Ex Parte Kolz et al

Patent Trial and Appeal Board

Sep 1, 2016

13158886 (P.T.A.B. Sep. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/158,886 06/13/2011
130683 7590 09/06/2016
Middleton Reutlinger (IBMP)
401 S. 4th Street, Suite 2600
Louisville, KY 40202
FIRST NAMED INVENTOR
Daniel Paul Kolz
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.
ROC920070109US2 1348
EXAMINER
YEN,SYLING
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
09/06/2016 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):
usptomail@middletonlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL PAUL KOLZ and
KYONG JIN SHIM
Appeal2015-002094
Application 13/158,886
Technology Center 2100
Before ALLEN R. MacDONALD, JASON V. MORGAN and
HUNG H. BUI, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-002094
Application 13/158,886
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-19. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims1
Exemplary claims 1-3 under appeal read as follows (emphasis added):
1. A method for interpreting a policy, the method
compnsmg:
receiving a phrase assumed to be associated with a policy,
wherein the policy includes a subject term, an action term, and a
resource term;
identifying a component of the policy in the phrase;
identifying an indefinite term in the component of the policy by
consulting a dictionary, wherein identifying the indefinite term
includes identifying that the indefinite term is indefinite as a result of
having different potential definitions in different contexts, and
wherein the indefinite term is a subject term, an action term, or a
resource term;
accessing a domain-specific ontology to interpret the indefinite
term, wherein the indefinite term is interpreted by mapping the
indefinite term to at least one selected potential replacement term
from among a plurality of potential replacement terms in the ontology
for a plurality of contexts, wherein the plurality of potential
replacement terms are associated with different definitions of the
indefinite term; and
creating a policy based upon the interpretation of the
indefinite term from the ontology by substituting the indefinite
term with the at least one selected potential replacement term in
the policy.
1 For purposes of this appeal, in claims 1, 8, and 14, we treat "receiving ... a
policy" as "receiving ... a first policy," and "creating ... a policy" as
"creating ... a second policy." In all the claims, we treat each occurrence of
"the policy" as "the first policy." Otherwise, the claims before us would be
indefinite under 35 U.S.C. § 112, second paragraph.
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2. The method of claim 1 wherein the policy is a security
policy.
3. The method of claim 1 wherein the components of the policy
include a subject, an action, and a resource.
Rejections
The Examiner rejected claims 1 and 3-19 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Rappaport et al. (US 7 ,542,969
Bl; iss. June 2, 2009) and Zhang (US 2006/0047632 Al; pub. Mar. 2,
2006).2
The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Rappaport, Zhang, and Egnor et al.
(US 2007 /0233808 Al; pub. Oct. 4, 2007).
Appellants' Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
... [I]t should be noted several of the features recited in
this claim were previously found to be allowable in the parent
to this application (U.S. SIN 12/028,197, which issued as U.S.
Patent No. 7,991,760), by the same Examiner, and over the
exact same references (U.S. Patent No. 7,542,969 to Rappaport
et al. and U.S. Patent Application Publication No.
2006/0047632 by Zhang et al.).
Nonetheless, the Examiner has now taken the position
that these features, which are explicitly or implicitly
2 Separate patentability is not argued for claims 4 and 6-19. Except for our
ultimate decision, these claims are not discussed further herein.
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incorporated into claims 1, 8 and 14, are now obvious in view
of the same references.
App. Br. 7-8.
2. Appellants also contend that the Examiner erred in rejecting
claim 1under35 U.S.C. § 103(a) because:
Rappaport ... is not directed to policies or to attempting to
interpret indefinite terms in a policy. . . . Rappaport does not
appreciate the concept of a policy, the reference likewise does
not appreciate that an indefinite term could be a subject, action
or resource associated with a policy.
App. Br. 8.
The Examiner has expanded upon the rejection somewhat in the
Final Office Action, and has essentially attempted to support
the rejection by reading the term "policy" as being analogous to
nothing more than a "query," such that the Examiner is able to
rely on the functionality disclosed in Rappaport with respect to
queries, irrespective of the fact that this functionality has
nothing to do with policies. Applicant respectfully submits,
however, that neither the file history, nor the plain meaning
of 'policy," supports the Examiner's position.
