Ex Parte Borella

Board of Patent Appeals and Interferences

Jul 22, 2009

10905377 (B.P.A.I. Jul. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL S. BORELLA
____________

Appeal 2009-002349
Application 10/905,377
Technology Center 2600
____________

Decided:1 July 22, 2009
____________

Before MAHSHID D. SAADAT, CARLA M. KRIVAK,
and THOMAS S. HAHN, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002349
Application 10/905,377

2
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-4, 6, 8, 12, 15, 16, and 25-34, which constitute all of the claims
pending in this application, as claims 5, 7, 9-11, 13, 14, and 17-24 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Invention
Appellant’s invention relates to voice communications and a method
of recognizing a callback number from a voice signal (Spec. 1-2). Claim 1,
which is illustrative of the claims on appeal, reads as follows:
1. A method of determining a reply address in a voice message,
said method comprising the steps of:

(a) receiving a voice message;

(b) performing voice recognition on at least a portion of the
received voice message to identify at least one candidate reply address
for reply to the voice message, the candidate reply address being in
the form of a universal resource indicator (URI); and

(c) presenting a user with the thus recognized at least one
candidate reply address in the form of a universal resource indicator
(URI) to confirm a reply address and enable a reply communication.

The Rejections
The Examiner relies on the following prior art references in rejecting
the claims:
Griswold US 2002/0052912 A1 May 2, 2002
Horvath US 6,785,367 B2 Aug. 31, 2004
Lambke US 6,788,767 B2 Sep. 7, 2004

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Claims 1-4, 6, 8, 15, 16, and 25-34 stand rejected as being
unpatentable under 35 U.S.C. § 103(a) over Lambke and Griswold.
Claim 12 stands rejected as being unpatentable under 35 U.S.C.
§ 103(a) over Lambke and Horvath.2
We make reference to the Appeal Brief (filed Sep. 24, 2007) and the
Answer (mailed Jan. 22, 2008) for their respective details. Only those
arguments actually made by Appellant have been considered in this decision.
Arguments which Appellant did not make in the Brief have not been
considered and are deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
Rejection over Lambke and Griswold
With respect to claim 1, Appellant asserts that Lambke and Griswold
do not show what they are reputed to show and that therefore, the Examiner
has not met the initial burden of setting forth a prima facie case of
obviousness (Br. 10-11). Appellant specifically argues that Lambke
discloses the voice recognition of only a sequence of digits of a callback
number and does not recognize a Universal Resource Indicator (URI) (Br.
12). With respect to Griswold, Appellant contends that a voice recognition
application would parse the speech to create the numeric or name WebNum
to be used for database inquiry (Br. 14). Appellant argues that Griswold
uses lookup systems to present only the driving directions themselves to the
user without presenting any Uniform Resource Locators (URLs) (Br. 15).

