Eumpfiisgheg
`Patentamt
`Eumpean
`Patent Office
`Office européen
`des brevets
`
`F
`
`Modiano, Micaela Nadia
`
`Modiano Josif Pisanty & Staub Ltd
`Thierschstrasse 1 1
`Munchen
`ALLEMAGNE
`
`European Patent Office
`Postbus 5818
`2280 HV Rijswijk
`NETHERLANDS
`Tel: +31 70 340 2040
`Fax‘ +31 70 540 5016
`
`Formalities Officer
`Name: Benitez Sierra. 0
`Tel: +31 70 340 - 4045
`or call
`+31 (0)70 340 45 00
`
`Substantive Examiner
`Name: Wiltink, Jan Gerhard
`Te|:+3170 340 — 2969
`
`Application No.
`05 752 631.1 - 1243
`Applicant
`lxi Mobile (R&D) Ltd.
`
`Ref.
`15617MNMms
`
`Date
`27.07.2010
`
`Communication pursuant to Article 94(3) EPC
`
`The examination of the above—identified application has revealed that it does not meet the requirements of the
`European Patent Convention for the reasons enclosed herewith. If the deficiencies indicated are not rectified
`the application may be refused pursuant to Article 97(2) EPC.
`
`You are invited to file your observations and insofar as the deficiencies are such as to be rectifiable, to correct
`the indicated deficiencies within a period
`
`of
`
`4 months
`
`from the notification of this communication, this period being computed in accordance with Rules 126(2) and
`131 (2) and (4) EPC. One set of amendments to the description, claims and drawings is to be filed within the
`said period on separate sheets (R. 50(1) EPC).
`
`If filing amendments, you must identify them and indicate the basis for them in the application as filed. Failure
`to meet either requirement may lead to a communication from the Examining Division requesting that you
`correct this deficiency (R. 137(4) EPC).
`
`Failure to comply with this invitation in due time will result in the application being deemed to be
`withdrawn (Art. 94(4) EPC).
`
`Registered Letter
`EPO Form 2001 04.10CSX
`
`GOOGLE EXHIBIT 1004
`
`Page 1 of 7
`
`

`
`Date 27.07.2010
`
`Application No.: 05 752 631.1
`
`Wiltink, Jan Gerhard
`Primary Examiner
`For the Examining Division
`
`Enc|osure(s):
`
`5 page/s reasons (Form 2906)
`
`Registered Letter
`EPO Form 2001 0410CSX
`
`Page 2 of 7
`
`

`
`Datum
`
`Date
`Date
`
`27.07.2010
`
`Anmelde-Nr:
`
`ApplicationNo:
`Demande n °:
`
`05 752 631.1
`
`The examination is being carried out on the following application documents
`
`Description, Pages
`
`1-14
`
`as originally filed
`
`Claims, Numbers
`
`1-15
`
`received on
`
`03-07-2009
`
`with letter of
`
`26.06.2009
`
`Drawings, Sheets
`
`1-3
`
`as originally filed
`
`Reference is made to the following documents; the numbering will be adhered
`
`to in the rest of the procedure:
`
`D1
`
`US 5 805 775 A (EBERMAN BRIAN SCOTT [US] ET AL) 8
`
`September 1998 (1998-09-08)
`
`wo 02/12982 A (OBJECT SERVICES AND CONSULTING [us])
`
`14 February 2002 (2002-02-14) ; & US 7 027 975 B1
`
`(PAZAN DAK PAUL N [us] ET AL) 11 April 2006 (2006-04-11)
`
`The present application does not meet the requirements of Article 52(1) EPC
`
`because the subject-matter of claims 1 and 8 do not involve an inventive step
`
`within the meaning of Article 56 EPC:
`
`Document D1 is considered to be the prior art closest to the method of claim 1
`and discloses:
`
`A method for programming a
`
`device (command and
`
`control a computer system 10 ...)
`
`based on a high—level code (... using natural language ...) comprising
`
`operative language (... interactions @ column 3, line 6),
`
`the method comprising:
`EPO Form 2906 01.91TR|
`
`Page 3 of 7
`
`

