Ex Parte Wolska et al

Board of Patent Appeals and Interferences

Aug 30, 2011

10713863 (B.P.A.I. Aug. 30, 2011)

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.
10/713,863 11/14/2003 Magdalena Wolska 128534-00501 (07027356) 1865
20583 7590 08/30/2011
JONES DAY
222 EAST 41ST ST
NEW YORK, NY 10017
EXAMINER
HUTTON JR, WILLIAM D
ART UNIT PAPER NUMBER
2176
MAIL DATE DELIVERY MODE
08/30/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MAGDALENA WOLSKA and JILL BURSTEIN

____________________

Appeal 2009-014876
Application 10/713,863
Technology Center 2100
____________________

Before, ROBERT E. NAPPI, JONI Y. CHANG and DAVID M. KOHUT,
Administrative Patent Judges.

CHANG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014876
Application 10/713,863
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 4-5, 7-12, 14, 16, 21-26, 28 and 30. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
Exemplary Claims
Appellants claim a computer-implemented method and a computer
system for evaluating an essay to detect at least one writing style error (e.g.,
overly repetitive word usage). Claims 1, 5 and 111 are representative of the
subject matter on appeal:
1. A method for automatically evaluating an essay to detect at least
one writing style error, comprising:
electronically receiving an essay on a computer system;
assigning a feature value for each of one or more features for
one or more text segments in the essay, wherein the feature values are
automatically calculated by the computer system;
storing the feature values for the one or more text segments on a
data storage device accessible by the computer system;
comparing the feature values for each text segment with a
model configured to identify at least one writing style error, wherein
the model includes at least one decision tree to determine a probability
associated with a likelihood of the at least one writing style error, and
wherein the at least one decision tree is generated based on at least
one human evaluated essay; and
displaying an indication of an identified writing style error.

5. The method of claim 1, wherein the function words of the essay are
not considered by the computer system in determining the feature
values.

11. The method of claim 1 wherein the feature values comprise a
value indicating whether the text segment includes a pronoun.

1 The claims are reproduced from the claims appendix of the Appeal Brief,
and all references to Appeal Brief are to the Brief filed December 10, 2008.
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Rejections on Appeal
According to the Appeal Brief and Examiner’s Answer2, claims 2-3,
6, 13, 15, 17-20, 27 and 29 are canceled, and claims 31-54 are withdrawn.
(App. Br. 2 and Ans. 2). Therefore, these canceled and withdrawn claims
are not before us for review in this appeal.
The following are the only rejections before us for review (Ans. 3):
1. Claims 1, 4, 7-10, 12, 14, 16, 21-24, 26, 28 and 30 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Foltz3 in view of Brill4
and Schabes5.
2. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Foltz, Brill, Schabes and Mitchell6.
3. Claims 11 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Foltz, Brill, Schabes and Mitchell.

Appellants’ Contentions
(1) Rejection of Claims 1, 4, 7-10, 12, 14, 16, 21-24, 26, 28 and 30
Appellants assert that the combination of the cited prior art references
does not describe or suggest all the claim elements. (App. Br. 4). However,
Appellants do not provide any reasons why. (App. Br. 4-5). For example,
Appellants do not challenge any specific findings by the Examiner with
respect to the scope and content of the references, and do not particularly
point out how the language of the claims patentably distinguishes the claims
from the references. Id.

2 All references to Answer are to the Answer dated March 20, 2009.
3 Foltz et al., US 6,356,864 B1, March 12, 2002, filed July 23, 1998.
4 Brill et al., US 2004/0002994 A1, January 1, 2004, filed June 27, 2002.
5 Schabes et al., US 2004/0093567 A1, May 13, 2004, filed May 22, 2002.
6 Mitchell, US 2003/0149692 A1, August 7, 2003, filed March 20, 2001.
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(2) Rejection of Claim 5
Appellants contend that Mitchell “not only fails to teach or suggest
but actually teaches away from not considering the function words of the
essay” as recited in the claim (emphasis omitted). (App. Br. 6). According
to Appellants, contrary to Appellants’ process that removes the function
words so that they will not be considered, Mitchell extracts certain words
(e.g., nouns and verbs), “and then submits data representations of such
constituent parts of each student answer to semantic analysis.” Id.

