Ex Parte Wang

Board of Patent Appeals and Interferences

Sep 28, 2006

10147673 (B.P.A.I. Sep. 28, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KUANSAN WANG
__________

Appeal No. 2006-2458
Application No. 10/147,673
__________

ON BRIEF
__________

Before THOMAS, JERRY SMITH, and MACDONALD, Administrative Patent
Judges.

JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s rejection of claims 1-25.
The disclosed invention pertains to a method and apparatus for
decoding ambiguous input using anti-entities.
Representative claims 1 and 15 are reproduced as follows:
1. A method of interacting with a user on a computer system,
the method comprising:

interacting with the user to identify an entity that the user does
not want;

setting an anti-entity value based on the identified entity without
setting values for entities that were not presented to the user while
interacting with the user;

using the anti-entity value to clarify ambiguous input from the
user by reducing a likelihood that the entity represented by the anti-
entity value will be considered as having been referenced in the
ambiguous input.

15. A computer-readable medium having computer-executable
instructions for performing steps comprising:

receiving an indication that a user wants to exclude an item from
consideration without receiving an indication that a user has selected
an item;

setting a value to reduce the likelihood that ambiguous input is
interpreted as including a reference to the item;

providing a response to the user;

after providing the response, receiving ambiguous input that can
be interpreted as having a reference to the item; and

accessing the value to determine how to interpret the ambiguous
input.

The examiner relies on the following references:
Zhilyaev 6,137,911 Oct. 24, 2000
Horiguchi et al. (Horiguchi) 6,282,507 Aug. 28, 2001
Robinson et al. (Robinson) 6,801,190 Oct. 05, 2004
(filed May 26, 2000)

The following rejections are on appeal before us:
1. Claims 1-25 stand rejected under 35 U.S.C. § 112, first paragraph,
for failing to comply with the written description requirement
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[answer, pages 3 and 4].
_ Claims 1-3, 7-17, 19 and 23-25 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the teachings of
Horiguchi in view of Robinson [answer, pages 4-7].
3. Claims 4-6, 18 and 20-22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the teachings of Horiguchi in view of
Robinson, and further in view of Zhilyaev [answer, pages 7-10].

Rather than repeat the arguments of appellant or the examiner, we make
reference to the briefs and the answer for the respective details thereof.
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OPINION

We have carefully considered the subject matter on appeal, the
rejections advanced by the examiner and the evidence of obviousness relied
upon by the examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision, the
appellant’s arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in rebuttal set forth in
the examiner’s answer. Only those arguments actually made by appellant
have been considered in this decision. Arguments which appellant could
have made but chose not to make in the briefs have not been considered
and are deemed to be waived. See 37 C.F.R.§ 41.37(c)(1)(vii)(2004). See
also In re Watts, 354 F.3d 1362, 1368, 69 USPQ2d 1453, 1458 (Fed. Cir.
2004).

It is our view, after consideration of the record before us, that the
evidence relied upon supports each of the examiner’s rejections of the claims
on appeal. Accordingly, we affirm.

I. We consider first the examiner’s rejection of claims 1-25 for failing to
satisfy the written description requirement of 35 U.S.C. § 112, first
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paragraph [answer, pages 3 and 4]. We address independent claims 1 and
15 infra as separately argued by appellant in the briefs.

As per independent claim 1: (§ 112, first paragraph rejection)
Appellant notes that claim 1 includes the negative limitation of “setting
an anti-entity value based on the identified entity without setting values for
entities that were not presented to the user while interacting with the user”
[brief, page 3]. Appellant argues that the instant specification shows that
appellant had possession of the concept found in claim 1 [brief, page 4].
Appellant points to page 22, line 33 through page 23, line 6 of the instant
specification:

For example, if the user asks to book a flight from “Bill's house to
Florida” and the dialog system determines that there are a number of people
named Bill, it may ask if the user meant “Bill Smith.” If the user says “No,”
the domain expert can use that information to set an anti-entity value for
the entity “Bill Smith” at step 310.

