Ex Parte Vassilieva et al

Patent Trial and Appeal Board

Mar 23, 2017

13422139 (P.T.A.B. Mar. 23, 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.
13/422,139 03/16/2012 Natalia Vassilieva 82929153 5913
56436 7590
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
BAKER, MATTHEW H
ART UNIT PAPER NUMBER
2659
NOTIFICATION DATE DELIVERY MODE
03/27/2017 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 NATALIA VASSILIEVA and ANNA YARYGINA
Appeal 2016-000976
Application 13/422,139
Technology Center 2600
Before JASON V. MORGAN, JOSEPH P. LENTIVECH, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—15, the only claims pending in the
application on appeal. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, LP. App. Br. 1.
Appeal 2016-000976
Application 13/422,139
STATEMENT OF THE CASE
Appellants ’ Invention
Appellants’ invention generally relates to an iterative approach for
extracting domain-specific acronyms and their definitions from documents.
Spec. 19. Claim 1, which is exemplary, reads as follows:
1. A method comprising:
identifying, by a processor circuit, a string of characters
indicative of a candidate acronym within a first portion of a
document comprising at least two portions;
extracting, by the processor circuit, text proximal to the
identified string of characters, the text indicative of a definition
for the candidate acronym;
creating, by the processor circuit, a candidate
acronym/defmition pair comprising the identified string of
characters and the extracted text;
applying, by the processor circuit, a classification system
to the candidate acronym/defmition pair to create or update an
acronym/defmition pair dictionary specific to the document; and
applying the created or updated acronym/defmition pair
dictionary specific to the document to candidate
acronym/defmition pairs created from a second portion of the
document.
Rejections
Claims 1—7 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 3^4.
Claims 1,8, and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Byrd et al. (US 2003/0139921 Al;
published July 24, 2003) (“Byrd”) and Gupta (US 7,236,923 Bl; issued June
26,2007). Final Act. 4—6.
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Appeal 2016-000976
Application 13/422,139
Claims 2-4, 6, 7, 9-11, and 13—15 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Byrd, Gupta, and D.
Nadeau and Peter Turney, A Supervised Learning Approach to Acronym
Identification, The Eighteenth Canadian Conference on Artificial
Intelligence (AI ’2005), pp. 319-29 (2005)2 (“Nadeau”). Final Act. 7-11.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Byrd, Gupta, Nadeau, and Leah S.
Larkey, Paul Ogilvie, M. Andrew Price, and Brenden Tamilo, Acrophile: An
Automated Acronym Extractor and Server, Proc. of the Fifth ACM
Conference on Digital Libraries, pp. 205—14 (2000) (“Larkey”). Final
Act. 11-12.
ANALYSIS
§101 Rejection
Issue 1: Did the Examiner err in finding that claims 1—7 are directed to
nonstatutory subject matter under 35 U.S.C. § 101?
Regarding the rejection of claims 1—7 under 35 U.S.C. § 101,
Appellants do not separately argue claims 1—7. See App. Br. 7—9; Reply
Br. 2—7. We select claim 1 as representative of this group, and claims 2—7
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants contend the Examiner erred in finding claim 1 is directed
to non-statutory subject matter. App. Br. 7—9; Reply Br. 2—7. Appellants
contend “the ‘machine or transformation’ test alone is not the proper test for
determining whether a claim is directed to patentable subject matter” and
2 The version of this article of record is the accepted manuscript, archived
with the National Research Council of Canada, available at http://nparc.cisti-
icist.nrc-cnrc.gc.ca/eng/view/accepted/?id=10d2325b-bl8d-4ece-bbd3-
9bl525b0443a.
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Appeal 2016-000976
Application 13/422,139
because the Examiner’s analysis rests on this test alone, the Examiner has
failed to establish a prima facie case that claim 1 is directed to non-statutory
subject matter. App. Br. 7. Appellants further contend “claim 1 does not
conform to any of the examples of ‘abstract ideas’ provided in the Interim
Guidance, such as ‘fundamental economic practices, certain methods of
organizing human activities, an idea ‘of itself,’ and mathematical
relationships/formulas.’” App. Br. 8 (citing 2014Interim Guidance on
Patent Subject Matter Eligibility, Fed. Reg. Vol. 79, No. 241, pp. 74, 618—
33 (2014)). In addition, Appellants contend claim 1 is directed to statutory
subject matter because it includes “significantly more” than an abstract idea,
clearly confines itself to a particular useful application, and the Examiner
has failed to establish that the recited subject matter was known in the prior
art. App. Br. 8—9.