(3) Rejection of Claims 11 and 25
Appellants assert that “Mitchell does not process pronouns (vs.
general nouns, which are distinct from pronouns)” as recited in the claims
because Mitchell fails to expressly mention pronouns. (App. Br. 6-7).

Issues on Appeal
1. Whether Appellants have shown that the Examiner erred in rejecting
claims 1, 4, 7-10, 12, 14, 16, 21-24, 26, 28 and 30 under 35 U.S.C. § 103(a)
as being unpatentable over Foltz in view of Brill and Schabes.
2. Whether Appellants have shown that the Examiner erred in rejecting
claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Foltz, Brill,
Schabes and Mitchell, because the combination of references fails to teach
or suggest the additional limitation in claim 5.
3. Whether Appellants have shown that the Examiner erred in rejecting
Claims 11 and 25 under 35 U.S.C. § 103(a) as being unpatentable over Foltz,
Brill, Schabes and Mitchell, because the combination of references fails to
teach or suggest the additional limitation in the claims.
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ANALYSIS
(1) Rejection of Claims 1, 4, 7-10, 12, 14, 16, 21-24, 26, 28 and 30
We have reviewed the Examiner’s rejections in light of Appellants’
arguments. Appellants argue claims 1, 4, 7-10, 12, 14, 16, 21-24, 26 and 28
as a group. (App. Br. 4). Appellants provide a separate heading for claims 5
and 30, but no separate argument for claim 30 is presented. (App. Br. 6).
Claim 30 does not recite the same additional limitation as claim 5, and
therefore the arguments for claim 5 do not apply to claim 30. Accordingly,
we select claim 1 as the representative claim for the rejection of claims 1, 4,
7-10, 12, 14, 16, 21-24, 26, 28 and 30. 37 C.F.R. § 41.37(c)(1)(vii).
We adopt the Examiner’s findings set forth in the action from which
this appeal is taken (p. 2-17) and in the Examiner’s Answer (p. 4-16) with
respect to this rejection. Appellants provide a general allegation that the
references do not teach or suggest all the claim elements. However, no
specific argument as to why the Examiner erred is provided. Appellants
have not shown error in the Examiner’s rejection. We concur with the
conclusion reached by the Examiner. Therefore, the rejection is sustained.
As to Appellants’ request that the Board consider the after-final
amendment filed September 18, 2008, the entry of the amendment was
denied by the Examiner (Advisory Action dated September 30, 2008), and
thereby the amendment is not part of the record for review. Thus, we did not
consider the claims presented in the amendment. Any challenges to the
Examiner’s decision on the entry should have been presented as a petition
under 37 C.F.R. § 1.181 within two months from the Examiner’s decision.
See 37 C.F.R. § 1.181(f). With respect to Appellants’ request that the Board
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include a statement as to how the claims may be amended to overcome the
rejection, we do not wish to make such a statement in this appeal.

(2) Rejection of Claim 5
We disagree with Appellants’ contention that the Examiner erred in
rejecting claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Foltz,
Brill, Schabes and Mitchell. Claim 5 depends on claim 1 and adds a
limitation (“wherein the function words of the essay are not considered by
the computer system in determining the feature values”). The Examiner
cites Mitchell for the disclosure of the additional limitation. (Ans. 16-17).
The Examiner concludes that it would have been obvious to combine
Mitchell with the references applied to claim 1, because it would simplify
the word recognition and sentence analysis process. Id. We agree with the
Examiner’s conclusion.
Mitchell describes a computer-implemented process and system for
the electronic assessment of free-form text against a standard, in which
semantic-syntactic templates prepared from the standard are compared with
a semantically-syntactically tagged form of the free-form text, and an output
assessment is derived from the comparison. In one of the embodiments,
Mitchell teaches that “the semantic analysis removes superfluous words
from the syntactic structure” and “[o]nce the superfluous words have been
removed, the remaining words may be lemmatised.” (Mitchell [0017]-[0018]
and [0114]). Therefore, the removed words are not considered in the
Mitchell’s process, similar to Appellants’ process that removes “function
words such as prepositions, articles, and auxiliary verbs.” (Spec. 9, [0030]).
This is consistent with Appellants’ specification and statements made in the
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Appeal Brief that the “function words” are not considered by the computer
system when they are removed. (Spec. 9, [0030] and App. Br. 6).
Appellants did not point out any differences between Mitchell’s
removal of superfluous words and Appellants’ removal of “function words.”
Rather, Appellants’ arguments are based on Mitchell’s disclosure of parsing
the student answer into constituent parts (Mitchell [0026]-[0027]), which is a
separate and distinct process step than the removal of superfluous words
(Mitchell [0017]-[0018]). We recognize that the removed superfluous words
are not reduced to variant forms in Mitchell’s process, because only the
remaining words are being lemmatized. Id. As such, any consideration of
the remaining words (or the variant forms of the remaining words) does not
include the removed superfluous words.
For the foregoing reasons, Appellants have not shown error in the
Examiner’s rejection of claim 5. This rejection is sustained.

