Jukka Honkola et al.

Patent Trials and Appeals Board

Dec 5, 2019

13332763 - (D) (P.T.A.B. Dec. 5, 2019)

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.
13/332,763 12/21/2011 Jukka Honkola P4783US01 6038
11764 7590 12/05/2019
Ditthavong & Steiner, P.C.
44 Canal Center Plaza
Suite 305
Alexandria, VA 22314
EXAMINER
HOANG, HAU HAI
ART UNIT PAPER NUMBER
2167
NOTIFICATION DATE DELIVERY MODE
12/05/2019 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):
Nokia.IPR@nokia.com
docket@dcpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JUKKA HONKOLA, VESA-VEIKKO LUUKKALA,
SERGEY BOLDYREV, MIKA JUHANI MANNERMAA,
HANNU ENSIO LAINE, and IAN JUSTIN OLIVER
____________________

Appeal 2018-0011741
Application 13/332,763
Technology Center 2100
____________________

BEFORE JOSEPH L. DIXON, THU A. DANG, and
JAMES W. DEJMEK, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

1 In a prior Decision (Appeal Number 2014-001436, decided December 4,
2015), we affirmed the Examiner’s rejection of claims 1–20 under 35 U.S.C.
§ 102(b) over the teachings of Salmenkaita.
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I. STATEMENT OF THE CASE

Appellant2 appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 2, 4, 7–12, 14, and 17–26.3 Claims 3, 5, 6, 13, 15, and 16 were
previously canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
A. INVENTION
According to Appellant, the invention relates to “providing input
suggestions” wherein “the suggestion list is dynamically generated with high
probability of including useful entries for the customer to choose from.”
Spec. ¶ 4.

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
l. A method comprising:
presenting a user interface element including at least one
input field;
determining at least one field type associated with the at
least one input field;
identifying at least one information store, context store, or
a combination thereof of an information management
environment based on the at least one field type; and
migrating one or more computation closures for
generating one or more suggestions, one or more default values,
or a combination thereof for the at least one input field to the at

2 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a) (2016). According to Appellant, the real party in interest
is Nokia Technologies Oy. Appeal Br. 2.
3 Although Appellant indicates that claims 2 and 12 are not subject to this
Appeal (Appeal Br. 6, 8), claims 2 and 12 have not been withdrawn, and
thus, are still pending, standing finally rejected under 35 U.S.C. § 112, first
paragraph, 35 U.S.C. § 112, second paragraph, and 35 U.S.C. § 103.
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least one information store, context store, or a combination
thereof,
wherein the one or more computation closures include a
granular set of instructions, data, and execution context for
processing other data available to the at least one information
store, context store, or a combination to generate the one or more
suggestions, the one or more default values, or a combination
thereof; and
wherein the one or more computation closures are
executed at the at least one information store, context store, or a
combination thereof to generate the one or more suggestions, the
one or more default values, or combination thereof based on the
other data, and to aggregate the generated one or more
suggestions, the generated one or more default values, or a
combination thereof in the one or more computation closures.

C. REJECTIONS

1. Claims 1, 2, 4, 7–12, 14, and 17–26 stand rejected under pre-AIA
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Final Act. 3–6.
2. Claims 2, 8, 12, and 18 stand rejected under pre-AIA 35 U.S.C. § 112,
second paragraph, as being indefinite. Final Act. 6.
3. Claims 1, 2, 4, 7–12, 14, and 17–26 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Murayama (U.S. 2011/0246575 A1;
published October 6, 2011), in view of Meijer (U.S. 2013/0138730 A1;
published May 30, 2013). Final Act. 7–25.

II. ISSUES
The principal issues before us are whether the Examiner erred in
finding that
1. The limitation
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wherein the one or more computation closures are executed at the at
least one information store, context store, or a combination thereof to
generate the one or more suggestions, the one or more default values,
or combination thereof based on the other data, and to aggregate the
generated one or more suggestions, the generated one or more default
values, or a combination thereof in the one or more computation
closures
(Claim 1 (emphasis added)) is not supported by Applicant’s disclosure as
originally filed.
2. The term “the computations” is unclear for lacking antecedent basis.
Id.
3. The combination of Murayama and Meijer teaches or would have
suggested “migrating” one or more “computation closures,” wherein the
computation closures include “a granular set of instructions, data, and
execution context,” and are executed “to generate” one or more suggestions
and/or default values, and to aggregate them into the one or more
computation closures. Id.

