Ex Parte Stobbs et al

Patent Trial and Appeal Board

Mar 15, 2017

13346280 (P.T.A.B. Mar. 15, 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.
13/346,280 01/09/2012 Gregory A. STOBBS 9305-000002/COB 1165
27572 7590 03/17/2017
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
CORRIELUS, JEAN M
ART UNIT PAPER NUMBER
2162
NOTIFICATION DATE DELIVERY MODE
03/17/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY A. STOBBS and JOHN V. BIERNACKI
Appeal 2015-000131
Application 13/346,280
Technology Center 2100
Before JOHN A. JEFFERY, DENISE M. POTHIER, and SCOTT E. BAIN,
Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—7. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
The Invention
Appellants’ invention relates to a computer-implemented system or
tool for analyzing patents. See Spec. Tflf 2, 7—11. Linguistic techniques are
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Application 13/346,280
used to analyze patent information (e.g., claims, specifications, abstracts,
and titles) and to group patents into categories familiar to audiences for
review. See id. Appellants indicate that the instant application is a
continuation of U.S. Application 10/806,307, which matured into U.S.
Patent No. 8,095,581. App. Br. 10.1
Claim 1 is reproduced below:
1. A computer-implemented patent portfolio analysis method
comprising:
providing user-prescribed categories which were specified by a
user;
retrieving a corpus of patent information from a database, wherein
the patent information is information from multiple patent documents;
analyzing said patent information to generate a category model
corresponding to at least one of said user-prescribed categories; and
applying said model against said patent information to select from
said patent information a subset that fits said model and storing said
subset in association with a label corresponding to said at least one of
said user-prescribed categories in a computer-readable dataset,
wherein said patent information includes textual information
selected from the group consisting of patent specification, abstract,
title and combinations thereof to be analyzed and wherein said
analyzing step includes:
processing the textual information to strip out delimiters that
designate different fields within the textual information and
thereby produce processed textual information;
defining an eigenspace representing a training population of
training textual information;
representing at least a portion of said training textual
information in said eigenspace and associating a predefined
category with each training textual information in said eigenspace;
and
1 Throughout this Opinion, we refer to (1) the Final Action (“Final Act.”)
mailed December 9, 2013, (2) the Appeal Brief (“App. Br.”) filed May 9,
2014; (3) the Examiner’s Answer (“Ans.”) mailed August 1, 2014; and (4)
the Reply Brief (“Reply Br.”) filed September 18, 2014.
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Application 13/346,280
projecting the processed textual information to be analyzed into
said eigenspace and associating with said projected processed
textual information the predefined category of the training textual
information to which said projected textual information is closest
within the eigenspace.
Related Appeals
Appellants acknowledge Appeal Nos. 2009-010443 and
2010-012069 in the Related Appeals section. App. Br. 4. According to
Appellants, Appeal No. 2009-010443 involved a parent application
(Application No. 10/806,307) of the present application and resulted in a
reversal on September 16, 2011. Id. Appellants also state Appeal No.
2010-012069 involved “an entirely different set of claims” and resulted
in an affirmance on October 21, 2012. Id.
The Rejection
The Examiner relies on the following as evidence of unpatentability:
Kuhn US 6,343,267 B1 Jan. 29,2002
Rivette US 2007/0208669 A1 Sept. 6,2007
The Examiner rejected claims 1—7 under 35 U.S.C. § 103(a) as
unpatentable over Rivette and Kuhn. Ans. 3—10.2
Preliminary Matters
Appellants dispute the claim objection made by the Examiner. App.
Br. 14—15. This issue is a petitionable matter and is not within the
2 The Examiner has withdrawn the following rejections of claims 1—7: (1)
nonstatutory double patenting, and (2) lack of written description. See Ans.
2-3, 10.
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jurisdiction of the Board. See MPEP §§ 1002 and 1201, 9th ed., Rev.
07.2015 (Oct. and Nov. 2015 respectively); see also In re Hengehold, 440
F.2d 1395, 1403 (CCPA 1971) (stating that there are decisions made by
Examiners, “which have not been and are not now appealable to the board or
to this court when they are not directly connected with the merits of issues
involving rejections of claims, but traditionally have been settled by petition
to the Commissioner.”)
THE CONTENTIONS
Regarding independent claim 1, the Examiner finds that Rivette
discloses all its limitations, except the analyzing step includes the recited
“defining,” “representing,” and “projecting . . . and associating” steps. Ans.
3—5. The Examiner combines Kuhn with Rivette to teach the recited step of
“analyzing said patent information” that includes the “processing,”
“defining,” “representing,” and “projecting . . . and associating” steps as
