Ex Parte Kobayashi et al

Patent Trial and Appeal Board

Dec 6, 2016

13454791 (P.T.A.B. Dec. 6, 2016)

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.
1946-0377 1092
EXAMINER
PARK, GRACE A
ART UNIT PAPER NUMBER
2157
MAIL DATE DELIVERY MODE
13/454,791 04/24/2012
60803 7590 12/06/2016
Paratus Law Group, PLLC
1765 Greensboro Station Place
Suite 320
Tysons Corner, VA 22102
Kenichiro Kobayashi
12/06/2016 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 KENICHIRO KOBAYASHI and
MASAAKI HOSHINO
Appeal 2016-001225
Application 13/454,791
Technology Center 2100
Before ST. JOHN COURTENAY III, NATHAN A. ENGELS, and
ALEX S. YAP, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1 and 3—14. Claim 2 is cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
The disclosed and claimed invention “relates to an information
processing apparatus, an information processing method, a program, and an
information processing system.” (Spec. 11).
Appeal 2016-001225
Application 13/454,791
Claim 1 is representative of the subject matter on appeal:
1. An information processing apparatus comprising:
at least one processor;
a search condition information acquiring unit that acquires
using the at least one processor search condition information that
is text information in a first language indicating search
conditions for searching for search object text;
a language processing unit that executes using the at least
one processor language analysis processing with respect to the
search condition information;
a structure extracting unit that extracts using the at least
one processor a sentence structure of the search condition
information using the language analysis result of the search
condition information;
a search expression generating unit that generates using
the at least one processor a search expression in a second
language reflecting the sentence structure of the search condition
information used to search for the search object text according to
the sentence structure of the search condition information in the
first language; and
a searching unit that searches in the second language using
the at least one processor for text matching the search conditions
from the search object text according to the sentence structure of
the search condition information in the first language using the
generated search expression,
[L] wherein the search condition information in the first
language includes a plurality of sentences and the searching unit
searches for text matching transitions of predicate structures
in the second language from the search object text on the basis
of the transitions of the predicate structures of the sentences
included in the search condition information in the first
language.
(Contested limitation L lettered and emphasized.)
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Application 13/454,791
Rejections
A. Claims 1 and 10-13 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Marchisio
et al. (US 2003/0233224 Al; pub. Dec. 18, 2003), in view of
Chang et al. (US 2004/0167800 Al; pub. Aug. 26, 2004), Evans
(US 2002/0184206 Al; pub. Dec. 5, 2002), and Caudill et al. (US
2002/0129015 Al; pub. Sep. 12, 2002).
B. Claims 3—9 are rejected under 35 U.S.C. § 103(a) as being obvious
over the combined teachings and suggestions of Marchisio, Chang,
Evans, and Caudill, in view of Sokolan et al. (US 2011/0264646
Al; pub. Oct. 27, 2011).
C. Claim 14 is rejected under 35 U.S.C. § 103(a) as being obvious
over the combined teachings and suggestions of Marchisio, Chang,
Evans, and Caudill, in view of Chen (US 2009/0024595 Al; pub.
Jan. 22, 2009).
Claim Grouping
Based on Appellants’ arguments (App. Br. 15—24), we decide the
appeal of rejection A of claims 1 and 10-13, on the basis of representative
independent claim 1. We address the claims rejected under rejections B and
C separately, infra. To the extent Appellants have not advanced separate,
substantive arguments for particular claims and/or particular claim
limitations on appeal, such arguments are considered waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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Application 13/454,791
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We find Appellants’ arguments unpersuasive for the reasons
discussed infra. We adopt as our own: (1) the findings and legal conclusions
set forth by the Examiner in the action from which this appeal is taken, and
(2) the findings, legal conclusions, and explanations set forth in the Answer
in response to Appellants’ arguments. We highlight and address specific
findings and arguments for emphasis in our analysis below.
Rejection A of Claim 1 under §103
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
cited combination of Marchisio, Chang, Evans, and Caudill would have
taught or suggested contested “wherein” clause limitation L, (particularly the
contested “transitions of predicate structures”), within the meaning of
representative claim 1? 1
Claim Construction
At the outset, we note contested limitation L is directed to functional
statements recited within a “wherein” clause in an apparatus claim. We
conclude such functional language does not further limit the structure of the
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, YU F.3d
1048, 1054 (Fed. Cir. 1997). See Spec. 1184 (“The preferred embodiments
of the present disclosure have been described in detail with reference to the
appended drawings. However, the present disclosure is not limited to the
above examples. It will be apparent to those skilled in the art that various
modifications and changes may be made thereto without departing from the
scope and spirit of the present disclosure defined by the appended claims.”)
(Emphasis added).