Appellant notes that in the aforementioned example, the only anti-
entity value that is set is for an entity that was presented to the user [brief,
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page 4, emphasis added]. Appellant asserts that the example does not set
anti-entity values for entities that were not presented to the user [id.,
emphasis added]. Appellant concludes that the example shows that
appellant had possession of the instant invention at the time of filing, noting
that if the example is practiced as described, the public would perform the
elements of claim 1 [id.].

The examiner responds that the specification does not provide support
for the determining how the dialog system interacts with the user, and does
not state that other anti-entity values are not set [answer, page 11].

The examiner points out, as an example, that altering the anti-entity
value of one word may affect the priorities of other words in the list [id.].
The examiner concludes that the instant specification fails to provide support
for the limitation: “without setting values for entities that were not
presented” [answer, page 11, cont’d page 12; see also claim 1].

We begin by noting that section 112, paragraph 1, of the Patent Act
states that the “specification shall contain a written description of the
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invention.” 35 U.S.C. § 112. We note that the Court of Appeals for the
Federal Circuit has held that “[t]o fulfill the written description requirement,
the patent specification must describe an invention in sufficient detail that
one skilled in the art can clearly conclude that the inventor invented what is
claimed.” Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 967–968, 78
USPQ2d 1257, 1260 (Fed. Cir. 2006) (quoting Cordis Corp. v. Medtronic
AVE, Inc., 339 F.3d 1352, 1364, 67 USPQ2d 1876, 1885 (Fed. Cir. 2003)).
Our reviewing court has cautioned, however, that “[t]he disclosure as
originally filed does not … have to provide in haec verba support for the
claimed subject matter at issue.” Cordis Corp. v. Medtronic AVE, Inc., 339
F.3d at 1364, 67 USPQ2d at 1885 (internal citation omitted). “Although
[the applicant] does not have to describe exactly the subject matter
claimed, … the description must clearly allow persons of ordinary skill in the
art to recognize that [he or she] invented what is claimed.” In re Gosteli,
872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989) (citations
omitted). Put another way, “the applicant must . . . convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, he or she
was in possession of the invention.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991) (emphasis in
original). The written description, although it need not include information
that is already known and available to the experienced public, must be in
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sufficient detail to satisfy the statutory requirements, employing “[w]ords,
structures, figures, diagrams, formulas, etc., that fully set forth the claimed
invention.” Space Systems/Loral, Inc. v. Lockheed Martin Corp., 405 F.3d
985, 987, 74 USPQ2d 1534, 1535 (Fed. Cir. 2005) (quoting Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed.
Cir. 1997)). Finally, “[p]recisely how close the original description must
come to comply with the description requirement of section 112 must be
determined on a case-by-case basis.” Eiselstein v. Frank, 52 F.3d 1035,
1039, 34 USPQ2d 1467, 1470 (Fed. Cir. 1995) (quoting Vas-Cath, 935 F.2d
at 1561, 19 USPQ2d at 1116).

In the instant case, we will sustain the examiner’s rejection under 35
U.S.C. § 112, first paragraph because the example proffered by appellant
does not affirmatively disclose that the other entity values that were not
presented to the user are not set [page 22, line 33 through page 23, line 6
of the instant specification]. In particular, we note that the disputed
negative limitations for claims 1 and 15 were added by an amendment to
the claims that was filed on March 14, 2005. While literal support is not
required, we nevertheless find that appellant has failed to convey with
reasonable clarity to those skilled in the art that he or she was in possession
of the invention as of the filing date sought. We agree with the examiner
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that silence within the specification fails to provide the requisite written
support for a negative limitation in the claim, even when the void is skillfully
buttressed by appellant’s speculation and conclusory statements. We further
find that silence fails to satisfy the statutory requirement of a written
description that must provide support for every element of the claim not
otherwise already known and available to the experienced public. Therefore,
we conclude that the requisite written description support is missing from
the specification for the instant claimed negative limitation of “without
setting values for entities that were not presented to the user while
interacting with the user” [claim 1]. Accordingly, we will sustain the
examiner’s rejection of claims 1-14 for failing to satisfy the written
description requirement of 35 U.S.C. § 112, first paragraph.

