Polaris IP, LLC v. Google Inc. et al

Filing 273

Additional Attachments to Main Document: 272 MOTION Defendants' Joint Response Brief on Claim Construction.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, part 1, # 6 Exhibit 5, part 2, # 7 Exhibit 5, part 3, # 8 Exhibit 5, part 4, # 9 Exhibit 6, # 10 Exhibit 7, # 11 Exhibit 8, part 1, # 12 Errata 8, part 2, # 13 Exhibit 9, # 14 Exhibit 10)(Perlson, David)

Polaris IP, LLC v. Google Inc. et al

Doc. 273 Att. 1

EXHIBIT 1

Dockets.Justia.com

Amendment

,29ca,
171 11.002300U5

TOWNSEND add TOWNSEND and CREW LLP
Two Embarcadero Center, Ed' Floor San Francisco, California 94111-3834 [phone]

Attorney Docket No. Client Ref No.

In re application of: Amy Rice, et al. Application No.: 091054,233
Filed: April 2, 1998

Date:

I hereby certify that this is being deposited with the United States Postal Service as first class mail in an envelope addressed to: Assistant Commissioner for Patents Washington 20231

Group Art Unit: 2762
Fot ALTTOMATIC MESSAGE INTERPRETATION AND ROUT/NG SYSTEM

THE ASSISTANT COMIVIISSIONER FOR PATENTS Washington, D.C. 20231
Sir:

Signed:

gtA4

Enea L. Canonizado

Transmitted herewith is an amendment in the above-idenlified application.

[]
IE

[3

Enclosed is a petition lo extend time to respond. Small entity status of this application under 37 CFR 1.9 and 1.27 has been established by a verified statement previeusly submidad. A verified statement to establish small entity status under 37 CFR 1.9 and 1.27 is enclosed.

If any extension of time is needed, Men this response should be considered a petition therefor. The filing fee has been calculated as shown below:
(Ca 1)
CLAIMS REMAIN/NG
(Col. 23
(CPI. 3)

SMALL ENTITY

OTHER THAN SMALL ENTITY RATE

AFTER AMENDMENT

HIGHEST NO. PREVIOUSLY PAID FOR
20
5

PRESENT EXTRA

RATE

ADDIT. FEE 11.00
$0.00

ttoprr.
FEE

OR
518.00

TOTAL I 5
MEP.
I

=

o o

x 59.00 x $39.00 =
$130.00 -±

4

57E00 =
1- $260.00=

[ I FIRST PRESENTA770N OF MULTIPLE DEP. CLAIM

TOTAL AUDIT.
FEE

$0.00

OK

TOTAL

n.

If the entry in Col. 1 is lesa than the entry in Col. 2, Avrite "0" in Col, 3. If the "Highest Number Previously Paid For" IN THIS SPACE is leas than 20, write "20' in this space.

If the -Highest Number Previously Paid Foe' IN TEJOS SPACE is less than 3, then write "5" in tisis space. The "Highest Number Previously Paid For" (Total or independent) is the highest number found from be equivalent box in Col. 1 of a prior
amendment OT the number of claims originally filed.

[X)
]

No fee is due.

Please charge Deposit Account No. 20-1430 as follows:

xI
NO

Claims fee Any additional fees associated with this paper or during the:pendency of this application.

extra copies of this sheet are enclosed. TOWNSEND a
SEND and CREW LLP

lb rt, Re o Attorneys for Applicant
SF 1125842 vi

14
3

19

BR 000619

I hereby certify that this correspondence is being deposited with the Uniled
States Postal Service on first class mail te en cnyclopc schlrassed ta:

Attorney Doaret No.: 171

Astlitant Commissioner for Patents

WaShIngton,D.0 20231

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re application of:
Amy Rice, et al.

Examiner:

M. Pender
2762

Art Unit:

Application No.: 09/054,233
Filed; April 2, 1998 For: AUTOMATIC MESSAGE INTERPRETATION AND ROUTING SYSTEM

AMENDMENT

Assistant Commissioner for Patents Washington, D.C. 20231
5

Sir:

In response to the Office Action mailed July 11, 2000, please amend the above-

identified application as follows:
IN THE CLAIMS: Please amend claims 1, 18, 19, 31, and 41 as follows:
1

I. A method for automatically [interpreting) processing a non-interactive electronic message using a comnag, comprising the steps of:
(a) receiving the electronic message from a source; (b) interpreting the electronic message using a rule base and case base knowledge engine;
and

2
3

4
5

6

(c) classifying the eiectronic message as at least one of (i) being able to be responded to automatically; and (ii) requiring assistance fi'om a human operator.