recited. Ans. 5—8. The Examiner states “modifying] the analysis of patent
portfolio of Rivette by [an] eigenvoice adaptation technique as disclosed by
Kuhn” would have been obvious to one skilled in the art “in order to better
locate where to place the new speaker within [an] eigenspace.” Ans. 8.
Among other arguments, Appellants contend Rivette and Kuhn are not
properly combinable, and that “the Examiner has provided no rational basis
for the combination of these two unrelated technologies.” Reply Br. 2; see
also App. Br. 17—18 and Reply Br. 2-A.
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ISSUE
Is the Examiner’s reason to combine the teachings of these references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?
ANALYSIS
Based on the record before us, we are persuaded of error in the
Examiner’s rejection of claim 1. As noted in KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007), ‘“there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.’”
Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The
Examiner’s reasons for combining Kuhn with Rivette include: (1)
“modifying] the analysis of patent portfolio of Rivette by [an] eigenvoice
adaptation technique as disclosed by Kuhn in order to better locate where to
place the new speaker within [an] eigenspace” (Ans. 8) and (2) “us[ing] such
a simple projection in Rivette in order to place the new speaker at [a] point
within [an] eigenspace” (Final Act. 9). Upon review, the offered reasoning
(Ans. 8; Final Act. 9) lacks a sufficient rational underpinning to support the
Examiner’s obviousness conclusion.
Rivette relates to analyzing patent data and processing patents into
groups (Rivette, Abstract), whereas Kuhn concerns modeling speech and
using techniques to recognize the speech of a new speaker (Kuhn, Abstract,
1:19—23). The Examiner has not articulated adequately that Rivette
discusses applying its analyzing/processing techniques to other applications,
such that one skilled in the art would have looked to Kuhn’s teaching
concerning speech recognition applications. See Ans. 3—9; see also Final
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Act. 5—9. Likewise, the Examiner has not demonstrated that Kuhn discusses
applying its speech modeling technique to other applications, such as
Rivette’s patent analysis. See Ans. 3—9; see also Final Act. 5—9. Thus, there
is no apparent reason with a rational underpinning in the record why one
skilled in the art would look to Kuhn’s teaching to modify Rivette’spatent
portfolio analysis process, such that Rivette’s process now locates where to
place the new speaker— as opposed to where to place a patent—within an
eigenspace. See Ans. 8.
In response to Appellants’ contentions, the Examiner states
the corpus speaker as disclosed by Kuhn [is] obvious over the textual
information disclosed by the present application, since the corpus
speaker could transform to data and the eigenvoice adaptation
technique of Kuhn would not interfere with the functionality of the
eigenspace technique of the present invention and the [sic] both
techniques would achieve the same end result to project a point within
[an] eigenspace that is as close as possible to the point outside of [an]
eigenspace corresponding to the new speaker's input speech.
Ans. 12—13. As best understood, the Examiner attempts to parallel Kuhn’s
“eigenvoice adaptation technique” with Appellants’ invention. See id.
We appreciate the notable similarities between Kuhn’s Figures 2 and
4 and Figure 6 of Appellants’ invention. See Ans. 11—12 (reproducing
Figures 2 and 4 of Kuhn and Figure 6 of the instant application). For
example, Kuhn’s Figure 2 and Appellants’ Figure 6 illustrate (1) using
training data to construct supervectors into an array format, (2) performing
dimensionality reduction, and (3) generating eigenvectors in an eigenspace.
Kuhn, Fig. 2 (steps 22, 28, 30, 32, 34, 38); Spec., Fig. 6 (steps 260, 264,
272, 274, 276, 278). This may demonstrate that Kuhn “is reasonably
pertinent to the problem with which the inventor was concerned” (In re
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Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006)), and, therefore, is analogous art
Yet, demonstrating that Kuhn is analogous art such that it can be relied upon
in an obvious rejection does not also demonstrate a reason with a rational
underpinning to combine Kuhn’s teachings with Rivette as the Examiner
proposes.
In the Final Action and the Answer, the Examiner also takes the
position that there is no patentable distinction between the recited text data
and the speaker data discussed in Kuhn. See Final Act. 7—8; see also Ans. 5,
7. Even presuming, without deciding, that the Examiner is correct, this
explanation fails to supply a sufficient reason with a rational underpinning
for combining Kuhn’s teaching with Rivette as proposed.
For the foregoing reasons, Appellants have persuaded us of error in
the rejection of (1) independent claim 1 and (2) dependent claims 2—7 for
similar reasons.
CONCLUSION
The Examiner erred in rejecting claims 1—7 under 35 U.S.C. § 103(a).
Accordingly, the Examiner’s decision rejecting claims 1—7 is reversed.
REVERSED
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