As per independent claim 15: (§ 112, first paragraph rejection)
Appellant notes that claim 15 includes the limitations of “receiving an
indication that a user wants to exclude an item from consideration without
receiving an indication that a user has selected an item” [brief, page 4].
Appellant points again to the example in the instant specification at page 22,
line 33 through page 23, line 6 as allegedly showing receiving an indication
that a user wants to exclude an item (e.g., the user says “no”) without
receiving an indication that a user has selected an item [brief, page 5].
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Appellant asserts that there is no mention of the user selecting an item in
the example [id.]. Appellant asserts that according to the specification the
user can exclude an item without selecting an item [id.].
Appellant concludes that the negative limitation of claim 15 is thus
supported by the specification and that the rejection under 35 U.S.C. §112,
first paragraph, should be reversed [id.].

The examiner responds that in the example pointed to by appellant
(see instant specification, page 22, line 33 through page 23, line 6), the user
must clearly say “No” in order to set the anti-entity value [answer, page
12]. The examiner argues that the user selecting “No” contradicts the
limitation in claim 15, i.e., “without receiving an indication that a user has
selected an item” [id.]. The examiner concludes that this shows a lack of an
adequate written description [id.].

We find that the evidence of record supports the examiner’s position.
In particular, we find that in the example argued by appellant, the user
actually makes multiple selections:
1. The user selects to book a flight from Bill’s house (i.e., selecting Bill or
at least the set of all individuals with “Bill” as their first name).
2. The user selects “NO.”
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Therefore, we agree with the examiner that the user selections in the
example pointed to by appellant contradict claim 15 and evidence lack of an
adequate written description [see instant specification, page 22, line 33
through page 23, line 6]. Accordingly, we will sustain the examiner’s
rejection of claims 15-25 for failing to satisfy the written description
requirement of 35 U.S.C. § 112, first paragraph for essentially the same
reasons argued by the examiner in the answer.

II. We consider next the examiner’s rejection of claims 1-3, 7-17, 19 and
23-25 as being unpatentable over the teachings of Horiguchi in view of
Robinson [answer, pages 4-7]. We address these claims infra as separately
argued by appellant in the briefs.

In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). The examiner must articulate reasons for the
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examiner’s decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430,
1434 (Fed. Cir. 2002). In particular, the examiner must show that there is a
teaching, motivation, or suggestion of a motivation to combine references
relied on as evidence of obviousness. Id. at 1343, 61 USPQ2d at 1433-34.
The examiner cannot simply reach conclusions based on the examiner’s own
understanding or experience - or on his or her assessment of what would be
basic knowledge or common sense. Rather, the examiner must point to
some concrete evidence in the record in support of these findings. In re
Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). Thus
the examiner must not only assure that the requisite findings are made,
based on evidence of record, but must also explain the reasoning by which
the findings are deemed to support the examiner’s conclusion. However, a
suggestion, teaching, or motivation to combine the relevant prior art
teachings does not have to be found explicitly in the prior art, as the
teaching, motivation, or suggestion may be implicit from the prior art as a
whole, rather than expressly stated in the references.

The test for an implicit showing is what the combined teachings, knowledge
of one of ordinary skill in the art, and the nature of the problem to be solved
as a whole would have suggested to those of ordinary skill in the art. In re
Kahn, 441 F.3d 977, 987-88, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) citing
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In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir.
2000). See also In re Thrift, 298 F. 3d 1357, 1363, 63 USPQ2d 2002, 2008
(Fed. Cir. 2002). These showings by the examiner are an essential part of
complying with the burden of presenting a prima facie case of obviousness.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the applicant to
overcome the prima facie case with argument and/or evidence. Obviousness
is then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See Id.; In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976).