`
`Datum
`
`Date
`Date
`
`27.07.2010
`
`Anmelde-Nr:
`
`App|icationNo:
`Demande n °:
`
`05 752 631.1
`
`parsing (natural language text 161
`
`is parsed by the parser 130 @
`
`column 5, line 47 // The parser 130
`
`rewrites the input text by applying
`
`the rules as indicated @ column 6, line 24) the high-level code
`
`(command phrase
`
`open the home page of doe @ column 6, line 19)
`
`for keywords (open the home page @ column 6, lines 10, 18, 30, 32,
`
`(Rule 1), (Rule 4)) to recognize the operative language;
`
`determining at least one operation (get_home_page @ column 6, lines
`
`10, 18, 30, 32, (Rule 1), (Rule 4)) associated with the operative
`
`language;
`
`determining whether high—level code comprises keywords (of doe)
`
`defining one or more relationships ("JOHN DOE" @ column 6, lines 16,
`
`28, (Rule 3)) aneheenditiens corresponding to the operative language;
`
`producing an executable code (the sub—string: [get_home_page "JOHN
`
`DOE"] will cause a "get_home_page" request 42 to be generated by a
`
`"get_home_page" callback procedure @ column 6, line 47)
`
`that can be executed by a-miereeen~tre#e.Lef the mobile
`
`eemmunieatien device (The string can be immediately interpreted
`
`by the evaluator 140)
`
`to perform the respective operation (the evaluator 140 can request
`
`the opening of the JOHN DOE's home page) associated with the
`
`operative language,
`
`wherein
`
`the high—level code comprises at least one sentence (open the home
`
`page of doe @ column 6, line 22)
`
`formatted in accordance with a first context (natural language input text
`
`161 @ column 6, line 20).
`
`The method of claim 1 therefore differs from this known methodin the
`
`following additional features (indicated above in ):
`
`(i) mobile communication
`
`(ii)
`
`conditions
`
`(iii) microcontroller
`
`with their obvious independent technical effects of increased flexibility,
`
`applicability and efficiency.
`
`EPO Form 2906 01.91TR|
`
`Page 4 of 7
`
`

`
`Datum
`
`Date
`Date
`
`27.07.2010
`
`Anmelde-Nr:
`
`App|icationNo:
`Demande n °:
`
`05 752 631.1
`
`2_3
`
`However, these features are described in document D2 as providing the same
`
`advantages as in the present application:
`
`the thin client includes a computing device selected from the list
`
`consisting of: personal computer; personal digital assistant; smart phone
`
`(mobile communication device); net TV; robot controller
`
`(microcontrol/er) ; remote controller (microcontroller); and smart
`
`appliance @ D2, claim 74;
`
`//
`
`The parser 310
`
`receives input in the form of sequential source
`
`program instructions, interactive online commands, markup tags, or
`
`some other defined interface and breaks them into parts (for example,
`
`the nouns (objects), verbs (methods), and their attributes or options
`
`(relationships and conditions)) @ D2, page 1 1, line 4.
`
`The skilled person would therefore regard it as a normal design option to
`include these features in the method described in document D1 in order to
`
`solve the problem posed.
`
`Therefore, the subject—matter of claim 1 does not involve an inventive step
`
`within the meaning of Article 56 EPC.
`
`The features of independent system claim 8 correspond one-to-one to those
`
`of independent method claim 1 ; therefore, the subject—matter of claim 8 does
`
`not involve an inventive step within the meaning of Article 56 EPC.
`
`Dependent claims 2-7, 9-15 do not appear to contain any additional features
`
`which, in combination with the features of any claim to which they refer, meet
`
`the requirements of the EPC with respect to inventive step, the reasons being
`as follows:
`
`The features relating to either the mobile communication device or a network
`
`server performing the parsing and determining steps, relating to a distributed
`
`environment and transmitting high—Ievel code and executable code (claims
`
`2-6, 9-13) are disclosed in document D2:
`
`the method 200 operates on a system 100 that includes the Internet as
`
`the communicative connector 106 (distributed environment) between a
`
`client element 104 and the server element 102, the step 202 of inputting
`
`is performed at the client element 104 and the step 204 of requesting an
`
`EPO Form 2906 01.91TR|
`
`Page 5 of 7
`
`