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Murayama
1. Murayama discloses a server that can format requests for delivery to
suggestion sources along with client contexts. Murayama, Abst. A client
application can include input objects to permit a user to enter text, image,
audio, or other data, and can include suggestion interfaces that include, or
are based on, the user entries with the client applications. Id. ¶ 24. A
suggestion data source can be provided to, based on the entered test, provide
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probable words as a suggestion. Id. ¶ 29. In one suggestion method, queries
are communicated to suggestion data sources that are selected based on the
particular client and/or particulars of the client request. Id. ¶ 38.

Meijer
2. Meijer discloses an operation that can be processed on a processing
engine (such as a relational database service) on behalf of a client. Meijer,
Abst. The operation can be formulated as a sequence of instructions to be
applied to data. Id. ¶ 18. In one example, the operation is partitioned into a
pre-processing client portion and post-processing client portion, so that some
parts of the operation are performed on the server, which a significant
amount of the filtering and organizing of the operation is allocated to the
client. Id. ¶ 23. For example, the pre-engine portion is executed at the client
to produce a pre-engine partially executed operation, which is then sent to
the processing engine, and then receiving a processing engine partially
executed operation. Id. ¶ 24. The evaluation is completed by executing the
post-engine portion of the computing engine partially executed operation at
the client. Id.

IV. ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments presented in this appeal. Arguments which Appellant could have
made, but did not make in the Brief are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(iv). On the record before us, we are unpersuaded
the Examiner has erred. We adopt as our own the findings and reasons set
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forth in the rejections from which the appeal is taken and in the Examiner’s
Answer, and provide the following for highlighting and emphasis.
Rejection Under 35 U.S.C. § 112, First Paragraph
The Examiner rejects the claims 1–2, 4, 7–12, 14, and 17–26 under
§ 112, first paragraph as failing to comply with the written description
requirement. Final Act. 3–6; Ans. 19–23. In particular, the Examiner finds
that the limitation “to aggregate . . . in the one more computation closures”
(claims 1 and 11) is not supported by the disclosure as originally filed. Id.
Similarly, the Examiner finds “receiving the one or more computations from
the at least one information store, the context store, or a combination thereof
after execution of the one or more computations at the at least one
information store, context store, or a combination” (claims 2 and 12
(emphasis omitted)) is not supported by the disclosure as originally filed. Id.
Appellant does not provide arguments as to claims 2 and 12, but
merely contends that “claims 2 and 12 are not subject to this Appeal.”
Appeal Br. 6. However, because claims 2 and 12 have not been withdrawn,
these claims are still pending and stand rejected. Because Appellant does
not provide substantive arguments to challenge the Examiner’s rejection of
these claims, we pro forma sustain the rejection of claims 2 and 12 under
35 U.S.C. § 112, first paragraph.
As to the other claims, citing paragraphs 33–36 of the Specification,
Appellant contends that “[the] disclosure makes clear that . . . the results of
the distributed execution of these closures may be aggregated to for the
result of the overall computation.” Appeal Br. 8. According to Appellant,
“[o]ne having ordinary skill in the art would have clearly understood from
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the originally filed disclosure that Appellant had possession of the now
claimed invention.” Id.
We are not persuaded by Appellant’s arguments.
Here, by contending that “[o]ne having ordinary skill in the art would
have clearly understood” (Appeal Br. 8), Appellant appears to be arguing
that given the disclosure in the Specification, it would have been obvious to
a skilled artisan that Appellant had possession of the contested limitations at
the filing of the application. However, a Specification which merely renders
obvious the claimed invention (i.e., which relies on possession or reduction
to practice outside of the Specification) is not sufficient to satisfy the written
description requirement. Our reviewing court guides “actual ‘possession’ or
reduction to practice outside of the specification is not enough. Rather, . . .
it is the specification itself that must demonstrate possession.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352; see also PowerOasis,
Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306–07 (Fed. Cir. 2008)
(explaining that § 112, ¶ 1 “requires that the written description actually or
inherently disclose the claim element”).
[I]t is ‘not a question of whether one skilled in the art might be
able to construct the patentee’s device from the teachings of the
disclosure. . . . Rather, it is a question whether the application
necessarily discloses that particular device.’ . . . A description
which renders obvious the invention for which an earlier filing
date is sought is not sufficient.

Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)
(quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963) (emphasis
added)).
Applying this reasoning here, we are not persuaded by Appellant’s
statements that “[o]ne having ordinary skill in the art,” upon reading
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paragraph 33–36’s of the Specification (“processing results can be collected
and aggregated into the result of the execution of the initial overall
computation”) would understand “to aggregate” a combination of generated
suggestions and default values “in the one or more computation closures”
(claim 1) is supported by the Specification. Appeal Br. 8 (emphasis added).
Thus, we are persuaded by the Examiner’s finding that the limitation “to
aggregate . . . in the one more computation closures” is not supported by the
disclosure as originally filed. Final Act. 3–6; Ans. 19–23.
On this record, we sustain the Examiner’s rejection of representative
claim 1, and dependent claims 4, 7–10, and 21–26 falling therewith, under
35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement. As independent claim 11 is rejected under the
same reasoning as claim 1, and Appellant merely contends these claims are
allowable for the same reason as claim 1 (Appeal Br. 6–8), we also affirm
the rejection of claim 11, and dependent claims 14 and 17–20 falling
therewith.

Rejection under 35 U.S.C. § 112, second paragraph
The Examiner rejects dependent claims 2, 8, 12, and 18 as being
indefinite. Ans. 2; Final Act. 6. In particular, the Examiner concludes that
the term “the computations” is indefinite as lacking antecedent basis in the
claims. Ans. 6–7; Final Act. 6. According to the Examiner, independent
claim 1 does not recite any “computation.” Ans. 7.
As to claims 2 and 12, Appellant contends that “claims 2 and 12 are
not subject to this Appeal.” Appeal Br. 8. However, because claims 2 and
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12 are still pending and stand rejected, we pro forma sustain the rejection of
claims 2 and 12 under 35 U.S.C. § 112, second paragraph.
As to claims 8 and 18, Appellant contends that “one of ordinary skill
in the art would have recognized that the recitation of ‘the computations’
refers back to the ‘computation closures.’” Appeal Br. 9. However, we are
not persuaded by Appellant’s contention that the Examiner erred in finding
the claims indefinite.
Appellant’s Specification draws a distinction between “computations”
and “computation closures.” See, e.g., Spec. ¶¶ 28, 34 (describing
computation closures providing slices of computations, wherein “a
computation is divided into its primitive computation closures”). Here,
although claims 8 and 18 recite “the one or more computations” (emphases
added), claim 1 and 11, from which the claims respectively depend, do not
recite any “one or more computations.” Instead, claims 1 and 11 merely
recite “one or more computation closures.” Given the Specification
clarification that “a computation” may comprise one or more “computation
closures,” we are unpersuaded by Appellant’s contention that “one of
ordinary skill in the art would have recognized that the recitation of ‘the
computations’ refers back to the ‘computation closures.’” Appeal Br. 9
(emphasis added).
On this record, we also sustain the Examiner’s rejection of claims 8,
and 18 under 35 U.S.C. § 112, second paragraph.