As per claims 1-3, 7-10 and 14:
Since appellant’s arguments with respect to the rejection of claims
1-3, 7-10 and 14 have treated these claims as a single group which stand or
fall together, we will consider independent claim 1 as the representative
claim for this rejection. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). We note
that claim 13 will be considered with claim 12 infra because claim 13
depends upon claim 12 which is argued separately by appellant [see brief,
page 7].
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Appellant argues on page 6 of the brief:

FIG. 4F of Robinson and the corresponding language cited in
the Office Action relate to adjusting the prioritization of words in a
word list when a user picks a word from a word choice list. As
mentioned above, word choice lists are generated from word lists
that are included in vocabulary modules. Unlike the words in word
choice lists, items in word lists are not limited to words presented
for a user's consideration. As shown in FIG. 4G, during promotion
of a word in the word list, other words in the word list are
demoted. Since the word list includes words that are not displayed
to the user, this involves setting values for entities that were not
presented to the user. Specifically, “words intermediate between
where the selected word started and finished in the lexicon
promotion are effectively demoted by a value of one.” (Robinson,
Col. 31, line 50.)

In addition, the technique for promoting and demoting words
in Robinson assumes that non-displayed words are shifted. For
example, if the selected word has an index of 2 in the word list and
a non-selected word has an index of 1, column 31, lines 60 to
column 32, lines 10 of Robinson indicate that the selected word will
be promoted to index 1 (Index/2) and the non-selected word will
be demoted to index 3. (Index*2+1.) This leaves a vacancy at
index 2 that would assumably be filled by a word that was not
displayed to the user. (Note, if any other words were displayed to
the user but not selected, they would be moved down the index
and could not fill the 2 position in the index.) Thus, when the
prioritization value of a word is changed in a word list, prioritization
of words not presented to a user is also changed under the system
in Robinson. This is in contrast with the above-noted limitation of
claim 1. Thus, neither Horiguchi nor Robinson show or suggest the
invention of claim 1, or claims 2-3, 7-10 and 13-14 that ultimately
depend therefrom.

In response, the examiner disagrees [answer, page 12, ¶2]. The
examiner argues that appellant’s claims are unsupported and not seen in the
teachings of Robinson [id.]. In particular, the examiner disputes appellant’s
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assertion that Robinson's word list includes words that are not displayed to
the user, and that the technique for promoting and demoting words in
Robinson assumes that non-displayed words are shifted [id.]. The examiner
points out that the negative limitation of the claim reads: “without setting
values for entities not presented to the user” [id.]. In particular, the
examiner argues that the recited negative limitation does not require all
entities not presented to the user [id.].

In the reply brief appellant argues that appellant’s statement “the
technique for promoting and demoting words in Robinson assumes that non-
displayed words are shifted” is supported in Robinson at col. 31, line 60
through col. 32, line 10 where it is clear that the combination of explicit
demotion and explicit promotion of displayed words results in open index
values that would be filled by shifting non-displayed words [reply brief, page
5]. Appellant further asserts that whether or not the explicit demotion is
performed in every case is irrelevant [reply brief, page 5, cont’d page 6].
Appellant asserts that the fact that it is performed in some cases, and that
when it is performed it relies on words being shifted that were not displayed
to the user, indicates that the lexicon contains words that were not displayed
to the user [reply brief, page 6]. Appellant concludes that given the
existence of non-displayed words in the lexicon, even the “common”
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demotion process of Robinson would involve shifting words that were not
displayed [id.].

