Ex Parte Marel et al

Patent Trials and Appeals Board

Feb 7, 2013

10693679 - (D) (P.T.A.B. Feb. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte STEPHANIE MAREL and GAVIN BREBNER
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Appeal 2010-007895
Application 10/693,679
Technology Center 2400
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Before JOHN A. JEFFERY, JEREMY J. CURCURI, and
TRENTON A. WARD, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-14. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the following documents for their respective
details: the Final Rejection (Fin. Rej.) mailed April 2, 2009; the Appeal
Brief (App. Br.) filed December 9, 2009; the Examiner’s Answer (Ans.)
mailed March 5, 2010; and the Reply Brief (Reply Br.) filed May 4, 2010.
Appeal 2010-007895
Application 10/693,679

2
Claims 1-14 are rejected under 35 U.S.C. § 102(b) as anticipated by
Chen (US 6,349,307 B1; issued Feb. 19, 2002). Ans. 3-5.
We reverse.

STATEMENT OF THE CASE
Appellants’ invention relates to modifying structured descriptions of
potential user concept sets in such a way that the structured descriptions are
dynamically configurable according to extrinsic context and therefore
amenable to simplification prior to a process of concept matching or
correlation. Abstract. Claim 1 is illustrative and reproduced below with the
key disputed limitation emphasized:
1. A method of matching structured descriptions, the method
including the steps of:
a. detecting a context reflecting an environment in which the
matching is to occur;
b. matching the detected context to a concept list appropriate to
the detected context;
c. using the concept list to transform the structured descriptions
into reduced structured descriptions;
d. matching the reduced structured descriptions; and
e. providing an output representing the matching between the
structured descriptions.

PIVOTAL ISSUE
Under 35 U.S.C. § 102(b), has the Examiner erred by finding that
Chen teaches “using the concept list to transform the structured descriptions
into reduced structured descriptions” as recited in claim 1?

Appeal 2010-007895
Application 10/693,679

3
ANALYSIS
The Examiner finds that Chen teaches all recited limitations of
claim 1. Ans. 3-4. The Examiner maps Chen’s disclosure of topics for
categories of documents to the recited “context.” Ans. 3 (citing Chen, col. 3,
ll. 33-67; col. 8, ll. 14-37). Further, the Examiner maps Chen’s associated
set of keywords and phrases for a topic to the recited “concept list.” Ans. 4
(citing Chen, col. 3, ll. 3-15; col. 5, ll. 19-24; col. 8, ll. 14-37); see also Fin.
Rej. 3.2 Further, the Examiner maps Chen’s predefined or user-defined
views for augmenting the search criteria and internally consistent topic
vocabulary to the recited “using the concept list to transform the structured
descriptions into reduced structured descriptions.” Ans. 4 (citing Chen, col.
3, ll. 3-15; col. 6, ll. 36-41) (emphasis added).
Appellants argue, among other arguments, that
augmenting or modifying search criteria of a query, as taught
by Chen, is completely different from using a concept list
(matched from a detected context reflecting an environment in
which the matching is to occur) to transform structured
descriptions into reduced structured descriptions, where the
reduced structured descriptions are then matched.
App. Br. 7 (emphasis added). We agree with Appellants. Appellants further
argue that
modifying the search criteria of a query based upon context, as
taught by Chen, is completely different from transforming
structured descriptions (note plural sense of structured
descriptions) into reduced structured descriptions that are then
matched, as recited in claim 1.