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Application 13/454,791
claimed apparatus.2 Nor does claim 1 recite language such as “configured
to” or “adapted to” that could be construed as imposing a structural
limitation, such that the structural components of the apparatus must be
“capable of’ performing the contested functions.3 Therefore, under a broad
but reasonable interpretation, we conclude the contested “wherein” clause
functional limitations L do not further limit the structure of the apparatus of
claim l.4
To the extent that our reviewing court may give patentable weight to
2 See MPEP § 2111.04 regarding “wherein” clauses: Claim scope is not
limited by claim language that suggests or makes optional but does not
require steps to be performed, or by claim language that does not limit a
claim to a particular structure. However, examples of claim language,
although not exhaustive, that may raise a question as to the limiting effect of
the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
MPEP § 2111.04 (Ninth Ed., Nov. 2015) (emphasis added).
3 See e.g., In re Man Mach. Interface Techs. LLC, 822 F.3d 1282, 1286 (Fed.
Cir. 2016) (“We have noted that the phrase ‘adapted to’ generally means
‘made to,’ ‘designed to,’ or ‘configured to,’ though it can also be used more
broadly to mean ‘capable of’ or ‘suitable for.’”) (citations omitted).
4 Regarding apparatus claims generally, our reviewing court guides the
patentability of an apparatus claim “depends on the claimed structure, not on
the use or purpose of that structure.” Catalina Marketing Int 7., Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); Paragon
Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1090 (Fed. Cir. 2009);
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990) (“[Apparatus claims cover what a device is, not what a device
doesC).
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the contested functional language, we are not persuaded by Appellants’
arguments, because they are not directly responsive to the Examiner’s
specific findings.
In asserting limitation L is not taught by the cited combination of
references, Appellants adopt the following general pattern of argument in the
Brief (5—24): (1) Appellants merely recite the claim language and assert it is
not taught by the cited references; (2) Appellants reproduce portions of the
references cited by the Examiner; (3) Appellants attack the references
separately, considered in isolation;5 and (4) Appellants fail to substantively
traverse the specific findings set forth by the Examiner.
For example, in following this pattern of argument for limitation L of
claim 1, Appellants assert “[sjince Caudill has nothing to do with translating
from a first language to a second language, Caudill cannot alleviate the
admitted deficiencies of Marchisio, Chang, and Evans.” (App. Br. 24).
However, the Examiner explains: “Evans, not Caudill, teaches
translation from a first language to a second language [see pg. 6, par. 2 of
the Final Office Action], Caudill is cited as teaching the claim limitations
relating to searching based on predicate structures [see pg. 7, par. 1 of the
Final Office Action], not as teaching translation from a first language to a
second language.” (Ans. 4).
In support, see Evans (1 6): “It is another object of the present
invention to provide a method for retrieving relevant documents from a
5 See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (One
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references.).
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Application 13/454,791
database in which documents are stored in a foreign language.” 6 See
Caudill (145.) “The transformation of natural language sentences into
predicate structures is performed by an ontological parser . . . .” (Id.)
Caudill further describes: “Ontologies are hierarchies of related
concepts, usually represented by tree structures.” (147.) We find such
“related concepts” (id.) teach or suggest topics of interest (as discussed
further, infra). Caudill (152) converts ontologically parsed text and derived
predicate structures into vector representations for comparison (i.e.,
matching):
The vectorization unit has two configurations, a document
vectorization unit 130 and a query vectorization unit 134. Each
of these configurations converts ontologically parsed text into
vector representations. The document vectorization unit 130
converts the set of predicate structures derived from
ontologically parsing a document into one or more large-
dimensioned numerical vectors.
Caudill (172) describes: “Each query predicate structure is compared
with each document predicate structure to determine a matching degree,
represented by a real number.” (Emphasis added).
6 The Examiner finds: “Evans discloses a query that is in a familiar
language [par. 20, “ . . . type in a query (through keybo[ar]d 7) in a language
familiar to a user”] being parsed in phrases based on sentence structure [par.
21, “ ... the query is parsed . . . into noun[] phrases ... by ... the user of
lexicons, morphological analyzers or natural language grammar structures],
and the phrases are translated into a foreign language and used to search a
database in that foreign language [par. 22, “[a]fter the query is parsed, Step
120 compiles a series of translation alternatives for each noun phrase . . .
each word in the query list can generally be translated into the language of
the database”]. As such, Evans teaches that the search condition information
is in a first language, the search expression is in a second language, and the
searching is in the second language.” (Advisory Action 2, mailed March 31,
2015).
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Given this evidence, we find the cited combination of references
teaches or suggests contested limitation L: i.e., comparing the predicate
structures of a search query (“search condition information” — claim 1)
(Caudill 172, “query predicate structure”) with predicate structures for
(target document) text to find matching predicate structures {id.), where
Evans (|6) teaches or suggests a query in a first language which searches for
text in a target database in a second (foreign) language.