BR 000620

Amy Rice, et al. Application No.: 09/054,233 Page 2

PATENT

51at. A method for automatically (interpreting] arggessinn an electronic mail (E-mail)
2
3

message, comprising the steps of: (a) receiving the E-mail from a source over an electronic data communications channel;

4
5 6 7 8 9

(b) interpreting the E-mail using a rule base and case base knowledge engine; and
(c) classifying the E-mail as at least one of (i) being able to be responded te automatically;
asid (ii) mguiring assistance from a human operator; wherein,

when the classification indicates that the E-mail can be responded to automatically, the method further includes the steps of:

(d) retrieving one or more predetennined responses from h repository;
(e) formulating an E-mail response from the predetermined response; and (f) transmitting the E-mail response to the source over the data communications channel.
3

10
11

1

J,9: A method for automatically [interpreting} processing a non-interactive electronic message g iaigsgominggs, comprising the steps of:
(a) receiving the electronic message from, a source;

2
3

4
5

(b) interpreting the electronic message using a rule base and case base knowledge engine;
and

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(c) retrieving one or /more predetemilned responses corresponding to the interpretation of

the electronic messa e from a repository for automatic delivery to the source.

ix
2
3 4 5

A system for automatically Rnterpretingi processing a non-interactive electronic

message received from a source, the system comprising: a server for transmitting and receiving electronic messages over a comrnunications
channel;

an inbox storage device for storing incoming electronic messages;

6
7
8

a knowledge engine including a mle base anda case base, the case base having a plurality
of stored cases representing past received electronic message.s;

a pre-processor for receiving the electronic message and interpreting the electronic message using the rule base;

BR 000621

Amy Rice, et al. Application No.: 09/054,233 Pago 3
10
11

PATENT

a searching device for searching the electronic mesiage and the case base to retieve a
stored case from the case base which most closely matches the electronic message;

12
13

a classifier for classifying the electronic message into at least one of (i) being able to be
responded to automatically; and (ii) requiring assistance from a human operator.

1

649,1e. A method for automatically [interpreting] pros sun, a non-interactive electronic
message usinp a compute, comprising the steps of:
receiving the electronic message from a SOUTCC;

2
3

4
5 6 7 8 9

interpreting the electronic message using. a rule base and case base knowledge engine; (o) retrieving one or more predetermined responses from a repository, the predetermined responses being proposed for delivery to the source;

forwarding the electronic message and the predetermined response to a human operator; and
delivering the predetermined response to the source when the human operator deems

the response appropriate.

aCS
Claims 1-66 were pending. Upon entry of this Amendment, claims 1-66 remain

pending.
In the Office Action, the Examiner rejected claims 54-57 under 35 USC §112,
15

first paragraph, as "containing subject matter which was not described in the specification in

suet a way as to enable one skilled in the art ... to make and/or use the invention." The
Examiner also rejected claims 1-66 under 35 USC §101 as being directed to nonstatutory subject matter, and rejected claims 1-13, 15-29 and 31-66 under 35 USC §102(b) as being anticipated by Microsoft Outlook 97, Version 8.0 (hereinafter "Outlook"). Reconsideration in
20 view of the foregoing amendments and the following rernarks is respectfully requested.

The §112 Rejections Claims 54-57 were rejected. under 35 USC §112 as "containing subject matter which was not described in the specification in such a way as to enable one skilled in the art..

to make and/or use the invention."

BR 000622

Amy Rice, et al. Application No.: 09/054,233 Page 4

Applicant respectfully traverses this rejection. The steps recited in claim 54
"receiving the electronic message from the source in a first data fomsat" and "converting the

electronic message from the first data format to an electronic message having a second data format"
5

are described in the specification in various locations, such as p. 17, lines 10-23.