2 Notably, Chen, column 5, lines 19-24, which describes that each topic may
have an associated set of keywords and phrases, is not cited in the Final
Rejection, and is cited for the first time in the Examiner’s Answer.
Appeal 2010-007895
Application 10/693,679

4
Moreover, it is further noted that translating terms and phrases
used by authors of documents or by a user who is searching for
documents into a common internal vocabulary has nothing to
do with using a concept list (matched from a detected context)
to transform structured descriptions into reduced structured
descriptions.
App. Br. 8 (emphasis added). Again, we agree with Appellants.
Even if we assume, but do not decide, that Chen’s associated set of
keywords and phrases for a topic describes the recited “concept list,” and
that either Chen’s augmenting the search criteria or Chen’s internally
consistent topic vocabulary describes the recited “transform the structured
descriptions into reduced structured descriptions” (as set forth in the
Answer’s Grounds of Rejection section (Ans. 3-5)), the Examiner has not
explained how or why the concept list (associated set of keywords and
phrases for a topic) is used to transform the structured descriptions into
reduced structured descriptions.
In response to Appellants’ arguments (App. Br. 7-8) regarding using a
concept list to transform, in the Answer’s Response to Argument section
(Ans. 6-7), the Examiner explains, without citing to Chen, that Chen teaches
“[a] list of keywords and phrases (concept list) associated with the topic is
used in to transform the keywords within the query (structured
descriptions).” Ans. 6. The Examiner further explains that the keywords
and phrases in the concept list are associated and relevant to the topic.
Ans. 7.
In the Reply Brief, however, Appellants argue that
the Examiner has read the “using” clause of claim 1 in isolation,
without regard to how this clause of claim 1 relates to other
clauses of claim 1. Claim 1 further recites matching the
reduced structured descriptions, and providing an output
Appeal 2010-007895
Application 10/693,679

5
representing the matching between the structured
descriptions. The reduced structured descriptions in the
“matching” and “providing” clauses refer to the reduced
structured descriptions that were transformed from the
structured descriptions using the concept list, as claimed.
If the words of a query in Chen are considered to be the
“structured descriptions” of claim 1, then it is clear that Chen
provides absolutely no hint whatsoever of matching the words
of a query to each other. In fact, matching one portion of a
query with another portion of a query makes no technical sense.
Moreover, a person of ordinary skill in the art would also
understand that matching queries would also make no sense.
In view of the foregoing, it is clear that Chen fails to
disclose the “using” element of claim 1, in combination with
the “matching” and “providing” elements.
Reply Br. 2. Again, we agree with Appellants.
Further, even if we assume, but do not decide, that Chen’s list of
keywords and phrases is in fact used to transform the keywords within the
query, we fail to see, and the Examiner has not explained how, this
transforms the structured descriptions into reduced structured descriptions,
particularly in light of the Examiner’s position in the Answer’s Grounds of
Rejection section (Ans. 3-5), where the Examiner maps Chen’s predefined
or user-defined views for augmenting the search criteria and internally
consistent topic vocabulary to the recited “using the concept list to transform
the structured descriptions into reduced structured descriptions.” Ans. 4
(citing Chen, col. 3, ll. 3-15; col. 6, ll. 36-41) (emphasis added).
Weighing Appellants’ arguments against the Examiner’s findings, we
are persuaded that the Examiner has erred in rejecting claim 1. We,
therefore, do not sustain the Examiner’s rejection of claim 1, or of claims 3-
5, 10, and 12, which depend from claim 1.
Appeal 2010-007895
Application 10/693,679

6
Regarding independent claims 2, 6, 13, and 14, Appellants argue that
these claims are patentable for similar reasons as claim 1. App. Br. 10-11.
Claim 2 recites “using the detected context to transform,” “matching,”
and “providing.” Claim 6 recites “using the concept list to transform the
structured descriptions into reduced structured descriptions.” Claim 13
recites “use the concept list to transform,” “matching means adapted to
match,” and “output means adapted to provide.” Claim 14 recites “using the
concept list to transform,” “matching,” and “providing.” Therefore, we
conclude Appellants have shown error in the Examiner’s rejection of claims
2, 6, 13, and 14, and we, therefore, do not sustain the Examiner’s rejection
of those claims, of claim 11 which depends from claim 2, or of claims 7-9
which depend from claim 6.

ORDER
The Examiner’s decision rejecting claims 1-14 is reversed.
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.
§ 1.136(a)(1)(iv) (2010).

REVERSED

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