(3) Rejection of Claims 11 and 25
Appellants argue claims 11 and 25 as a group. (App. Br. 6-7). We
select claim 11 as the representative claim. 37 C.F.R. § 41.37(c)(1)(vii).
We disagree with Appellants’ contention that the Examiner erred in
rejecting claims 11 and 25 under 35 U.S.C. § 103(a) as being unpatentable
over Foltz, Brill, Schabes and Mitchell. Claim 11 depends on claim 1 and
adds a limitation (“wherein the feature values comprise a value indicating
whether the text segment includes a pronoun”). The Examiner cites Mitchell
for the disclosure of the limitation because Mitchell teaches the steps of
parsing a free-form text answer into constituent parts by categories
(e.g., nouns, adjectives, adverbs, modifiers and prepositions), and comparing
the constituent parts of the student answer against the corresponding
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constituent parts of the mark scheme answer during the semantic analysis.
(Ans. 17-18; also see Mitchell [0003], [0015], [0026], [0048]-[0067] and
figure 7). The Examiner concludes that it would have been obvious to a
person of ordinary skill at the time of the invention to apply Mitchell’s
teaching to pronouns, in combination of the prior art references applied to
claim 1, because it would take into account potential variations in writing
styles. (Ans. 17-18). We agree with the Examiner’s findings and
conclusion.
Appellants argue that Mitchell discloses the processing of nouns
rather than pronouns. (App. Br. 6-7). We recognize that Mitchell’s teaching
is not limited to the categories expressly listed in the reference because
Mitchell states that “[t]ypically, this processing extracts the constituent parts
of the mark scheme answers, for example (but not limited to): Nouns;
Verbs; Modifiers; Prepositions; Adjective; Adverbs; Any of the
abovementioned word types.” (Mitchell [0048]). In addition, there is a
small number of finite categories of words in the English language. And
pronouns are commonly used in essays. As implied by Mitchell, the
analysis for nouns may be applied to other categories (e.g., pronouns). KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“the analysis need not
seek out precise teachings [in the prior art] directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ”);
see also In re Translogic Tech. Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007)
(“the fundamental proposition that obvious variants of prior art references
are themselves part of the public domain” should not be overlook).
Therefore, we are not persuaded by Appellants’ argument that a person of
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ordinary skill in the art at the time of invention would not have applied
Mitchell’s process to pronouns.
For the foregoing reasons, Appellants have not shown error in the
Examiner’s rejection of claims 11 and 25. This rejection is sustained.

CONCLUSION
Appellants have not shown that the Examiner erred in rejecting:
1. Claims 1, 4, 7-10, 12, 14, 16, 21-24, 26, 28 and 30 under 35 U.S.C.
§ 103(a) as being unpatentable over Foltz in view of Brill and Schabes;
2. Claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Foltz, Brill,
Schabes and Mitchell; and
3. Claims 11 and 25 under 35 U.S.C. § 103(a) as being unpatentable over
Foltz, Brill, Schabes and Mitchell.

DECISION
We affirm the rejections of claims 1, 4-5, 7-12, 14, 16, 21-26, 28 and 30.

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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