Ex Parte Nelken et al

Patent Trial and Appeal Board

Feb 21, 2013

10835694 (P.T.A.B. Feb. 21, 2013)

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.
10/835,694 04/29/2004 Yoram Nelken SVL920050713US2 8963
45729 7590 02/22/2013
GATES & COOPER LLP - IBM
6701 CENTER DRIVE WEST
SUITE 1050
LOS ANGELES, CA 90045
EXAMINER
COUGHLAN, PETER D
ART UNIT PAPER NUMBER
2122
MAIL DATE DELIVERY MODE
02/22/2013 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 YORAM NELKEN, RONEN HOD, AMIR NAVOT,
SAM MICHELSON, RANDY JESSEE,
TSACHY SHACHAM, BETH LANIN,
NISSAN HAJAJ, AVI MARGALIT,
JOSEMINA MAGDALEN, and DANI COHEN
____________________

Appeal 2010-002666
Application 10/835,694
Technology Center 2100
____________________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002666
Application 10/835,694

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-32. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The invention on appeal “relates generally to computer software, and
more particularly to relationship management software for classifying and
responding to customer communications.” (Spec. 1). Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A computer-implemented software tool for training
and testing a knowledge base of a computerized customer
relationship management system, comprising:

corpus editing processes for displaying and editing
corpus items belonging to a corpus, and for assigning a suitable
category from a set of predefined categories to individual
corpus items;

knowledge base building processes for building a
knowledge base of a computerized customer relationship
management system by performing natural language and
semantic analysis of a first subset of the corpus items and
thereby deriving semantic and statistical information from the
corpus items that are associated with nodes in the knowledge
base;

knowledge base testing processes for testing the
knowledge base of the computerized customer relationship
management system on a second subset of the corpus items by
extracting concepts from the corpus items of the second subset,
performing statistical pattern matching to generate a set of
match scores for each corpus item of the second subset, wherein
each match score in the match score set represents a confidence
level for classifying each corpus item of the second subset into
at least one of the predefined categories using the semantic and
statistical information associated with the nodes in the
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knowledge base of the computerized customer relationship
management system; and

reporting processes for generating reports based on
results produced by the knowledge base testing processes and
causing the reports to be displayed to a user of the
computerized customer relationship management system to
gauge performance of the knowledge base, so that appropriate
adjustments are made to improve the performance of the
knowledge base.

REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Karr US 2001/0022558 Al Sep. 20, 2001
Donovan US 2003/0014324 Al Jan. 16, 2003

Lecun et al., Gradient-Based Learning Applied to Document
Recognition, 86 Proceedings of the IEEE, November 1998, at 2278-
2324.

California Scientific Software, BrainMaker Professional: User’s
Guide and Reference Manual, pp. 2-4 to 2-5, 2-8 to 2-10, 12-15 to 12-
16, 13-23 to 13-24, 13-29 to 13-31 (4th ed. 1993) (hereinafter
“Brainmaker”).

REJECTIONS
Claims 1-4, 6-14, 16-19, 21-28, and 32 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over the combination of Lecun and
Brainmaker.
Claims 5 and 20 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over the combination of Lecun, Brainmaker, and Karr.
Claims 15 and 29-31stand rejected under 35 U.S.C. §103(a) as being
unpatentable over the combination of Lecun, Brainmaker, and Donovan.
Appeal 2010-002666
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Contentions
Appellants contend:
First, Appellants' attorney notes that "customer
relationship management system" is recited throughout the
body of each claim, not just the preamble, and thus the body of
each claim depends upon the preamble for completeness.
Second, Lecun describes only neural networks that
classify images as handwritten characters, and recites nothing
related to a customer relationship management system, or the
training and testing of a knowledge base for a customer
relationship management system. Appellants' attorney submits
that it is unlikely that one of ordinary skill in the art would rely
upon the handwriting recognition system of Lecun to build a
computer-implemented tool for training and testing a
knowledge base of a computerized customer relationship
management system, as recited in Appellants' claims, because
the systems are so different from each other.
(App. Br. 14).

The Examiner disagrees:

CRM is not further defined and the specification is not
the measure of the invention. Therefore, limitations contained
therein can not be read into the claims for the purpose of
avoiding the prior art; see In re Sprock, 55 CCPA 743,386 F.2d
924,155 USPQ 687 (1968). Although claims are read in light of
the specification, limitations from the specification are not read
into the claims. See In re Van Geuns, 988 F.2D 1181, 26
USPQ2d 1057 (Fed. Cir. 1993). Lecun clearly teaches
computerized CRM because Lecun discloses 'Gradient based
learning applied to document recognition.' The Examiner views
analysis of communications having the same domain as
document recognition.
The Appellant argues that the references do not recite the
'training and testing a knowledge base of a computerized
customer relationship management system.' This phrase is used
only in the preamble of independent claims 1 and 16 and are
not addressed by the Office Action.
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(Ans. 23-24).

ANALYSIS
Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested
“a computerized customer relationship management system” and a
“computer-implemented software tool for training and testing a knowledge
base of a computerized customer relationship management system,” within
the meaning of claim 1, and the commensurate language of claims 16 and
32?
We agree with Appellants. We conclude as an initial matter of claim
construction that the recited “computerized customer relationship
management system” is the essence or a fundamental characteristic of
Appellants’ claimed invention. See Vizio, Inc. v. Int’l Trade Comm’n, 605
F.3d 1330, 1341 (Fed. Cir. 2010) (“[T]he ‘for decoding’ language . . . is
properly construed as a limitation, and not merely a statement of purpose or
intended use for the invention, because ‘decoding’ is the essence or a
fundamental characteristic of the claimed invention.”).
Contrary to the Examiner’s contentions (Ans. 23-24), the
“computerized customer relationship management system” recited in
Appellants’ preamble is supported no less than four times in the body of
claim 1. Moreover, the preamble limitation of “testing a knowledge base” is
fully supported by the “knowledge base testing processes” clause recited in
the body of claim 1. We conclude the “training” limitation of the preamble
is supported by the recitation in the body of claim 1 of “the appropriate
adjustments are made to improve the performance of the knowledge base.”
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Further, the Examiner expressly admits that the disputed preamble limitation
was “not addressed by the Office Action.” (Ans. 24).
We also find both the Lecun and Brainmaker references relied on by
the Examiner are silent regarding a computerized customer relationship
management system. Therefore, on this record, we find the weight of the
evidence supports Appellants’ principal contention that “Lecun describes
only neural networks that classify images as handwritten characters, and
recites nothing related to a customer relationship management system, or the
training and testing of a knowledge base for a customer relationship
management system.” (App. Br. 14, emphasis added).
For essentially the same reasons argued by Appellants in the Appeal
Brief (14), on this record, we cannot affirm the Examiner’s obviousness
rejection of independent claim 1, and independent claims 11 and 21, which
recite the aforementioned disputed limitations in commensurate
form. Because we have reversed the obviousness rejection for each
independent claim before us on appeal, we also reverse the Examiner’s
§ 103 rejections of each associated dependent claim.

DECISION
We reverse the Examiner's rejections of claims 1-32 under § 103.
ORDER
REVERSED

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