13948204 (P.T.A.B. Jan. 8, 2018)

Ex Parte Thirugnanasundaram et al

Patent Trial and Appeal BoardJan 8, 2018

13948204 (P.T.A.B. Jan. 8, 2018)

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. 13/948,204 07/23/2013 Veerasundaravel Thirugnanasundaram 20121009US01-CNDT2987US01 3604 144578 7590 01/09/2018 FAY SHARPE LLP / CONDUENT 1228 Euclid Avenue, 5th Floor The Halle Building Cleveland, OH 44115 EXAMINER SKHOUN, HICHAM ART UNIT PAPER NUMBER 2155 MAIL DATE DELIVERY MODE 01/09/2018 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 VEERASUNDARAVEL THIRUGNANASUNDARAM, DAVID R. VANDERVORT, TONG SUN, and ARUN BAKTHAVACHALU ____________________ Appeal 2017-007887 Application 13/948,2041 Technology Center 2100 ____________________ Before ST. JOHN COURTENAY III, LARRY J. HUME, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–22, which are all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 According to Appellants, the real party in interest is Xerox Corporation. App. Br. 1. Appeal 2017-007887 Application 13/948,204 2 INVENTION Appellants’ claimed invention relates to “a method and system for automatically suggesting responses based on social conversational content in customer care services.” Spec. 1. Claim 1 reads as follows, with the disputed limitations shown in italics: 1. A method for responding to a current message posted in a social media stream, the method comprising: monitoring a social media site for at least one current message including select subject matter; in response to identifying a current message, collecting a series of exchanges that form a conversational thread including the current message; determining at least one content attribute of the conversational thread including the current message; classifying the current message using at least one key attribute; searching a database for a reference message using a combination of the at least one content and key attributes; determining a previous outcome of a reference thread including the reference message, the determining including: parsing words in a customer-posted response of the reference thread, where the customer-posted response was made after a user's previous solution was posted to the reference thread, and automatically applying the parsed words to a stored dictionary to associate the words as belonging to one of a number of predetermined sentiments; and, in response to the words belonging to a positive sentiment, displaying the user's previous solution for determining a course of action. Appeal 2017-007887 Application 13/948,204 3 REJECTIONS2 Claims 1–7, 10–16, 19, 20, and 22 stand rejected under 35 U.S.C. § 102(a)(2) as anticipated over Makanawala et al. (US 2013/0262598 A1, publ. Oct. 3, 2013) (“Makanawala”). Final Act. 2. Claims 8, 9, 17, 18, and 21 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Makanawala and McGann et al. (US 8,521,818 B2, iss. Aug. 27, 2013) (“McGann”). Final Act. 12. ANALYSIS Rejection of Claims 1–7, 10–16, 19, 20, and 22 under 35 U.S.C. § 102(a)(2) In rejecting claim 1 as anticipated by Makanawala, the Examiner found Makanawala’s similar message system, which identifies keywords in the social media message 503a and then searches previously received social media messages in a message history database, discloses the limitation “in response to identifying a current message, collecting a series of exchanges that form a conversational thread including the current message,” recited in claim 1. Final Act. 3 (citing Makanawala, Fig. 5, ¶ 61). The Examiner mapped Makanawala’s social media message 503a (shown in Figure 5) as the recited “current message.” Final Act. 3; Ans. 5. The Examiner also mapped social media messages containing certain keywords (see Makanawala, Fig. 5 (element 505a)) as the recited “conversational thread including the current message.” Final Act. 3; Ans. 5–6. 2 In the event of further prosecution, we leave it to the Examiner to consider whether the claimed subject matter is judicially-excepted from patent eligibility under 35 U.S.C. § 101. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) §1213.02. Appeal 2017-007887 Application 13/948,204 4 Appellants argue the Examiner erred because the social media messages shown in 505 of Makanawala Figure 5 do not disclose a “conversational thread including the current message,” as claim 1 requires. App. Br. 6–7. Appellants explain the solution finder 505 in Figure 5 consists of messages similar to, but not including, the current message. App. Br. 7; Reply Br. 6. We agree with Appellants that the Examiner erred by not clearly showing that Makanawala discloses the disputed limitation. We agree the common usage or ordinary meaning of the word “thread” in the field of social media or digital communications would reasonably have indicated to one skilled in the relevant art that the “series of exchanges that form a conversational thread including the current message” would mean a chain or series (i.e., thread) of related exchanges (i.e., a conversation) that includes the current message and any responses. See App. Br. 6 (citing definitions). Although limitations found as embodiments in applicants’ disclosure cannot be imported into the claim, the understanding that a claim requires a conversational chain is consistent with the Specification (e.g., ¶¶ 32, Fig. 3 (element S306)). The Examiner, on the other hand, failed to direct us to any disclosure in the Specification or drawings indicating that the inventors contemplated claim 1 to read on anything other than a conversational chain including the current message and related responses/exchanges. Under these circumstances, we conclude the Examiner’s claim construction was overly broad and, therefore, in error. Appeal 2017-007887 Application 13/948,204 5 On the record before us,3 therefore, we agree with Appellants the Examiner erred with respect to the anticipation rejection of independent claims 1 and 14 (see App. Br. 9–12), and claims 2–13 and 15–22, which depend therefrom.4 Accordingly, we reverse the Examiner’s rejection of independent claims 1 and 14, as well as dependent claims 2–13 and 15–22. DECISION We reverse the Examiner’s decision rejecting claims 1–22. REVERSED 3 Appellants raise additional arguments in the Appeal Brief. Because the identified issue is dispositive of the appeal, we do not reach the additional arguments. 4 Because the Examiner has not shown how the secondary reference McGann overcomes the deficiencies of the primary reference Makanawala, we also reverse the dependent claims rejected under § 103(a).