Lenovo (Singapore) Pte. Ltd.

Patent Trials and Appeals Board

Apr 19, 2021

2019007014 (P.T.A.B. Apr. 19, 2021)

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.
13/919,293 06/17/2013 Howard Locker RPS920130033USNP(710.233) 9979
58127 7590 04/19/2021
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
AHMED, SABA
ART UNIT PAPER NUMBER
2154
MAIL DATE DELIVERY MODE
04/19/2021 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOWARD LOCKER, DARYL CROMER,
ROD D. WALTERMANN, and AARON MICHAEL STEWART
Appeal 2019-007014
Application 13/919,293
Technology Center 2100
Before ELENI MANTIS MERCADER, CARL L. SILVERMAN, and
JASON M. REPKO, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–12, and 14–26. See Non-Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Lenovo (Singapore)
PTE. LTD. Appeal Br. 3.
Appeal 2019-007014
Application 13/919,293

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CLAIMED SUBJECT MATTER
The claims are directed to a smart tags for content retrieval. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method, comprising:
generating, at a user device, one or more tags comprising
contextual information associated with a user specific object,
wherein the tag is generated from speech input provided by a
user;
the generating comprising analyzing, using one or more
processors, the speech input to be associated with the user
specific object to identify one or more key words in the speech
input to create the one or more tags; and
storing the one or more tags comprising the one or more
key words in a searchable format.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Stetina US 2006/0259345 A1 Nov. 16, 2006
Iampietro US 8,200,669 B1 June 12, 2012

REJECTION2
Claims 1–2, 4–12, and 14–26 are rejected under 35 U.S.C. § 103 as
being unpatentable over Iampietro in view of Stetina. Non-Final Act. 8.

2 The Examiner withdrew the 35 U.S.C. § 101 rejection, and thus, it is not
before us for review.
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Application 13/919,293

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Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1, 2, 4–12, 14–26 103 Iampietro, Stetina