We agree with the examiner that the language of the negative
limitation broadly reads upon a reference that discloses at least one entity
that is not presented to the user that does not have its value set when an
identified entity is identified (i.e., selected by the user) [claim 1]. As
pointed out by the examiner, the language of the claim does not require that
all entities not presented to the user do not have their values set when an
identified entity is identified (i.e., selected). In particular, we note that
Robinson’s disclosure of demoting words that are intermediate between
where the selected word started and finished does not support appellant’s
contention that other (non-intermediate) words in the list are necessarily
moved [Robinson, col. 31, lines 50-52]. As pointed out by the examiner, we
note that appellant uses the word “assumably” to support the proffered
contention that a vacant location would be filled [answer, page 12, ¶3, see
also brief, page 6, ¶3 and reply brief, page 2, §3]. With respect to the
example proffered by appellant, we note that promoting a word at index
location 2 to index location 1, and demoting the word at index location 1 to
index location 3 does not necessarily affect the words located at index
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locations 4 through “n” (i.e., where “n” equals the number of words in the
index) [see brief, page 6, ¶3]. We do not find that the support proffered by
appellant (found in Robinson at col. 31, line 60 through col. 32, line 10)
resolves the issue in the manner asserted by appellant, as Robinson uses the
qualifier, “where appropriate, to decrease the frequency of words not
selected” and Robinson merely indicates that words in the list at positions
(IDX/2) down through (IDX1) are moved down (i.e., demoted) one position
in the list [reply brief, page 5, ¶2; see also Robinson col. 31, lines 58-66].
Therefore, we agree with the examiner that appellant’s assumptions are not
supported by the teachings of Robinson. Accordingly, we will sustain the
examiner’s rejection of representative claim 1 as being unpatentable over
Horiguchi in view of Robinson. We note that dependent claims 2, 3, 7-10
and 14 do not overcome the deficiencies of claim 1 since appellant has not
separately argued the patentability of these claims with respect to this
rejection. See In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528
(Fed. Cir. 1987). See also 37 C.F.R. § 41.37(c)(1)(vii)(2004). Accordingly,
we will also sustain the examiner’s rejection of claims 2, 3, 7-10 and 14 as
being unpatentable over Horiguchi in view of Robinson.

As per claim 11:

Appellant notes that claim 11 includes changing the linguistic grammar
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by setting a surface semantic output value in the linguistic grammar [brief,
page 7]. Appellant notes that the Office Action alleges that Horiguchi (col.
20, line 48 et seq.) shows this limitation [id.]. Appellant argues that the
cited language of Horiguchi relates to a tokenizer that takes an input string
comprising a sequence of words and breaks it into individual tokens, and
does not relate to setting a surface semantic output in a linguistic grammar
as required by claim 11 [id.].

The examiner disagrees [answer, page 13, ¶2]. The examiner notes
that the limitation in dispute is: “setting a surface semantic output value in
the linguistic grammar” [id.]. The examiner asserts that the term “surface
semantic output value” was not explicitly stated in the specification [id.,
emphasis added]. The examiner points to step 302 of the instant
specification that discloses converting the user input into a surface semantic
structure and parsing the input from the user by matching the input to one
or more parse structures defined by the linguistic grammar [id.; see also
instant specification, page 9, line 31-32]. The examiner further notes that
the instant specification discloses each parse structure is associated with a
semantic output structure generated on the display [answer, page 13, ¶2].

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In the reply brief, appellant argues that the probabilities in Horiguchi
are all used for matching an input, noting that the language of the claim
requires setting a “surface semantic output value” [reply brief, page 6, ¶3,
claim 11, emphasis added].