As Appellants correctly note, a patent claim’s failure to satisfy the
machine-or-transformation test is not dispositive of the § 101 inquiry.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed.
Circ. 2011) (citing Bilski v. Kappos, 130 S.Ct. 3218, 3227 (2010)). To
determine whether a claim is eligible under § 101, “[w]e must first
determine whether the claims at issue are directed to a patent-ineligible
concept.” Alice Corp. v. CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014). If
they are, we then “consider the elements of each claim both individually and
‘as an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct.
1289, 1297-98 (2012)).
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Appeal 2016-000976
Application 13/422,139
Here, claim 1 recites a method comprising:
identifying ... a string of characters indicative of a candidate
acronym within a first portion of a document . . . extracting . . .
text proximal to the identified string of characters . . . creating
... a candidate acronym/definition pair comprising the identified
string of characters and the extracted text; applying ... a
classification system to the candidate acronym/defmition pair to
create or update an acronym/defmition pair dictionary specific to
the document; and applying the created or updated
acronym/defmition pair dictionary specific to the document to
candidate acronym/defmition pairs created from a second portion
of the document.
In other words, the subject matter of claim 1 is directed to analyzing
and extracting data from a first portion of a document, processing the data,
and using the processed data to analyze and extract data from a second
portion of the document. See also Spec. 127 (“The logic flow 300 may
identity candidate acronyms, extract definitions for them from text within
the document 105 proximal to the candidate acronyms and process them
according to a classification system that includes user feedback.”); 131
(“The remainder of the document 105 may be analyzed and processed using
an iterative approach in which the local classification model 155 may be
applied to the next portion of the document 105.”)
To determine whether a claim is directed to a patent-ineligible
concept, we “examine earlier cases in which a similar or parallel descriptive
nature can be seen—what prior cases were about, and which way they were
decided.” AMDOCS (Israel) Limited v. Openet Telecom, Inc., 841 F.3d
1288, 1294 (Fed. Circ. 2016) (citing Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353—54 (Fed. Cir. 2016)). We determine that the subject
matter independent claim 1 is “directed to” bears considerable resemblance
to the abstract idea identified in Content Extraction & Transmission LLC v.
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Appeal 2016-000976
Application 13/422,139
Wells Fargo Bank, Nat’l Ass ’n, 776 F.3d 1343, 1345 (Fed. Cir. 2014). The
claims in Content Extraction were directed to 1) collecting data, 2)
recognizing certain data within the collected data set, and 3) storing that
recognized data in a memory. See Content Extraction, 776 F.3d at 1345
(Fed. Cir. 2014). Different from the abstract idea identified in Content
Extraction, independent claim 1 recites the additional functionality of
“applying the created or updated acronym/definition pair dictionary specific
to the document to candidate acronym/defmition pairs created from a second
portion of the document.” However, processes directed to analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, have been determined to be essentially mental
processes within the abstract-idea category. See, e.g., In re TLI Commc ’ns
LLC Patent Litigation, 823 F.3d 607, 613 (Fed. Cir. 2016); Digitech Image
Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir.
2014); SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed.Appx.
950, 955 (Fed. Cir. 2014); Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012); CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011); SiRF Tech.,
Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010).
Accordingly, we determine that claim 1 is directed to a patent-ineligible
abstract idea.
For the second step of the analysis, we determine whether the
limitations present in the claims represent a patent-eligible application of the
abstract idea. Alice, 134 S.Ct. at 2357. For the role of a computer in a
computer-implemented invention to be deemed meaningful in the context of
this analysis, it must involve more than performance of “well-understood,
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Application 13/422,139
routine, [and] conventional activities previously known to the industry.” Id.
at 2359 (citation omitted). A mere instruction to implement an abstract idea
on a computer is not enough to qualify as “significantly more” in
determining whether any element, or combination of elements, in the claim
is sufficient to ensure that the claim amounts to significantly more than the
abstract idea itself. Alice, 134 S.Ct. at 2350-55. Additionally, merely
presenting the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of the collection and analysis of
data. See, e.g., Content Extraction, 776 F.3d at 1347; Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
Claim 1 recites a generic computer element—a processor circuit—and
describes the functions performed by the generic computer element. The
claim describes the functions without specificity as to how the functions are
performed and does not recite any particular asserted inventive technology
for performing the described functions. As such, we do not find any
“inventive concept” that transforms the abstract idea of analyzing and
extracting data from a first portion of a document, processing the data, and
using the processed data to analyze and extract data from a second portion of
the document into a patent-eligible application of that abstract idea. See
Ultramercial, 772 F.3d at 715—16 (holding the claims insufficient to supply
an inventive concept because they did not “do significantly more than
simply describe [the] abstract method,” but rather are simply “conventional
steps, specified at a high level of generality”) (quoting Alice, 134 S. Ct. at
2357).