Rejection Under 35 U.S.C. § 103(a)
The Examiner rejects claims 1–2, 4, 7–12, 14, and 17–26 as obvious
over the combination of Murayama and Meijer. However, Appellant
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contends that the claims recite “computation closures,” which are “slices of
a computation,” and not “merely a set of instructions that are executed
separately, e.g., at client and at server side, and that together constitute a set
of instructions together, as referenced in the cited portions of Meijer.”
Appeal Br. 10. Appellant further contends that Examiner’s rationale for the
combination of references amounts to “substitution of objective evidence
with mere speculation” and “falls short in supporting a legal conclusion of
obviousness.” Appeal Br. 11.
We give the claims their broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). However, although we interpret claims broadly but reasonably in
light of the Specification, we nonetheless must not import limitations from
the Specification into the claims. See Phillips v. AWH Corp., 415 F.3d 1303,
1323 (Fed. Cir. 2005) (en banc) (citations omitted).
Although Appellant contends “computation closures” are “not merely a
set of instructions” and are “slices of a computation” (Appeal Br. 10; Reply
Br. 4), as Examiner points out, this limitation is not recited in the claims (Ans.
8). Further, the sections of the Specification that Appellant references as
support for possession of “in the one or more computation closures” (Spec. ¶¶
33–36, Appeal Br. 8; Reply Br. 3) merely state that “[a] particular
computation procedure together with relations and communication among
various processes . . . is often referred to a computation closure,” and that the
computation closure can be “e.g., a granular reflective set of instructions, data,
and/or related execution context or state” (Spec. ¶ 28 (emphasis added)). That
is, the referenced sections in the Specification do not provide any clear
definition for the recited “computation closure” and but merely disclose
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exemplary embodiments (id.), wherein exemplary embodiments are not a
“clear” definition. In fact, we note that this portion of the Specification states
that the computation closure “can be” alternative instruction, data “and/or”
context or state. In particular, this portion of the Specification indicates that
“instruction,” “data” and “context or state” are alternatives, wherein
“computation closure” may just be merely “instructions.” Accordingly, we are
unconvinced the Examiner’s interpretation of the claimed “computational
closures” as a portion of an operation (Ans. 8; Final Act. 9–11) is overly broad
or unreasonable.
Meijer discloses an operation in a processing system, where the
operation that is partitioned into several portions, which are performed and
executed at different parts of the processing system. FF 2. In particular, a
pre-engine portion is executed at the client to produce a pre-engine partially
executed operation, which is then sent to the processing engine to receive a
processing engine partially executed operation, where the post-engine
portion of the computing engine partially executed operation is executed at
the client. Id. That is, Meijer at least suggests that the portions are executed
to generate data at different parts of the processing system, and then to
aggregate the generated data from the various portions. Id. Thus, we agree
with the Examiner that the combination of Meijer (FF 2) with Murayma (FF
1) teaches and suggests the contested limitations.
As to Appellant’s argument that Examiner’s rationale is inadequate,
we find Examiner’s reasoning “to improve the performance at the server side
by conserving the resources of the server” (Final Act. 13, 21) to be sufficient
motivation to combine these two references, as we find the Examiner has
provided an “articulated reasoning with some rational underpinning to
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support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
In the Reply Brief, Appellant further argues that “[t]he stated and
unrelated objectives of” Murayama and Meijer “would have precluded one
of ordinary skill in the art from modifying these references in the manner
suggested by the Examiner” and thus “absent the present application as a
blueprint, one of ordinary skill in the art would not have turned to Meijer in
any attempt to remedy the admitted deficiencies of Murayama.” Reply
Br. 4–5.
However, to the extent Appellant may advance new arguments in the
Reply Brief not in response to a shift in the Examiner’s position in the
Answer, we note that arguments raised in a reply brief that were not raised in
the appeal brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause, which Appellant has
not shown. See 37 C.F.R. § 41.41(b)(2).
Nevertheless, on this record, we find no error with the Examiner’s
combination of Murayama and Meijer. Final Act. 13, 21. Accordingly, we
find no error in the Examiner’s rejection of independent claim 1, and
independent claim 11 not separately argued and, thus, falling therewith
(Appeal Br. 11) over Murayama and Meijer. Appellant provides no separate
arguments for patentability of claims 2, 4, 7–10, 12, 14, and 17–26
depending respectively from claims 1 and 11, and, thus, these claims also
fall therewith over Murayama and Meijer.

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V. CONCLUSION
We affirm the Examiner’s rejections of claims 1, 2, 4, 7–12, 14, and
17–26 under 35 U.S.C. § 112, first paragraph.
We affirm the Examiner’s rejections of claims 2, 8, 12, and 18 under
35 U.S.C. § 112, second paragraph.
We affirm the Examiner’s rejections of claims 1, 2, 4, 7–12, 14, and
17–26 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)(1)(iv).

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 7–
12, 14, 17–
26
112, first
paragraph
Written description 1, 2, 4, 7–
12, 14, 17–
26

2, 8, 12, 18 112, second
paragraph
Indefiniteness 2, 8, 12, 18
1, 2, 4, 7–
12, 14, 17–
26
103(a) Murayama, Meijer 1, 2, 4, 7–
12, 14, 17–
26

Overall
Outcome
1, 2, 4, 7–
12, 14, 17–
26

AFFIRMED