We note that the instant specification discloses that surface semantic
output (“”) tags are provided within each rule, and also that when
a rule matches (i.e., “fires”) the tags and tagged values within the
tags are placed as the surface semantic output [instant specification, page
10]. In particular, we note that Horiguchi’s system applies recognition rules
to a speech translation system that utilizes syntactic generation rules to
effect the translation from a first language to a target language (i.e., an
output language) whereby an output that is representative of the revised
version of the best hypothesis in a target language is presented to the user
[Horiguchi, col. 6, lines 1-13; col. 10, lines 46-53]. We also note that the
instant specification discloses surface semantic parsers 206 that utilize
device specific rules including linguistic grammars for speech and type inputs
[instant specification, page 9]. When we properly construe the language of
claim 11 in accordance with the broadest reasonable interpretation
consistent with the specification, we agree with the examiner that the claim
broadly reads on Horiguchi’s tokenizer 2102, tokenization rules 2152, and
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also analyzer 2104 that takes the output from tokenizer 2102 (i.e., a
sequence of tokens), and analyzes each word by consulting dictionary 2158
and a set of analysis rules 2156 to produce the output 2204 shown in the

right side of fig. 22 [Horiguchi, col. 20, lines 48-67, cont’d col. 21, lines
1-33]. Therefore, we find that the preponderance of the evidence supports
the examiner’s position. Accordingly we will sustain the examiner’s rejection
of claim 11 as being unpatentable over Horiguchi in view of Robinson for
essentially the same reasons argued by the examiner in the answer.

As per claims 12 and 13:
Appellant points out that claim 12 includes setting a surface semantic
value by setting a confidence level for the entity [brief, page 7]. Appellant
comments that the Office Action appears to suggest that Horiguchi mentions
probability/likelihood and therefore teaches this element [id.]. Appellant
argues that Horiguchi teaches or suggests nothing about setting a surface
semantic value by setting a confidence level for an entity [id.]. Appellant
further argues that Robinson does not overcome the deficiencies of the
Horiguchi reference [id.]. Therefore, appellant concludes that claim 12 is
non-obvious over the combination of Horiguchi and Robinson [id.].

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The examiner disagrees [answer, page 13, ¶2]. The examiner asserts
that the claimed “surface semantic output value” is equivalent to Horiguchi’s
teachings of probability and likelihood [id.]. The examiner argues that the
“confidence level” of claim 12 is simply a rating of how likely the word is the
correct one, and has not been defined otherwise by the instant specification
[id.]. The examiner concludes that the “confidence level” recited in claim 12
constitutes a probability or likelihood as disclosed in the cited prior art [id.]

We note that the instant specification discloses that the surface
semantic output can also include one or more attributes including a
confidence attribute that indicates the confidence of the semantic structure
marked by the tags [instant specification, page 12, lines 24-27]. We further
note that Horiguchi discloses the use of probabilities (i.e., broadly denoting a
“confidence level”) in the context of grammar rules for a speech translator
[Horiguchi, col. 18, lines 45-67, cont’d col. 19, lines 1-24]. Therefore, when
we broadly construe the language of the claim in light of the instant
specification, we again find that the weight of the evidence supports the
examiner’s position. Accordingly, we will sustain the examiner’s rejection of
claim 12 for essentially the same reasons argued by the examiner in the
answer. With respect to claim 13 (which depends upon claim 12), we note
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that a probability space encompasses a range from zero to one. Therefore,
we will also sustain the examiner’s rejection of claim 13 for the same
reasons set forth by the examiner in the rejection of claim 9, noting that
appellant has failed to separately argue claim 13 in the briefs [see answer,
page 6]. See 37 C.F.R.§ 41.37(c)(1)(vii)(2004).

As per claims 15-17, 19 and 23-25: [brief, pages 7 and 8]
Since appellant’s arguments with respect to the rejection of claims
15-17, 19 and 23-25 have treated these claims as a single group which
stand or fall together, we will consider independent claim 15 as the
representative claim for this rejection. See 37 C.F.R. §
41.37(c)(1)(vii)(2004).

Appellant argues on pages 7 and 8 of the brief:

Independent claim 15, which is similar to independent claim 1,
is directed to a computer-readable medium having computer-
executable instructions for performing steps that include “receiving
an indication that a user wants to exclude an item from
consideration without receiving an indication that a user has
selected an item.” As in the case of claim 1, the Office Action
suggests that Horiguchi does not show this limitation, but relies on
Robinson. (Citing FIG. 4F and the corresponding text.)

