Ex Parte Sayers et al

Patent Trial and Appeal Board

Mar 17, 2017

13563658 (P.T.A.B. Mar. 17, 2017)

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.
13/563,658 07/31/2012 Craig P. SAYERS 83013803 6551
56436 7590
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
VO, HUYEN X
ART UNIT PAPER NUMBER
2659
NOTIFICATION DATE DELIVERY MODE
03/21/2017 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG P. SAYERS, CHET AN K. GUPTA, and
RIDDHIMAN GHOSH
Appeal 2016-000820
Application 13/5 63,65 s1
Technology Center 2600
Before CAROLYN D. THOMAS, NABEEL U. KHAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1 and 3—20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection within the provisions
of 37 C.F.R. §41.50(b).
1 Appellants identify Hewlett-Packard Development Company, LP, as the
real party in interest. App. Br. 1.
Appeal 2016-000820
Application 13/563,658
STATEMENT OF THE CASE
The Invention
Appellants’ invention relates to “[a] system [that] may include an
analysis engine to generate a set of candidate phrases from a content stream
based on the temporal resolution, the interestingness, and/or the correlation
of the candidate phrases.” Abs.
Exemplary independent claim 1 is reproduced below.
1. A method comprising:
extracting, by a processor of a computing device,
candidate phrases from a content stream;
thresholding, by the processor, the candidate phrases
below a minimum frequency for each candidate phrase;
determining, by the processor, a temporal distribution of
the candidate phrases by, for a plurality of groups corresponding
to different times, assigning to each group a number of the
candidate phrases having time stamps within the different time
to which the group corresponds;
determining, by the processor, interestingness of the
candidate phrases, wherein determining interestingness of the
candidate phrases comprises statistically analyzing the temporal
distribution of a candidate phrase; and
displaying, by the processor, the candidate phrases.
References and Rejections
1. Claims 1, 3—5, and 8—13 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Chim (US 2007/0043761, Feb. 22, 2007) and
Ehsani (US 2002/0032564 Al, Mar. 14, 2002).
2. Claims 6, 7, 14, 15, and 18—20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Chim, Ehsani, and Probst (US 8,626,801 B2,
Jan. 7, 2014).
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Appeal 2016-000820
Application 13/563,658
3. Claim 16 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Chim, Ehsani, Probst, and Criou (US 2008/0168032 Al,
July 10, 2008).
4. Claim 17 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Chim, Ehsani, Probst, and Kyuma (US 7,829,777 B2,
Nov. 9, 2010).
ANALYSIS
Claim 1 recites “assigning to each group a number of the candidate
phrases having time stamps within the different time to which the group
corresponds.” Independent claims 14 and 18 recite similar limitations. The
Examiner finds Figure 5 and corresponding paragraph 32 of Chim teaches or
suggests this limitation. Final Act. 4, 7, and 8. Figure 5 of Chim depicts a
table that lists phrases and “keeps count of each occurrence of a specific
phrase” falling within different times. Chim 132; Fig. 5.
Appellants argue:
the difference between the claimed invention [and the applied
art] is that in the claimed invention, for each time, the number of
the phrases that occurred in the time in question is determined,
whereas in the applied art, the number or count of the
occurrences of the phrases that occurred in the time in question
is determined.
Reply Br. 2; see also App. Br. 5—6.
The Examiner responds that “[t]he frequency of occurrence [in the
table of Fig. 5 of Chim] was never relied upon for the teaching of the
limitation regarding ‘number of candidate phrases’ assigned to each group.
The ‘number of candidate phrases’ was interpreted as the phrases themselves
appearing in each group as shown in the table in figure 5.” Ans. 3^4.
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Appeal 2016-000820
Application 13/563,658
We do not sustain the Examiner’s rejections of claims 1, 14, and 18
under 35 U.S.C. § 103(a) as unpatentable because the rejections are based on
speculative assumptions as to the meaning of the claims. See In re Steele,
305 F.2d 859, 862—63 (CCPA 1962) (“We do not think a rejection under 35
U.S.C. § 103 should be based on . . . speculations and assumptions. . . . [I]t
is essential to know what the claims do in fact cover.”) However, pursuant
to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of
rejection of claims 1,14, and 18 and their respective dependent claims under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which
Appellants regard as the invention. See Ex parte Miyazaki, 89 U.S.P.Q.2d
1207, 1211 (BPAI 2008) (precedential) (During patent examination, “if a
claim is amenable to two or more plausible claim constructions, the USPTO
is justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention . . . .”)
Although not made explicit in the briefing, it is apparent that the
Appellants and Examiner are interpreting the claim in two different ways.
Appellants interpret the claim as requiring a numerical value be assigned to
each group where the number represents the number of different phrases that
occur within each group, whereas the Examiner interprets the claim as
requiring the candidate phrases themselves as being assigned to each
group.2
Both these interpretations are plausible in light of the Specification.
The Specification explains that “the temporal distribution of the candidate
2 We do not make any determination as to the obviousness of the claims
under either of these interpretations.
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Appeal 2016-000820
Application 13/563,658
phrases includes grouping (‘binning’) the candidate phrases based on the
time stamp.” Spec. 144. The Specification goes on to state that “[t]he
groups themselves are temporarily organized, such that the candidate phrase
having the earliest time stamp is in the first group.” Id. (emphases added).
Thus, the Specification supports the Examiner’s interpretation that the
phrases themselves are assigned to a group. However, the Specification
goes onto explain that the temporal distribution is described by the following
equation: A = (ai, a2, a3,. . . an} where “a* is the number of candidate phrases
assigned to the ‘i-th’ group.” Spec. 144 (equation 2) (emphasis added).
Thus, the process of determining a temporal distribution includes both
assigning the candidate phrases themselves to the various groups and then
counting the number of candidate phrases in each group.
In light of the above, one of ordinary skill in the art would not
understand whether the limitation at issue is directed to assigning a number
of candidate phrases to each group based on their time stamp, or to
assigning a numerical value to each group corresponding to the number of
phrases that fall within each group. Accordingly, we conclude claims 1, 14,
and 18 are indefinite under 35 U.S.C. § 112, second paragraph, for failing to
particularly point out and distinctly claim the subject matter which the
Appellants regard as the invention. For the same reasons, we also conclude
claims 3—13, 15—17, 19, and 20, which depend from one of the
aforementioned independent claims, are also indefinite.
DECISION
The Examiner’s rejection of claims 1 and 3—20 is reversed.
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Appeal 2016-000820
Application 13/563,658
We enter a new ground of rejection of claims 1 and 3—20 under 35
U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED
37 C.F.R, $ 41.50(b)
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