However, Appellants in the Reply Brief (6) focus on the claim term
“transitions” and urge:
in proposing the modification of Marchisio with the teachings of
Caudill, the Examiner states that "search results are retrieved
based on matching of the predicate structures as taught by
Caudill." Final Office Action at page 7. The interpretation set
forth in the Final Office Action disregards the recited
transitions, and therefore is not a reasonable interpretation of the
claims as a whole because it fails to account for material
elements of the claims.
In reviewing the record, we find no definition or disclaimer in the
originally-filed Specification regarding the contested “transitions of
predicate structures” (claim 1), nor do Appellants argue a definition for
“transitions” in the Briefs.7 Because the contested “transitions” are not
defined in the claims, we turn to the Specification for context.8
7 It is the Appellants’ burden to precisely define the invention, not the
PTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
8 Regarding descriptions in the Specification that are not definitions or clear
and unambiguous disclaimers, our reviewing “court has repeatedly
‘cautioned against limiting the claimed invention to preferred embodiments
or specific examples in the specification.’” Williamson v. Citrix Online,
LLC, 792 F.3d 1339, 1346-47 (Fed. Cir. 2015) (quoting Teleflex, Inc. v.
FicosaN. Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002)).
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Appellants point to paragraphs 70 and 80 of the Specification for
support. (App. Br. 8). In each of these paragraphs {id.), we find
“transitions” are described as “topics” in accordance with non-limiting,
exemplary embodiments. For example, see Spec. (170) “text based on the
transitions of the topics designated as the search conditions can be easily
searched . . . .” See also Spec. (1 80):
When a plurality of sentences are included in the search
condition information, the data searching unit 115 determines the
transitions of the predicate structures of the sentences included
in the search condition information as the transitions of the topics
in the search condition information and searches the text
matching the search conditions among the search object text on
the basis of the transitions of the topics. (Emphasis added).
Although the scope of the contested claimed “transitions” is not
limited to the preferred embodiments described in the Specification9 70,
80), we find Caudill’s description (| 45) of transforming natural language
sentences into predicate structures using an ontological parser, where
ontologies are described as “hierarchies of related concepts'’'’ (147) is
equivalent to, or at least suggestive of, hierarchies of related topics.
Therefore, we find the Examiner’s proffered combination teaches, or at least
9 We note the scope of the claims on appeal, at a minimum, at least covers
the corresponding supporting embodiment(s) described in the Specification.
We emphasize, however, that under a broad but reasonable interpretation,
the scope of the claims is not limited to the preferred embodiments described
in the Specification: “[Although the specification often describes very
specific embodiments of the invention, we have repeatedly warned against
confining the claims to those embodiments. . . . [CJlaims may embrace
‘different subject matter than is illustrated in the specific embodiments in the
specification.’” Phillips v. AWHCorp., 415 F.3d 1303, 1323 (Fed. Cir.
2005) (en banc) (citations and internal quotation marks omitted). See also
Appellants’ Spec, (f 184).
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suggests, the contested “transitions of predicates structures,” within the
meaning of claim 1. (Emphasis added).
When Caudill is combined with Evans (and Marchisio and Chang —
see Final Act. 4—7), we find comparing and matching “transitions of
predicates structures” of a search query in a first natural language with
“transitions of predicates structures” of (target) textual content in a second
natural language, would have merely realized a predictable result. The
Supreme Court guides: “If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” KSRInt’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). Moreover, we find the Examiner
(Final Act. 5—7) sets forth sufficient “articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” KSR,
550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Given the aforementioned evidence, and the guidance of our
reviewing courts, on this record, Appellants have not persuaded us the
Examiner erred.
For the aforementioned reasons, we find a preponderance of the
evidence supports the Examiner’s underlying factual findings and ultimate
legal conclusion of obviousness regarding contested limitation F of
representative independent claim 1. Because Appellants have not persuaded
us the Examiner erred, we sustain rejection A of representative claim 1, and
rejection A of the associated grouped claims 10-13. See Grouping of
Claims, supra.
Rejections B and C of Dependent Claims 3—9 and 14 under §103
Regarding rejection B of dependent claims 3—9, and rejection C of
dependent claim 14, Appellants contend the additionally cited references fail
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to remedy the deficiencies regarding the Examiner’s rejection A over the
base combination of Marchisio, Chang, Evans, and Caudill. (App. Br. 24—
25). However, we find no deficiencies regarding the base combination of
cited references in rejection A, for the reasons discussed above regarding
claim 1. Because Appellants have not persuaded us the Examiner erred, and
based upon a preponderance of the evidence, we sustain rejection B of
dependent claims 3—9, and rejection C of dependent claim 14.
Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner’s Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
Conclusion
For the aforementioned reasons, we find a preponderance of the
evidence supports the Examiner’s underlying factual findings and ultimate
legal conclusion of obviousness regarding all contested issues on appeal.
DECISION
We affirm the Examiner’s decision rejecting claims 1 and 3—14 under
35U.S.C. § 103.
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). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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