Ex Parte Knott et al

Board of Patent Appeals and Interferences

Mar 22, 2011

10732397 (B.P.A.I. Mar. 22, 2011)

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.
10/732,397 12/10/2003 Benjamin A. Knott 130332.00071 5826
82744 7590 03/22/2011
AT&T Legal Department - JW
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
STACE, BRENT S
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
03/22/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BENJAMIN A. KNOTT, ROBERT R. BUSHEY, and
THEODORE B. PASQUALE
____________

Appeal 2009-005506
Application 10/732,397
Technology Center 2100
____________

Before JOSEPH L. DIXON, JAY P. LUCAS, and THU A. DANG,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm-In-Part.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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The claims are directed to natural language web site interface. Claims
1 and 2, reproduced below, are illustrative of the claimed subject matter:
1. A method of providing web site content to a user of a
web browser, comprising the steps of:
creating an action object database comprising a set of
entries wherein each entry includes a customer statement and an
action object pair comprising an action and a corresponding
object wherein said creating comprises collecting customer
statements and matching the customer statements to web
content;
storing a set of web site content selections in a web site
content database;
storing a set of business rules;
displaying, on the user's web browser, a textual natural
language query prompt;
receiving the query at a web server;
interpreting the query as indicative of one of the action-
object pairs, wherein the interpretation is based on a probability
that the query is represented by an action-object pair, such that
the interpretation is invalid or ambiguous when the probability
does not exceed a threshold;
providing the user with menu navigation options when
the interpretation is invalid;
associating the indicated action object pair with web site
content; and
retrieving the associated web site content.

2. A method of providing web site content to a user
of a web browser, comprising the steps of:
creating an action object database comprising a set of
entries wherein each entry includes a customer statement, an
action, and a corresponding object;
storing a set of web site content selections;
displaying, on the user's web browser, a textual natural
language query prompt;
receiving a query at a web server;
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interpreting the query as referencing at least one of the
following: an action or an object;
associating the results of the interpreting step with web
site content;
retrieving the associated web site content; and
downloading the associated web site content to the web
browser.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Harrison US 2003/0069880 A1 Apr. 10, 2003
Ruppelt US 6,571,236 B1 May 27, 2003

REJECTIONS
Claims 2-18 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Harrison. Ans. 3.
Claims 1 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Harrison and Ruppelt. Ans. 9.

ISSUES
Has the Examiner set forth a sufficient showing of anticipation of
independent claim 2 over Harrison?

PRINCIPLES OF LAW
35 U.S.C. § 102
“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. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over the
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prior art under 35 U.S.C. § 102 begins with a determination of the scope of
the claim. We determine the scope of the claims in patent applications not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he Examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
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The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001).

ANALYSIS
Appellants argue claims 2, 5-13, and 15-18 as a single group.2 (App.
Br. 6). Therefore, we address Appellants' arguments with respect to
independent claim 2. Appellants argue that "Harrison does not teach
expressly or inherently creating an action object database having a set of
entries where each entry includes a customer statement and a corresponding
action and object." (App. Br. 6). Appellants further argue "[t]he claim
element recites an action object database comprising a set of entries wherein
each entry includes a customer statement, an action, and a corresponding
object. Whereas the claim element recites, not only a database, but also the
structure of that database, the cited portions of Harrison teach neither."
(App. Br. 6). We disagree with Appellants and find that Appellants'
argument is not commensurate in scope with the express language of
independent claim 2 wherein the claim language does not expressly set forth
"the structure of that database." Appellants further argue that nothing in
Harrison's descriptions of its templates anticipates "action object pairs and
customer statements." (App. Br. 6-7). Again, we find Appellants' argument
is not commensurate in scope with the language of independent claim 2

