol, No. 2011-001143 (PTAB Mar. 13, 2013) (informative); Ex parte
Smith, No. 2012-007631 (PTAB Mar. 14, 2013) (informative). The
Examiner, however, did not articulate such a construction, nor will we
speculate in that regard here in the first instance on appeal. We, therefore,
leave that question to the Examiner to consider after our opinion, as well as
the related question of whether the single processor limitation in claim 30 is
equivalent to a single means limitation that is not enabled for its scope under
§ 112(a). See Ex parte Rodriguez, 92 USPQ2d 1395, 1406—11 (BPAI 2009)
(precedential) (discussing functional claiming and scope of enablement); see
also MPEP § 2164.08(a) (citing In re Hyatt, 708 F.2d 712 (Fed. Cir. 1983)).
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DECISION
The Examiner’s decision rejecting claims 6, 8—11, 17, and 19-34 is
reversed.
REVERSED
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