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As noted above, FIG. 4F of Robinson and the corresponding
language cited in the Office Action relate to adjusting the
prioritization of words in a word list when a user picks a word
(selects an item) from a word choice list. However, the cited
references (Horiguchi and Robinson) teach or suggest nothing
about “receiving an indication that a user wants to exclude an item
from consideration without receiving an indication that a user has
selected an item.” [emphasis in original] Therefore, independent
claim 15 and dependent claims 16-17, 19 and 23-25, which
ultimately depend from claim 15, are non-obvious over the cited
references.

The examiner disagrees [answer, page 13]. The examiner notes that the
negative limitation in dispute is: “receiving an indication that a user wants to
exclude an item from consideration without receiving an indication that a
user has selected an item” [id., emphasis added]. The examiner argues that
Horiguchi and Robinson teach an indication that the user wants to exclude
an item without the user selecting the item, asserting that the user selects a
different item in order to identify other items that are undesirable just as in
the instant specification example where the user selects a different item
(i.e., “No”) in order to identify another item that is undesirable, e.g., “Bill
Smith” [answer, page 13, cont’d page 14].

Appellant disputes the
examiner’s assertion in the reply brief and argues that saying “No” in the
example is not the selection of an item, but rather “No” is simply a negative
response [reply brief, page 4, cont’d page 5]. Appellant concludes that
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claim 15 is consistent with the above example [reply brief, page 5].
Appellant asserts that Robinson shows that a user does not want an item
only with the selection of another item [reply brief, page 7, ¶2]. Appellant
further concludes that Robinson does not show an indication of exclusion
without selecting an item [id.].

In response, we note again that we find the user actually makes
multiple selections in the example argued by appellant (see page 22, line 33
through page 23, line 6 of the instant specification). We find:
1. The user selects to book a flight from Bill’s house (i.e., selecting Bill or
at least the set of all individuals with “Bill” as their first name).
_ The user selects “NO.”

Therefore, we agree with the examiner that the user selections in the
example pointed to by appellant contradict claim 15 and fail to support
appellant’s arguments. Accordingly, we will sustain the examiner’s rejection
of representative claim 15 as being unpatentable over Horiguchi in view of
Robinson. We note that dependent claims 16-17, 19 and 23-25 do not
overcome the deficiencies of claim 15 since appellant has not separately
argued the patentability of these claims with respect to this rejection. See In
re Nielson, 816 F.2d at 1572, 2 USPQ2d at 1528. See also 37 C.F.R.
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§ 41.37(c)(1)(vii)(2004). Accordingly, we will also sustain the examiner’s
rejection of claims 16-17, 19 and 23-25 as being unpatentable over
Horiguchi in view of Robinson.

III. Lastly, we consider the examiner’s rejection of claims 4-6, 18 and 20-
22 as being unpatentable over the teachings of Horiguchi in view of Zhilyaev
[answer, pages 7-10]. We address these claims infra as separately argued
by appellant in the briefs.

As per claims 4-6:

Since appellants’ arguments with respect to this rejection have treated
these claims as a single group which stand or fall together, we will consider
dependent claim 4 as the representative claim for this rejection. See
37 C.F.R.§ 41.37(c)(1)(vii)(2004).