As one example, the specification describes converting a facsimile message into an ASCII data format electronic message "using, for example, a character recognition process." (p. 17,1ines 14-16). As another example, the specification describes converting voice data to a digital text format electronic message. (p. 17, lines 17-23). Applicant respectfiffly submits that systems
and methods for character recognition and for converting voice data to digital text (as well as

10

for numerous other conversions of data from a first fortnat to a second format) are well known in the art. A detailed description of such systems is therefore not necessary to enable one
sIdlled in the art to make and/or uge the clairned invention after reading the application as filed,

'Therefore, withdrawal of the §112 rejection of claim 54 is respectfully requested. Further, Applicant respectfully submits that claims 55-57 are also supported at least by the above
15

referenced passage of the specification (p. 17, lines 10-23) and respectfidly requests withdrawal of the §112 rejection of those claims. The 8101 Rejections Claims 1-66 were rejected under 35 TISC §101 as being directed to nonstatutory

subject matter. The Examiner stated that "Nile claimed invention merely relates a computer
20

program, &insisting of an algorithm and a data structure" and that "statutory processes must be

limited to a practical application: Applicant respectfully traverses such a characterization.
In regard to the rejection of claim 1, "[t]he Examiner interprets that

'interpreting a ... message' is not a practical application." Applicant has amended claim 1 tu
recite "A rnethod for automatically processinfr a non-interactive electronic message mine a
25

computer ...." to further clarify the scope of the claims. Claims 18, 19, and 41 have been
similarly amended.
The claimed method of claim 1 includes steps to process an electronic message

including "receiving the electronic message," "interpreting the electronic message," and "classifying the deetronic message as at least one of (i) being able to be responded to
30

automatically; and (ii) requiring assistance from a human operator." It is respectfully

BR 000623

Amy Rice, et al. Application No.: 09/054,233 Page 5

PATENT

submitted that, at least, classifying an electronic message in tbe manner recited in claim lisa
practical application that satisfies the requirements of §101. Withdrawal of the §10I rejection

of claim lis therefore respectfully requested.
In regard to the rejection of claims 2-66 under §101, the Examiner stated only
5

that these claims "are rejected for the same reasons as claim 1." Applicant respectfully subunits
that the Examiner has not established a prima facie case that claims 2-66 are not directed to

nonstatutory subject matter. Because each claim recites somewhat different subject matter, the question of whether the subject matter of any ene claim is statutory cannot be answered on the basis of another claim. For example, claim 31 recites a "system for automatically interpreting
10

a non-interactive electronic message

comprising: a server ... an inbox storage device ...; a

knowledge engine ...;" etc. Applicant respectfully submits that claim 31 recites physical
stnictures not "an algorithm and a data structure" and therefore, the reason given with

regard to claim 1 does not provide a proper basis for rejection of claim 31. For these reasons, withdrawal of the §101 rejection of claims 2-66 or statement of grounds for rejecting each of
15

the Maims is respectfully requested. The 6102(61 Rejections

Claims 1-13, 15-29, and 31-66 stand rejected under 35 USC. §102(b) as being ' anticipated by Outlook. Applicant respectfully traverses the rejection of claim 1, because the
Ouflook reference fails. to disclose or suggest each element of claim 1
20

With 'regard to claim 1, the Examiner stated that Outlook's "Rules Wizard
explicitly teaches interpreting the message and classifying the message for automated response,

including filing in a designated folder .... Microsoft further teaches automated processing of e-mails ...." Even if such a statement were taken as trae, that would not affect the patentability
of claim 1. Applicant respeetfully submits that the Examiner has not stated a prima facie case
25

of anticipation because the Examiner has not asserted, in rejecting claim I, that Outlook perfonns the claimed step of "interpreting the electronic message using a rule base and case .base lmowledge engine." For the purposes of this response, Applicant assumes that the Examiner is asserting that Outlook performs the claimed interpreting step; however, Applicant would

30

traverse any such assertion, since Outlook clearly does not disclose or suggest each step of

BR 000624

Amy Rice, et al. -Application No.: 09/054,233 Page 6

PATENT

claim 1. For example, Outlook does not disclose or suggest the use oía case base knowledge

engine. Therefore, claim lis allowable over the reference. Furthermore, claims 2-13, 15-17
and 54-60 are also allowable as they depend from allowable claim I, and withdrawal of the
§102(b) rejection as to those clainis is respectfully requested.
5

With regard to claim 18, the Examiner stated that "Microsoft teaches the use of

a Rule Wizard to generate a hierarchy of 'mies' the equivalent of Applicant's 'rule base'
limitation. [sic) Microsoft also teaches the use of folders to hold e-mail messages, the

equivalent of Applicant's `case base' limitation." Applicant respectfully submits that Outlook
does not teach the "case base" element of the clainied invention.
10

