Ex Parte Bates et al

Board of Patent Appeals and Interferences

Nov 26, 2007

09491902 (B.P.A.I. Nov. 26, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CARY LEE BATES,
PAUL REUBEN DAY and JOHN MATTHEW SANTOSUOSSO
____________________

Appeal 2007-2764
Application 09/491,902
Technology Center 2600
____________________

Decided: November 26, 2007
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Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI
and KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-6, 8-11, 13-16, 18-23, and 25-27. We have jurisdiction under 35
U.S.C. § 6(b). We affirm-in-part and enter a new ground of rejection
pursuant to the provisions of 37 C.F.R. § 41.50(b).

STATEMENT OF CASE
Appellants disclose a voice messaging system that uses voice
recognition to detect telephone numbers in spoken messages. (Specification
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1: 26 – 2:11). The system allows playback to be controlled through those
detected telephone numbers. (Specification 4:6-14).
The independent claim 1, which is deemed to be representative, reads
as follows:
1. A method of processing a voice message, the method
comprising:
(a) performing voice recognition on at least a portion of the
voice message to generate a textual representation of the voice
message;
(b) detecting a position of a spoken number in the textual
representation of the voice message;
(c) determining a playback start position based upon the
position of the spoken number;
(d) playing the voice message starting at the playback start
position; and
(e) automatically dialing the spoken number.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lee US 5,504,805 Apr. 2, 1996
Eting US 5,651,056 Jul. 22, 1997
The Examiner rejected claims 1-6, 8-9, 13-16, 18-21, and 25-26 under
35 U.S.C. § 102(b) as being anticipated by Lee. Claims 10, 11, 22, 23 and
27 were rejected under 35 U.S.C. § 102(b) as being anticipated by Eting.
Appellants contend that the Examiner erred in indicating that the
claimed subject matter would have been anticipated. More specifically,
Appellants have argued that Lee fails to teach determining a playback start
position based on a position of a spoken number nor playing the voice
message starting at the playback start position. (Br. 5-8). Appellants also
contend that Eting does not disclose the automated determination or
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detection of whether a spoken number is a telephone number. (Br. 12-14).
The Examiner finds that Lee teaches the detection of the spoken number and
directs playback at that address and finds that Eting teaches a spoken
number recognizer that is operative to recognize a telephone number.
(Answer 4-6).
We affirm-in-part.

ISSUES
1) Have Appellants shown that the Examiner has failed to establish
that all of the disputed elements of claims 1-6, 8-9, 13-16, 18-21, and 25-26
are taught by Lee?
2) Have Appellants shown that the Examiner has failed to establish
that all of the disputed elements of claims 10, 11, 22, 23 and 27 are taught by
Eting?

FINDINGS OF FACT
1. Appellants disclose a telephone messaging system that uses voice
recognition of at least a portion of a message to provide a textual
representation of the message and determine the positions of spoken
numbers. Verification of spoken numbers as telephone numbers can occur
and textual representations of the determined phone numbers can be
displayed. (Specification 4:6-21; Figs. 2 and 3, elements 44, 48, 50 and 80).
2. Based on the locations of the determined phone numbers, the start
of playback positioning can be determined and utilized. This allows a user
to quickly and efficiently access spoken numbers in the message. The user
may also direct playback to previous or subsequent positions in the message
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where determined phone numbers were discovered. (Specification 4:6-21;
Fig. 6).
3. Lee discloses a system that employs a word recognizer and memory
to extract or obtain a phone number from a verbal message left by the calling
party. The detected phone number may be displayed or audibly provided to
the called party before replaying the message to the called party. The called
party can automatically dial the phone number from memory by enabling
dialer. (Col. 2, ll. 12-52).
4. The system in Lee maintains a table in RAM to keep track of
messages and phone numbers. One column is used to store the beginning
and end memory addresses for a voice message stored and another column is
used to keep track of the beginning and end addresses that are used to locate
a phone number within the memory. Lee does not specify a mechanism to
supply the position of detected numbers within the stored voice message.
(Col. 3, ll. 12-34).
5. Eting is directed to an accessory device for a telephone system
which includes a spoken telephone number recognizer operative to recognize
a telephone number spoken in the course of a telephone conversation
between a remote communicant and the local communicant. The device also
has a telephone number memory operative to store at least one telephone
number received from the telephone number recognizer. The device also
includes an automatic dialing device operative to retrieve and automatically
dial a telephone number stored in the telephone number memory. (Col. 2, ll.
29-33, col. 12, l. 36 – col. 13, l. 59; Fig. 9, elements 1280 and 1320).
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6. Eting also discloses that numbers detected can be verified through
user involvement. If the telephone number recognizer recognizes a spoken
digit, it seeks confirmation of the recognized digit. If the telephone number
recognizer recognizes spoken "no" or "clear" words, uttered by a remote
communicant in response to digit confirmation, it indicates that the
recognized digit was an error. (Col. 14, ll. 16-33).