2 Appellants argue the patentability of the claims on appeal as a single group
by arguing the rejection of claim 2. In accordance with 37 C.F.R.
§ 41.37(c)(1)(vii), we consider the claims on appeal as standing or falling
with representative claim 2.
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wherein "action object pairs" are not expressly recited in the language of
independent claim 2.
While we agree with the Examiner's embellished discussion in the
responsive arguments at pages 12-14 of the Answer concerning Appellants'
arguments, we find the language of independent claim 2 to expressly recite
"creating an action object database comprising a set of entries wherein each
entry includes a customer statement, an action, and a corresponding object.”
Independent claim 2 states that "includes a customer statement, an action,
and a corresponding object" rather than the above argued "action object
database having a set of entries where each entry includes a customer
statement and a corresponding action and object." (App. Br. 6). (Emphasis
added). We find Harrison clearly teaches actions with corresponding objects
and customer statements along with a presentation of scored outputs (list)
relating thereto from the natural language query. Since Appellants'
arguments have not shown error in the Examiner's showing of anticipation
of independent claim 2, we will sustain the rejection thereof along with
dependent claims 5-13, and 15-18 grouped therewith.
With respect to dependent claim 3, Appellants argue that nowhere in
either paragraph [0050] and [0040] can Appellants find an express or
inherent teaching of "disambiguating, by requesting user input, the intended
object of an unambiguous action." (App. Br. 7).
The Examiner maintains that:
The matching templates returned is showing different
options/action/objects where the query is at least indicative of an
action and at least ambiguous with respect to an object corresponding
to the action (since synonym words are used to replace query tokens).
The matching templates returned is also requesting the user to select
an object from a list of object options (a list of returned results) since
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1) it is displayed to the user and 2) it is displayed to the user for a
purpose of tracking user interactions with the search results (described
in detail in Harrison, paragraph [0051]). Since interactions with the
search results are tracked to improve the system of Harrison, this
shows that merely displaying the search results is ‘requesting the user
to select an object from a list of object options (search results).’

(Answer 14). We agree with the Examiner's interpretation of the
teachings of Harrison with respect to characterization of the data presented
to the user. We find that dependent claim 3 further does not further limit the
claimed process beyond requesting user input which Harrison clearly
teaches. Therefore, we will affirm the rejection of dependent claim 3.
With respect to dependent claim 4, Appellants argue that the claim
language was in error (footnote 1 on page 8 of the Appeal Brief) and
Appellants present arguments to the language of the claim as it was
intended. Arguments to unclaimed subject matter are not persuasive of error
in the Examiner's rejection. If Appellants were aware of the error,
Appellants should have corrected the known deficiency prior to appeal. We
address claims as amended, not any proposed changes. Therefore,
Appellants' arguments are not persuasive of error in the Examiner's showing
with respect dependent claim 4. (For the corrected claim a similar analysis
would apply as above with respect to dependent claim 3).
With respect to dependent claim 14, Appellants argue that the
Examiner has not set forth how the cited paragraphs ([0029] and [0040])
expressly or inherently teach the "set [of] business rules" and "the [natural
language] engine further matches the results of the interpreting step to one or
more business rules" of claim 14. (App. Br. 8-9). We agree with Appellants
and find no discussion of a "set [of] business rules" in a database in
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Harrison. Therefore, we would be required to speculate as to the presence of
"a set [of] business rules" in Harrison. This we cannot do in an anticipation
rejection. Therefore, we are constrained by the record to reverse the
rejection of dependent claim 14.

35 U.S.C. § 103
With respect to independent claim 1, Appellants argue that
independent claim 1 recites providing the claimed "menu navigation
options" when a "query interpretation does not exceed a specified
probability threshold" or when "query results are not sufficiently precise or
specific." (App. Br. 9). Again, Appellants' arguments are not
commensurate in scope with the express language of independent claim 1
wherein the language of independent claim 1 sets forth "providing the user
with menu navigation options when the interpretation is invalid." If we
agree with the Examiner that the teachings of Ruppelt teach and suggest
"selections are used to answer questions to focus a query to return accurate
results" (Answer 17-18). We agree with the Examiner that Ruppelt teaches
an interface to further interpret the proper query and desired output.
Additionally, we find the Examiner's reliance upon the scored output in
Harrison to additionally suggest "menu navigation options when the
interpretation is invalid" since many outputs may be provided along with
"[i]f no Command Templates are matched, the preferred embodiment can
revert to a form of key word or traditional text-based search based on the
analyzed query." Harrison [0047]. Additionally, paragraph [0053] of
Harrison teaches that an administrator user can create a template or it can be
done automatically. Therefore, if there is an invalid query a new template
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can be made and a user interface thereto. Therefore, we agree with the
Examiner that the combined teachings of Harrison and Ruppelt evidence the
obviousness of independent claim 1.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting:
claims 2-13 and 15-18 under 35 U.S.C. § 102(e) as being anticipated
by Harrison; and
claims 1 and 19 under 35 U.S.C. § 103(a) as being unpatentable over
Harrison and Ruppelt.
The Examiner did err in claim 14 under 35 U.S.C. § 102 as being
anticipated by Harrison.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-13 and
15-19 is affirmed; and the Examiner’s rejection of claim 14 is reversed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

rwk

AT&T Legal Department - JW
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921