Appellant argues that dependent claim 4 includes a limitation “wherein
the likelihood value is a negative value” [brief, page 8]. Appellant notes that
fig. 4 of Zhilyaev illustrates a standard normal distribution curve, which is
used for significant word selection [id.]. Appellant asserts that each of the
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26
probabilities or likelihoods in fig. 4 have a positive value, noting that these
are the values on the “Y axis” [id.]. Appellant further notes that the values
on the horizontal axis represent the difference between the number of
occurrences of a word in the cluster and an expected number of occurrences,
referred to as a significance in Zhilyaev [id.]. Appellant asserts that this
difference (i.e., significance) can be positive or negative [id.]. Appellant
argues that, a negative difference (i.e., significance) is not a negative
likelihood as claimed [brief, page 8, cont’d page 9]. Appellant concludes
that Zhilyaev discloses that all of the likelihoods are positive as shown on
the Y axis of fig 4 [brief, page 9].
The examiner disagrees [answer, page 14, ¶2]. The examiner argues
that Zhilyaev teaches a negative value, at col. 10, line 1, et seq. [id.]. In
response to appellant’s argument that Zhilyaev’s significance value cannot
be equated to a “likelihood,” the examiner notes that Zhilyaev explains how
significance plays a role in determining which word the user intends to enter
(col. 3, lines 1-5) [id.]. The examiner concludes that Zhilyaev explains how
negative values affect the likelihood of a word being a viable option at col.
10, lines 59-65 [id.].

We note at the outset that if the recited term “likelihood” is accorded
its plain, ordinary, and accustomed meaning (i.e., corresponding to a
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“probability”) that probabilities cannot assume negative values, i.e., a
probability space only encompasses a range of probability values from zero
to one, where a value of zero indicates a zero probability and a value of one
indicates a 100 percent probability. Therefore, we agree with appellant that
each of the probabilities represented on the “Y axis” in fig. 4 has a positive
value. When we look to the instant specification for an alternate meaning,
we note that the specification provides support at page 19, lines 28-33,
cont’d page 20, lines 1 and 2:

Like the entity stack, the anti-entity stack decays over time by
applying a decaying likelihood attribute to the anti-entity. This
likelihood can be provided as a negative number such that if an
entity appears in both the entity stack and the anti-entity stack,
the likelihoods can be added together to determine if the entity
should be excluded from consideration or included as an option
[emphasis added].

We note that a negative likelihood, as supported in the instant
specification, corresponds to a negative attribute that represents the decay
of a probability over time. Nevertheless, we note that “decay over time” is
not claimed and has not been argued by appellant in the briefs. We note that
appellant has treated a negative likelihood as a probability, but has failed to
explain how a negative probability can exist. Because we find that a
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negative likelihood value is not a probability per se, we agree with the
examiner that a broad but reasonable interpretation of the language of the
claim reads upon the “negative significance” explicitly disclosed by Zhilyaev
at col. 10, lines 59 and 61. Therefore, we will sustain the examiner’s
rejection of claims 4-6 for essentially the same reasons argued by the
examiner in the answer.

As per claim 18:

Appellant notes that dependent claim 18 includes a limitation wherein
“setting a likelihood value comprises setting a negative value for the
likelihood” [brief, page 9]. Appellant argues that Zhilyaev does not teach
nor suggest this limitation for the same reasons provided above with respect
to the similar limitation of claim 4 [id.].

Accordingly, because we have sustained the examiner’s rejection of
dependent claims 4-6, we will also sustain the examiner’s rejection of
dependent claim 18 for the same reasons discussed supra with respect to
claim 4.

As per claims 20-22:

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Appellant argues that the dependent claims 20-22 are patentable over
the prior art of record because these claims each include features of the
independent claim 15 from which they depend [brief, page 9]. Accordingly,
because we have sustained the examiner’s rejection of independent claim
15, we will also sustain the examiner’s rejections of these dependent claims
for the same reasons discussed supra with respect to independent claim 15.

In summary, we have sustained the examiner’s rejections of all claims
on appeal. Therefore, the decision of the examiner rejecting claims 1-25 is
affirmed.
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)(iv).

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AFFIRMED

)
James D. Thomas )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Jerry Smith )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Allen R. MacDonald )
Administrative Patent Judge )
)

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JR/gw

THEODOORE M. MAGEE
WESTMAN CHAMPLIN & KELLY
INTERNATIONAL CENTRE
900 SOUTH SECOND, AVENUE, SUITE 1600
MINNEAPOLIS, MN 55402-3319