OPINION
Claims 1, 11, 21, and 22 rejected under 35 U.S.C. § 103 as being
unpatentable over Iampietro in view of Stetina.
We adopt the Examiner’s findings and we add the following primarily
for emphasis and clarification.
A. Is there motivation to combine Iampietro and Stetina?
Appellant argues that there is no motivation to combine the prior art
references. Appeal Br. 23. Also, Appellant argues that there is no
discussion as to why one of ordinary skill in the art would have been
motivated to combine Iampietro and Stetina, let alone how the combination
of these references was supposed to work to teach the inventive concepts
outlined in the currently claimed embodiments. Appeal Br. 24.
We do not agree with Appellant’s argument. The reason or
motivation to modify the reference may often suggest what the inventor has
done, but for a different purpose or to solve a different problem. It is not
necessary that the prior art suggest the combination to achieve the same
advantage or result discovered by Appellant. See In re Kahn, 441 F.3d 977,
987 (Fed. Cir. 2006) (motivation question arises in the context of the general
problem confronting the inventor rather than the specific problem solved by
the invention). See MPEP § 2144 IV.
The Examiner finds that “[i]t would have been obvious to modify
Iampietro as taught by Stetina because the user speech input data would be
enhanced by semantic meaning tags.” Non-Final Act. 9. In other words,
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Iampietro teaches a description of the tag (i.e., metadata) which would be
enhanced by associating a meaning to the tag through speech (i.e., the
description of the tag such as “red” matches the color red of the displayed
content indicating a red triangle using speech input). See Non-Final Act. 8–
9 (citing Iampietro, col. 5, ll. 43–50 and Stetina, para. 83 and Fig. 4)
Further, we agree with the Examiner’s finding that both Iampietro and
Stetina teach features that are directed to analogous art and they are directed
to the same field of endeavor, because they both pertain to user input tags.
Ans. 7.
B. Does the combination of Iampietro and Stetina teach or suggest the
disputed limitations?
1. Does Stetina teach or suggest generation or storage of an
object retrieval tag?
Appellant argues that nowhere in the disclosure of Stetina is
generation or storage of an object retrieval tag taught or suggested. See
Appeal Br. 26.
We do not agree with Appellant’s argument. Stetina teaches speech
input used to tag the word “red” with the semantic tag representing the
semantic data type “colour,” namely a “colour-name.” See Non-Final Act.
8–9 (citing Stetina para. 83). In other words, Stetina teaches the generation
of an object retrieval tag. Id. Further, the tag would have to be stored
otherwise it would contradict retrieval of such tag because it cannot be
retrieved unless stored. That is, once generated the tag is necessarily stored
in some storage medium (e.g., memory, ram, hard drive, etc.). Furthermore,
we note that Iampietro, in the same field of endeavor, explicitly teaches that
tags may be stored within the computer system. See col. 10, ll. 35–38. A
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determination of obviousness does not require the claimed invention to be
expressly suggested by any one or all of the references. See In re Keller,
642 F.2d 413, 425 (CCPA 1981). Thus, the combination teaches generation
or storage of an object retrieval tag.
2. Does Iampietro’s teaching that the object first be generated in
order for the tag to be created meet the claim limitations of
claims 1, 11, 21, and 22?
Appellant argues that the Specification states that a smart tag may be
generated before or at the time of object creation. Appeal Br. 27.
Specifically, Appellant argues that Iampietro teaches a system which
generates tags based upon content in the image after the image has been
analyzed for different parameters. Appeal Br. 26 (citing Iampietro col. 8, ll.
53–63). According to Appellant, nowhere in the claimed limitations or in
the Specification is this expressly required, meaning that a smart tag may be
generated before or at the time of object creation. Appeal Br. 27. Appellant
points us to the Specification stating “[i]n an embodiment, when the user
gets ready to take a picture (e.g., opens the camera application) an
embodiment queries a user if he or she wants to add smart tags. If the user
does, an embodiment allows smart tagging, e.g., collection of speech data to
create the smart tags for an object.” Id. (citing Specification para. 22).
We do not agree with Appellant’s argument. Claims 1, 11, 21, and 22
do not require that the smart tag is created before the object creation.
Rather, claim 1, for example, recites that the tags in the “generating” step
have information “associated with a user specific object.” Because of this
association, the objects would have to been created before being associated
with the tags. Thus, we agree with the Examiner’s reliance on Iampietro for
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teaching generating tags after the image has been created to meet the claim
limitations.
Furthermore, to the extent that Appellant points us to the embodiment
of the Specification of paragraph 22, we do not read limitations from the
Specification into the claims. Although claims are interpreted in light of the
specification, limitations from the specification are not read into the claims.
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Additionally, the
embodiments in the Specification are not intended to be limiting. See
Spec. paras. 22 and 84. Thus, we do not read the embodiment of the
Specification paragraph 22 into claims 1, 11, 21, and 22.
We note that to the extent that some of the dependent claims may
suggest the smart tag is created before object creation, Appellant did not
raise such an argument and as such it is waived. Any arguments Appellant
could have made, but chose not to make, in the Briefs are waived. See
37 C.F.R. § 41.37(c)(1)(iv).
Accordingly, we affirm the Examiner’s rejection of claims 1, 11, 21,
and 22 rejected under 35 U.S.C. § 103 as being unpatentable over Iampietro
in view of Stetina.

Claims 2, 4–10, 12, 14–20, and 23–26 rejected under 35 U.S.C. § 103 as
being unpatentable over Iampietro in view of Stetina.
We also affirm the Examiner’s rejection of claims 2, 4–10, 12, 14–20,
and 23–26 not argued separately.
CONCLUSION
The Examiner’s decision to reject claims 1, 2, 4–12, and 14–26 is
AFFIRMED.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–12,
14–26
103 Iampietro, Stetina 1, 2, 4–12,
14–26

Overall
Outcome
1, 2, 4–12,
14–26

RESPONSE
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