The term "case base" has a meaning that is well-defined in the art and Outlook does not have any features that rail within such meaning. A case base reasoning system is
described in the present specification as one Which "compares an incoming set of facts (a

'Problem') with a stored set of exemplar cases (a case base)." (p. 3, lines 19-20; see also p. 11,
lines 12-15). The specification describes in detail an example of a case base lmowledge engine

for interpreting electronic messages. (p. 12, line 7-p. 13, line 31). In that example, an
incoming message (a "presented modeP') is compared to each of a set of stored cano models,

and a score for each stored case model is calculated based on whether a piece of text, a
combination of text, and/or a pattern of text of the presented case model matches or does not

match te stored case Model. (p. 12, line 25-p. 13, Ene 5). In the example, "[o]nce a best 20
storetcase model has been identified, the automatic message reader 30 infers that the seine or
similar action that was taken on the E-mail of the stored case model should be taken on the E-

mail message 11 which produced the presented case model." (p. 13, lines 27-30). It is respectfully submitted that the "use of folders to hold e-mail messages" as
taught by Outlook is not equivalent to a case base Icnowledge engine. Outlook does not teach
25

comparing a set of facts corresponding to an incoming message to each of a stored set of exemplar cases. Folders are used only to hold messages qfter they have been classified. Because Outlook does not disclose or suggest a ensebase Imowledge engine or its equivalent, Outlook cannot be said lb anticipate claim 18 and therefore Applicant respectfully requests that the §102(b) rejection as to claim 18 be withdrawn.

BR 000625

Amy Rice, et al. Application No.: 09/054,233 Page 7

FA=

With regard to claim 19, the Examiner stated. that this 'claim was "rejected for

Me same reasons as claim 3." Applicant respectfully notes that, like claims i and 18, claim 19
recites "a rule base and case base Icnowledge engine." As previously explained, Outlook does

not teach this element. Therefore, it is respectfully submitted that Outlook does not anticipate
5

claim 19 and thus claim 19 is allowable over Outlook. Claims 20-30 and 61-63 depend from
allowable claim 19 and are therefore also allowable.

With regard to claim 31, the Examiner stated that "Microsoft teaches the use of

an 'inbox' the equivalent of [sic] Applicant's 'inbox' limitation" and that lap other
limitations have already been addressed in this office action." Applicant respectfully notes
10

that, like. the claims discussed above, claim 31 recites "a knoWIedge engine including a rule

base and a case base." As previously explained, Outlook does not teach a corresponding
element; therefore, Applicant respectfully submits that Chnlook does not anticipate claim 31.

Further, because claims 32-40 and 64-66 depend from claim 31 and therefore include all of its
limitations, Applicant respectfiilly submits that Outlook does not anticipate any of those claims
15

as well. Withdrawal of the §102(b) rejection as to claims 31-40 and 64-66 is therefore respectfully requested. With regard to claim 41, the Examiner stated that this claim was "rejected for , the sante reasons as claim 3." Applicant respectfully notes that, like the claims discussed above, claim 41 recites "a rule base and case base knowledge engine." As previously

20

explained, Outlook does not teach a corresponding elementi therefore, Applicant respectfillly submits that Outlook does not anticipate claim 41. Further, because claims 42-53 depend from claim 41 and therefore include all of its limitations, Applicant respectfully submits also that Outlook does not anticipate any of those claims. Withdrawal of the §102(b) rejection as to
claims 41-53 is therefore respectfblly requested.

25
CONCLT 'SION In view of the foregoing, Applicants believe all claims now pending in this

Application are in condition for allowance. The issuance of a formal Notice of Allowance at
an early date is respectfully requested.

BR 00-0626

Amy Rice, et al. Application No.: 09/054,233 Page 8

PATENT

If the Examiner believes a telephone conference would expedite prosecution of
this application, please telephone the undersigned at 415-576-0200. Respectfully submitted,

5(/. /ev
5

Date
TOWNSEND and TOWNSEND and CREW LLP Two Embarcadero Center, 8rn Floor San Francisco, California 94111-3834 Tel: [phone] Fax: [phone]
PITA:dec:ele
SF 1123313 vi

Philip H.Albert
Reg. No. 35,819

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BR 000627