App. Br. 9, emphasis added.
Applicant respectfully submits that one of ordinary skill in the
art would not consider an entity that is essentially an instruction
to control a database to generate search results was analogous to
a policy that operates as a principle or protocol used to guide
decisions or achieve a rational outcome.
App. Br. 10-11.
The queries utilized in Rappaport, on the other hand, are not
"assumed" to be associated with a policy that is later created,
but are instead known to be queries in the first place.
Furthermore, these queries, once expanded, are not used to
create a "policy" or even a query; they are instead used to
expand the scope of the original query.
App. Br. 11.
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3. Appellants also contend that the Examiner erred in rejecting
claim 1under35 U.S.C. § 103(a) because:
Nor does Rappaport attempt to substitute any replacement term
for an indefinite term, much less do so in connection with
creating a policy.
App. Br. 8.
Of note, therefore, claim 1 is directed in part to substituting an
indefinite term with a replacement term when creating a policy.
In rejecting the limitations dealing with this concept in claim 1,
the Examiner cites col. 12 of Rappaport, and, without providing
any explanation of the Examiner's logic, merely cuts and pastes
the cited passage into the rejection. The cited passage,
however, is directed to a query expander, and in each of the
illustrations given in the passage, a query is expanded by
appending additional synonyms for a term to a query such that
both the original term and the synonyms are incorporated into
the query. Applicant can find no reference in the passage to
any instance where any term that was originally in a query is
replaced by or substituted with another term. As an example,
Rappaport discusses that where a query is for "European
Football", the query may be modified to read "European
Football OR soccer." There is no replacement or substitution
being per/ ormed, and the original term in the query is
retained in the query. Consequently, Applicant respectfully
submits that the cited passage of Rappaport at least does not
disclose or suggest, even under the Examiner's logic, the
concept of substituting an indefinite term with a replacement
term when creating a policy.
App. Br. 12, emphasis added.
4. Appellants also contend that the Examiner erred in rejecting
claim 3 under 35 U.S.C. § 103(a) because:
[In Zhang] there is no disclosure or suggestion in this reference
that a parameter or object would correspond to resource, which
is also the subject of claim 3.
App. Br. 12-13.
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5. Appellants also contend that the Examiner erred in rejecting
claim 5 under 35 U.S.C. § 103(a) because:
The Examiner, in particular, cites the same passage in
Rappaport in col. 12 against both of the steps that perform first
and second Internet searches, despite the fact that the passage
says nothing about performing any sequence of multiple
searches. The passage thus also fails to disclose a first search
that generates first search results from which clues are
extracted, followed by a second search that incorporates those
clues when generating second search results from which
potential replacement terms are extracted.
App. Br. 13-14.
6. Appellants also contend that the Examiner erred in rejecting
claim 2 under 35 U.S.C. § 103(a) because:
What the Examiner relies upon for a policy in rejecting claim 1
is a query, while what the Examiner relies upon for a policy in
rejecting claim 2 is either a term that is associated with a web
page, or more broadly the subject matter of a web page ("it
might be useful to associate the term "virus" with a Web page
pertaining to "computer security", but it might not be useful to
associate the term "computer security" with a Web page
pertaining to "viruses"). Apparently, as long as the key words
are there, it is sufficient for the Examiner, irrespective of
whether the cited passage in a broader context has anything
whatsoever to do with any of the concepts recited in claim 2.
App. Br. 14.
Issues on Appeal
Did the Examiner err in rejecting claims 1-3 and 5 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
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As to Appellants' above contention 1, we disagree. Contrary to
Appellants' argument, claimfeatures are not found allowable. Rather, it is a
claim as a whole which is found allowable.
As to Appellants' above contention 2, Appellants further argue that
neither the file history, nor the plain meaning of the term "policy," supports
the Examiner's position that Rappaport discloses a policy. We disagree.
Appellants fail to acknowledge the full breadth of the term "policy," as used
in claim 1. Appellants' Specification indicates that a set of policies can be
extracted from a human-readable document containing a number of
sentences. Spec. ,-r 4. Based on Appellants' Specification, we construe
"policy" as encompassing a human-readable sentence, including a subject
term, an action term, and a resource term as recited in claim 1. We agree
with the Examiner that it would have been obvious to structure a query such
as in Rappaport in a known sentence format such as the subject term, action
term, and resource term format taught by Zhang. We disagree with
Appellants that anything more is required by the "policy" of claim 1.