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Application 13/422,139
For the foregoing reasons, we sustain the Examiner’s rejection of
claim 1, and claims 2—7, which fall therewith, under 35U.S.C. § 101.
§103 Rejections
Claim 1
Issue 2: Did the Examiner err in finding that the combination of Byrd
and Gupta teaches or suggests “applying the created or updated
acronym/definition pair dictionary specific to the document to candidate
acronym/definition pairs created from a second portion of the document,” as
recited in claim 1?
Gupta, upon which the Examiner relies for teaching the disputed
limitation (see Final Act. 5—6 (citing Gupta, Fig. 6; 9:55—10:6; 10:44—64;
19:42—59); Ans. 19), is directed to an acronym expansion system that
“receives electronic documents and extracts acronyms and their
corresponding meanings.” Gupta, Abstract. Gupta teaches that upon
identifying a tagged word in a document as a possible acronym (“acronym
candidate”), an expansion candidate identifier module selects expansion
candidates or terms within the text in the neighborhood of the identified
acronym candidate. Gupta 7:41—46. Gupta teaches that the expansion
candidates may be a set of words prior to or preceding the acronym
candidate and a set of words following or subsequent to the acronym
candidate. Gupta 8:2—7. The expansion candidates are then sequentially
processed to determine the presence of an expansion for the acronym
candidate. Gupta 8:18—21. Gupta teaches that an acronym expansion tool
“may search any quantity or portion of the expansion candidates to identify
an expansion” and that the acronym expansion “tool may further search each
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Application 13/422,139
of the [expansion] candidates irrespective of prior identification of an
expansion, and may remove any duplicate expansions.” Gupta 19:11—15.
The Examiner finds Gupta’s “process of handling duplicate
expansions is a clear example of applying a pairs dictionary definition
created from a first portion of the document to pairs created from a second
portion of the document, because duplicate expansions would necessarily be
from more than one search window.” Ans. 9 (citing Gupta 19:42—59).
Appellants contend Gupta fails to teach or suggest the disputed
limitation. App. Br. 12—14. In particular, Appellants contend Gupta’s
teaching regarding removing duplicate expansions fails to teach the disputed
limitation because during the described processes for identifying expansions
and removing any duplicate expansions, the meaning of the possible new
acronym is not known and nor is it known if the possible new acronym is
actually an acronym. App. Br. 13—14.
Gupta teaches that the expansion candidates “each basically include a
sequence of words in which an expansion for an acronym may be searched.”
Gupta 7:50-52. Gupta teaches that the expansion candidates are processed
sequentially and “[w]hen a valid expansion is identified within a list [i.e., an
expansion candidate], processing of the current potential acronym ceases
(e.g., remaining lists [i.e., expansion candidates] are not searched) and the
next potential acronym within the text is identified and processed.” Gupta
3:30-36. As such, we agree with Appellants that Gupta’s process of
removing duplicate expansions occurs prior to identification of a valid
expansion for the acronym. The Examiner’s findings fail to explain how
removing duplicate candidate expansions, generated for a particular acronym
candidate, as taught by Gupta, teaches or suggests applying a created or
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Application 13/422,139
updated acronym/definition pair dictionary, to candidate acronym/definition
pairs created from a second portion of the document, as required by claim 1.
Because we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments.
Accordingly, we are constrained by the record to not sustain the Examiner’s
rejection under 35 U.S.C. § 103(a) of claim 1; and claims 8 and 12, which
recite corresponding limitations.
Claims 2—7, 9-11, and 13—15 stand rejected under 35 U.S.C. § 103(a)
based on Byrd, Gupta, and various additional references. The Examiner
does not find these additional references cure the deficiencies identified
above with respect to claim 1. Accordingly, we do not sustain the rejections
of claims 2—7, 9-11, and 13—15 under 35 U.S.C. § 103(a) for the same
reasons.
DECISION
We affirm the Examiner’s rejection of claims 1—7 under 35 U.S.C.
§101.
We reverse the Examiner’s rejections of claims 1—15 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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