Ex Parte Lunev et al

Patent Trial and Appeal Board

Jul 25, 2016

13549217 (P.T.A.B. Jul. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/549,217
132787 7590
Docket Clerk-GOLD
P.O. Drawer 800889
Dallas, TX 75380
FILING DATE FIRST NAMED INVENTOR
07 /13/2012 Julian Lunev
07/27/2016
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.
GOLDll-00340 7994
EXAMINER
LU,KUENS
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
07/27/2016 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):
john.maxin@gs.com
patents@munckwilson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIAN LUNEV, DAVID ORELOWITZ, and
ROBERT MENDELOW
Appeal2015-002299
Application 13/549,217
Technology Center 2100
Before JAMES R. HUGHES, KAMRAN JIV ANI, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 12-20, which constitute all of the claims pending in this application.
Claims 1-11 have been cancelled. Br. 17 (Claims App'x). We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Goldman, Sachs & Co. as the real party in interest. Br.
2.
Appeal2015-002299
Application 13/549,217
THE INVENTION
The claimed invention is directed to methods of operating a computer
system with a data availability management software package. Abstract,
Spec. 5:20-6:5.
Claim 12, reproduced below, is illustrative of the claimed subject
matter:
12. A method of operating a computer system, the method
compnsmg:
changing a status of a data item from unavailable to
available;
in response to said change of status, generating a report
that requires availability of said data item;
changing the status of said data item from available to
unavailable;
again changing the status of said data item from
unavailable to available; and
in response to said second change of status of said data
item from unavailable to available, again generating said report.
REFERENCE
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Bou-Ghannam US 2011/0093868 Al Apr. 21, 2011
REJECTION
Claims 12-20 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Bou-Ghannam. Final Act. 4--8.
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Appeal2015-002299
Application 13/549,217
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we consider
all evidence presented and all arguments made by Appellants. We are
persuaded by Appellants' arguments that the Examiner erred.
Claims 12-16
Appellants argue Bou-Ghannam does not disclose any of the steps
recited in claim 12. Br. 10-12. According to Appellants, Bou-Ghannam
discloses changing the modality of how data is inputted; however, Bou-
Ghannam does not disclose changing the status of an item of data from
unavailable, to available, to unavailable and back to available as recited in
claim 12. Id.
The Examiner finds Bou-Ghannam discloses all of the limitations of
claim 12. Final Act. 4--5; Ans. 3-8. More specifically, the Examiner finds a
toggle function from unavailable to available is well-known in the art. Ans.
4. The Examiner further finds "the activation of the speech modality is a
change of status and the speech input is the available data item for the
speech modality to complete tasks, the completion of speech modality tasks
result in a new dialogue state which is conveyed to the modality component
server." Ans. 6.
We disagree with the Examiner as the Examiner has not identified
sufficient evidence or provided sufficient explanation as to how Bou-
Ghannam discloses multiple changes of status for a specific data item as
recited in claim 12. Bou-Ghannam is directed to different modalities of
entering data, such as using a graphical user interface or speech input. Bou-
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Appeal2015-002299
Application 13/549,217
Ghannam iii! 21, 24, 33, 36. However, the cited sections of Bou-Ghannam
are silent as to what happens to the data after being inputted. Although Bou-
Ghannam discloses that various input modalities may be available or
unavailable, the cited sections do not disclose a specific data item
undergoing the multiple changes of availability recited in claim 12.
Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claim 12, along with the rejections of claims 13-16,
which depend, directly or indirectly, from claim 12.
Claims 17-19
Similar to claim 12 above, Appellants argue the Examiner erred in
finding Bou-Ghannam discloses the steps recited in claim 17, such as
"determining a second data item that is dependent for processing upon
availability of the first data item." Br. 12-14. Specifically, Appellants
argue the cited paragraph of Bou-Ghannam discloses changing the
availability of the modality for inputting data. Br. 13. However,
"[a]ctivating and deactivating a GUI and a speech modality component is
not the same as determining a second data item that is dependent for
processing upon availability of the first data item." Id.
The Examiner finds Bou-Ghannam discloses "determining a second
data item that is dependent for processing upon availability of the first data
item." Final Act. 7 (citing Bou-Ghannam if 33). More specifically, the
Examiner finds "the operation of modality component as depicted in Fig. 4,
the speech modality component is operated independently as it is activated
and deactivated." Ans. 10.
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Appeal2015-002299
Application 13/549,217
We disagree with the Examiner as the Examiner has not identified
sufficient evidence or provided sufficient explanation as to how Bou-
Ghannam discloses the determining step recited in claim 17. Bou-Ghannam
paragraph 33 discloses activating and deactivating various modalities. Bou-
Ghannam ,-r 33. However, the cited section of Bou-Ghannam does not
disclose "determining a second data item that is dependent for processing
upon availability of the first data item," as recited in claim 17. Instead, we
agree with Appellants that there is a difference between a modality for
inputting data and a data item.
Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claim 17, along with the rejections of claims 18 and
19, which depend, directly or indirectly, from claim 17.
Claim 20
Appellants argue the Examiner erred in finding Bou-Ghannam
paragraph 33 discloses changing the status of a data item for unavailable to
ready for processing or the either of the two conditions to change the status
of the data item. Br. 14--15. Instead, Appellants argue Bou-Ghannam only
discloses activating or deactivating a modality. Br. 15.
The Examiner finds Bou-Ghannam teaches all of the limitations of
claim 33. Final Act. 7-8. Specifically, the Examiner finds Bou-Ghannam
discloses "one condition, the condition being the availability of data item,
wherein the system can generate the application requiring the voice entry
that depends on the availability of certain data." Id. (emphasis omitted).
Appellants have persuaded us that Examiner erred. The cited
paragraph of Bou-Ghannam discloses activating and deactivating various
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Appeal2015-002299
Application 13/549,217
modes for inputting data. Bou-Ghannam if 33. However, the cited section is
silent as to the status of the data items or the conditions form changing the
availability of a data item from unavailable to ready for processing. Id.
Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claim 20.
DECISION
For the above reasons, we reverse the Examiner's decision rejecting
claims 12-20.2
REVERSED
2 In the event of further prosecution, including any review for allowance, we
invite the Examiner;s attention to the question of whether the claims are
patent-eligible under 35 U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2355-56 (2014). Regarding at least method claims 12,
17, and 20, besides the recitation of a method for operating a computer
system, a question arises as to whether a person would be capable of
performing the contested steps or acts as mental steps, or with the aid of pen
and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
13 7 5 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson"). "[A] method that can be
performed by human thought alone is merely an abstract idea and is not
patent-eligible under§ 101." CyberSource, 654 F.3d at 1373. We have
decided the issues before us. We leave further consideration of this § 101
issue to the Examiner. Although the Board is authorized to enter a new
ground of rejection to reject claims under 37 C.F.R. § 41.SO(b), no
inference should be drawn when the Board elects not to do so. See MPEP
1213.02.
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