Further, as to the argued subjective term "assumed," we construe this
to further broaden the "policy" to include other human-readable phrases
which are in the eye of the individual assumed to be a policy even though
they may not be. Also, as to the argued subjective term "indefinite," which
is also in the eye of the individual, we construe this as merely requiring
identifying a term that can be mapped to at least one other term.
As to Appellants' above contention 3, we disagree. Appellants'
argument is premised on the claim requiring that the original term cannot be
retained in the original policy and must be replaced in the original policy by
the replacement term. We find no such requirement in claim 1. Rather, a
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new policy is created based on substituting the replacement term for the
original term as the new policy is created. We find no requirement that the
original policy itself be discarded or modified by substitution. We agree
with the Examiner that Rappaport teaches creating a new query (based on
copying the original query) based upon the interpretation of the indefinite
term from the ontology by substituting the indefinite term with the at least
one selected potential replacement term used in the new copy of the original
query. That Rappaport retains both the original and the new query is of no
moment. Further, an artisan would recognize that the OR operation
(Rappaport col. 12) merely joints the two queries into a single statement, but
the two queries could equally be written as separate statements and the
results later joined.
As to Appellants' above contention 4, we disagree with Appellants'
conclusory assertions that an object cannot correspond to a resource. Such
unsupported attorney argument, is entitled to little probative value. See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984). Moreover, Appellants' arguments do not rebut
the Examiner's findings regarding the combined teachings of Rappaport and
Zhang that an object corresponds to a resource. Final Act. 10, 11, and 13-
16.
As to Appellants' above contention 5, we disagree with Appellants'
argument that "[t]he passage [at column 12, lines 36-53, of Rappaport] thus
also fails to disclose a first search that generates first search results from
which clues are extracted, followed by a second search that incorporates
those clues when generating second search results from which potential
replacement terms are extracted." App. Br. 13-14. Appellants overlook that
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column 12, line 54, through column 13, line 8, of Rappaport-the portion of
Rappaport that follows the passage against which Appellants' argument is
directed---corresponds to the argued limitation. This portion of Rappaport
describes an embodiment of the process cited by the Examiner at column 12,
lines 48-53, of Rappaport.
As to Appellants' above contention 6, we disagree with Appellants'
argument. The claimed invention is related to mapping (i.e., associating)
terms. Egnor is reasonably pertinent to show that the issue of term
associations exists in queries (i-f 16) and particular term associations are
known for security queries (i-f 91 ).
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-19 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-19 are not patentable.
DECISION
The Examiner's rejections of claims 1-19 are affirmed.
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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)(l )(iv).
AFFIRMED 3
3 As the Examiner has shown that all the claims are unpatentable, we do not
also reject Appellants' claims 1-19 under 35 U.S.C. § 101 as not being
directed to patent eligible subject matter; and claims 1-19 under 35 U.S.C.
§ 112, second paragraph as being indefinite. However, should there be
further prosecution of these claims; the Examiner's attention is directed to
our follo\~1ing concerns.
With respect to claims 1-19 and § 101, the Examiner's attention is
directed to the Court's decision in Alice Corp. Pty. LTD., v. CLS Bank Inter.,
134 S.Ct. 2347 (2014) and any subsequent agency guidance. Subsequent to
the Final Action by the Examiner, the Supreme Court in Alice set forth a
two-part test to determine compliance of a claim with § 101. The Court held
that a mere instruction to implement an abstract idea on a computer cannot
impart patent eligibility. 134 S.Ct. at 2357-59.
For example, claiming an ontology based method directed to an
abstract linguistic processing of sentences in a document (Spec. at i-f 7) is
unlikely to comply with 35 U.S.C. § 101 absent any "non-abstract" inventive
application of the linguistic processing (no matter how allegedly novel the
linguistic processing).
With respect to claims 1-19 and§ 112, second paragraph, the
Examiner's attention is directed to above footnote 1. Additionally, the use
of terms such a "assumed" and "indefinite," which are in the eye of the
subjective beholder, raise concerns about the boundaries of the claims.
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