`
`Datum
`
`Date
`Date
`
`27.07.2010
`
`Anmelde-Nr:
`
`ApplicationNo:
`Demande n °:
`
`05 752 631.1
`
`appropriate parser is communicated over the communicative connector
`
`106 to the server element 102. The server element 102 (network server)
`
`can maintain or make accessible a selection of parser from among one
`
`or more parsers of a so -called "parser farm". In this manner, an
`
`appropriate parser (parsing and determining steps) for the particular
`
`input from the client element 104 is useable, and the parser need not
`
`(although it may be) available in or at the client element 104 (mobile
`
`communication device) itself @ D2, page 8, line 1
`
`//
`
`On selection of the parser in the step 206, the parser in a step 208
`
`performs a parse of the query or command input in the step 202. The
`
`step 208 is repeated until a well formed grammar constituent is specified.
`
`Once the parse in the step 208 is completed, a step 210 returns a
`
`translation (executable code) from the parser of the parsed query or
`
`command @ D2, page 8, line 18.
`
`//
`
`See also D2, page 12, line 12 — page 14, line 20.
`
`The features relating to natural language context and keywords (claims 7, 14,
`
`15) are disclosed in document D1 ; see the passages cited for claim 1.
`
`It is not at present apparent which part of the application could serve as a
`
`basis for a new, allowable claim. Should the applicant nevertheless regard
`
`some particular matter as patentable, an independent claim should be filed
`
`taking account of Rule 43(1) EPC. The applicant should also indicate how the
`
`subject-matter of the new claim differs from the state of the art and the
`
`significance thereof.
`
`When filing amended claims the applicant should at the same time bring the
`
`description into conformity with the amended claims. Care should be taken
`
`during revision, especially of the introductory portion and of any statements of
`
`problem or advantage, not to add subject-matter which extends beyond the
`
`content of the application as originally filed (Article 123(2) EPC).
`
`Amendments should be made by filing replacement pages. Unnecessary
`
`recasting of the description should be avoided. An amended abstract is not
`
`required. The applicant should also take account of the requirements of Rule
`
`EPO Form 2906 01.91TR|
`
`Page 6 of 7
`
`

`
`Datum
`
`Date
`Date
`
`27.07.2010
`
`Anmelde-Nr:
`
`App|icationNo:
`Demande n °:
`
`05 752 631.1
`
`50(1) EPC. If handwritten amendments are submitted, they should be clearly
`
`legible to the printer.
`
`In order to facilitate the examination of the conformity of the amended
`
`application with the requirements of Article 123(2) EPC, the applicant should
`
`clearly identify the amendments made, irrespective of whether they concern
`
`amendments by addition, replacement or deletion, and indicate the passages
`
`of the application as filed on which these amendments are based (see
`
`Guidelines E-ll, 1).
`
`If the applicant considers it appropriate, these indications
`
`could be submitted in handwritten form on a copy of the relevant parts of the
`
`application as filed.
`
`To meet the requirements of Rule 42(1)(b) EPC, the documents D1 and D2
`
`should be identified in the description and the relevant background art
`
`disclosed therein should be briefly discussed.
`
`WILTINK, Jan Gerhard
`
`First Examiner
`
`EPO Form 2906 01.91TR|
`
`Page 7 of 7