PRINCIPLES OF LAW
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986) and Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir.
1984).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005), citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992). Anticipation of a patent claim requires a finding that the claim at
issue “reads on” a prior art reference. Atlas Powder Co. v. IRECO, Inc., 190
F.3d 1342, 1346, (Fed Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).
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If a claim covers material not found in any of the four statutory
categories, that claim falls outside the plainly expressed scope of § 101 even
if the subject matter is otherwise new and useful. In re Nuijten, 500 F.3d
1346, 1354 (Fed. Cir. 2007). “A transitory, propagating signal like Nuijten’s
is not a “process, machine, manufacture, or composition of matter.” Those
four categories define the explicit scope and reach of subject matter
patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable
subject matter.” Id at 1357.

ANALYSIS
With respect to the first issue, Appellants have argued that Lee fails to
teach determining a playback start position based on a position of a spoken
number nor playing the voice message starting at the playback start position.
We agree, in that there is no disclosure in Lee of obtaining or using a
playback start position based upon the position of the spoken number.
While Lee identifies numbers in voice messages and stores those numbers,
and allows for presentation of identified numbers to the user, (Finding of
Fact 3), it does not direct playback of the message using the positions of the
identified number within that message. While the Examiner has identified a
start position in memory for the identified numbers in Lee, (Finding of Fact
4), that is not the same as the “playback start position” recited in
independent claims 1, 13 and 25. We find that Lee fails to anticipate all of
the elements of claims 1-6, 8-9, 13-16, 18-21, and 25-26 and reverse the
rejection of those claims.
With respect to the second issue, Appellants contend that Eting does
not disclose the automated determination or detection of whether a spoken
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number is a telephone number. We note that while the Appellants address
the automated determination or detection of whether the number is a
telephone number, claims 10, 22 and 27 do not provide such specific
language. Claim 10 recites merely “determining that the spoken number is a
telephone number,” and claims 22 and 27 recite “to detect whether the
spoken number is a telephone number.” Eting discloses that numbers
detected can be verified through user involvement, (Finding of Fact 6);
while the system, by itself, does not necessarily determine whether the
detected number fits the format of a telephone number, claims 10, 22 and 27
do not make such a requirement. Since, in Eting, the user and the system
verify the propriety of the detected number, we find that this disclosure
teaches the disputed elements of claims 10, 22 and 27. With respect to
dependent claims 11 and 23, Appellants have not separately argued those
claims. As such, we affirm the rejection of claims 10, 11, 22, 23 and 27 as
being anticipated by Eting.

NEW GROUND OF REJECTION
We enter the following new rejection of claims 25-27 under the
provisions of 37 C.F.R. § 41.50 (b).
Claims 25-27 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 25 and 27 are directed to program products, where one of the
elements of those claims is “a signal bearing medium bearing the program.”
As discussed above, a transitory, propagating signal is not patentable subject
matter under 35 U.S.C. §101. The other limitations of claims 25 and 27
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recite programs configured to perform some actions, which are akin to
algorithms. Taken together, the limitations are not directed to patentable
subject matter. Claim 26 recites that the signal bearing medium includes at
least one of a transmission medium and a recordable medium, where the
recitation of the former makes clear that claim 26 is directed to non-statutory
subject matter.
For the above reasons, we find that claims 25-27 recite non-statutory
subject matter. Accordingly, claims 25-27 are rejected under 35 U.S.C.
§ 101.

CONCLUSION OF LAW
The decision of the Examiner rejecting claims 1-6, 8-9, 13-16, 18-21,
25, and 26 under 35 U.S.C. § 102 based on Lee is reversed. The 35 U.S.C.
§ 102 rejection of claims 10, 11, 22, 23, and 27 based on Eting is affirmed.
Claims 25-27 are newly rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.

DECISION
The rejection of claims 1-6, 8-9, 13-16, 18-21, 25, and 26 is reversed
and the rejection of claims 10, 11, 22, 23, and 27 is affirmed. A new
rejection is raised against claims 25-27.
Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides
"[a]ppellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
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37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

Should the Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the Appellants elect prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Board of Patent Appeals and Interferences
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for final action on the affirmed rejection, including any timely request for
rehearing thereof.
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).

AFFIRMED-IN-PART

KIS

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