2 Griswold appears to be inadvertently omitted from the statement of
rejection for claim 12, which depends from claim 1, but is discussed in the
body of the rejection.
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Appellant further asserts that the Examiner provided no rationale for
combining the references (Br. 16).
Appellant repeats the same arguments for independent claim 25 (Br.
18-20) and only adds an argument with respect to the limitation of using a
domain name service as a dictionary in voice recognition (Br. 20).
Regarding dependent claims 2-4, 6, 8, 15, 16, and 26-34, Appellant does not
provide any specific arguments and merely relies on their dependency upon
claims 1 and 25 to argue their patentability. Accordingly, based upon
Appellant’s arguments in the Brief, the first issue before this panel is as
follows:
1. Has Appellant shown that the Examiner erred in rejecting
claims 1-4, 6, 8, 15, 16, and 25-34 under 35 U.S.C. § 103(a) based on
combining Lambke and Griswold to teach or suggest the claimed subject
matter as recited in claims 1 and 25?
Rejection over Lambke and Horvath
Regarding the claim rejection over Lambke and Horvath, Appellant
argues that Horvath does not disclose which portions of the received voice
message are analyzed for a reply address, and instead plays back the
message by pushing a button (Br. 24-26). Appellant concludes that the
combination of Lambke and Horvath would not suggest manipulating a user
interface to determine which portions of the voice signal to analyze (Br. 25).
Therefore, the following question is the second issue before this panel:
2. Has Appellant demonstrated error in the Examiner’s reasoning
that the combination of Lambke and Horvath teaches or suggests the claimed
step of determining which portions of the received voice message to analyze
for a reply address?
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FINDINGS OF FACT
The following findings of fact (FF) are relevant to the issues involved
in the appeal.
Lambke
1. Lambke discloses a method of generating telephone numbers
from voice messages. (Abstract.)
2. Lambke shows in Figure 1 a public switched telephone
network, but describes alternative networks such as a wireless network, the
Internet, an ATM network, or any network through which voice messages
may be sent and received. Also, the term “voice message” includes any
spoken message in either analog or digital form regardless of the originating
source, source device, or source network. (Col. 2, ll. 52-67.)
3. Lambke uses the voice processor 240 to apply a speech
recognition algorithm to the voice data obtained from the voice message.
(Col. 4, ll. 42-43.)
4. Lambke converts the number sequences recognized in the
message into data sequences and, if more than one number sequence was
converted, requests the user to confirm that the data sequence is the desired
telephone number. (Col. 8, ll. 33-49.)
Griswold
5. Griswold discloses a system, referred to as “the WebNum
system,” that provides users of both fixed and wireless Internet devices, a
method of entering numbers instead of the text characters of Internet
Uniform Resource Locators (URLs) and other Internet identifiers to access
Internet resources and functions. (Abstract; ¶ [0002].)
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6. While the WebNum system is primarily a number-to-Internet
resource mapping system, Griswold discloses that it can also be accessed by
using voice commands. (¶ [0071].)
7. According to Griswold, WebNum shortcuts support both the
numeric and the voice access to these resources through a set of databases
that map either a number, Numeric Name, or a Voice Name (referred to as
Numeric/Voice Name(s)) to URLs, e-mail addresses, location information,
security capabilities (e.g., PKI certificates), fax machines, and/or Uniform
Resource Identifiers (URIs). Id.
8. Griswold discloses using a system of universal identifiers based
on standard telephone numbers, which could be tied back to a number of
other identifiers, such as web sites, e-mail addresses, phone numbers, fax
numbers, etc. through DNS address resolution. The proposed ENUM uses
phone numbers which are multiple digit (usually ten-digit) numbers, plus a
country code designator. (¶ [0074].)
9. Griswold teaches that if such a system is implemented, an
ENUM could be used as a WebNum, which is interpreted and resolved to IP
addresses and other identifiers through traditional DNS address resolution
procedures. The cell phone provider could then create Internet requests for
web sites, e-mail systems, and other information, based on the resolved
ENUM identifiers. (¶ [0075].)
Horvath
10. Horvath relates to a system for automatically identifying
enunciation of telephone numbers and email addresses in recorded voice
mail messages for presentation to a user via either voice or text, without the
user being required to replay the message. (Abstract; col. 1, ll. 8-11.)
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11. Horvath describes the process of identifying which portion of
the message to analyze for the number as a process in response to pressing a
“Find Number” key while listening to a voice mail message which launches
a voice recognition application with instructions to search for a number in
the retrieved voice mail message. (Col. 2, ll. 33-55.)

PRINCIPLES OF LAW
1. Obviousness
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006); In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”
KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007).
A step in the obviousness analysis is to “determine whether there was
an apparent reason to combine the known elements in the fashion claimed.”
KSR, 550 U.S. at 418. A rejection for obviousness must include “articulated
reasoning with some rational underpinning to support the legal conclusion . .
. .” Id., (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
2. Burdens of Proof and Production
In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. In re
Piasecki, 745 F.2d 1468, 1472. When that burden is met, the burden then
shifts to the Applicant to rebut. Id.; see also In re Harris, 409 F.3d 1339,
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1343-44 (Fed. Cir. 2005) (finding rebuttal evidence unpersuasive). Only if
that burden is met, does the burden of going forward shift to the applicant.
In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In re Wilder, 429 F.2d
447, 450 (CCPA 1970). If the Applicant produces rebuttal evidence of
adequate weight, the prima facie case of unpatentability is dissipated.
Piasecki, 745 F.2d at 1472.
Once a prima facie case is established and rebuttal evidence is
submitted, the ultimate question becomes whether, based on the totality of
the record, the Examiner carried his burden of proof by preponderance. See
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Therefore, on appeal to
the Board it is the Appellant’s burden to establish that the Examiner did not
sustain the necessary burden and to show that the Examiner erred.

ANALYSIS
Rejection over Lambke and Griswold
A. Claim 1
Upon review of Lambke and Griswold, we find ourselves in
agreement with the Examiner’s position with regard to the references’
teachings and the stated rationale for combining the references in rejecting
claim 1. In that regard, as argued by the Examiner (Ans. 8), Lambke clearly
teaches recognition of a callback number from a recorded voice message (FF
1-2) using a voice recognition algorithm for identifying the data sequence
corresponding to a phone number (FF 3-4). Griswold, on the other hand,
was properly relied on by the Examiner for teaching connection to a website
or e-mail by parsing and processing spoken voice (FF 5-6). We further find
that Griswold accesses different communication resources using numeric
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and voice entries (FF 7). Griswold then converts the numbers to a universal
identifier or a web site through DNS address resolution (FF 8-9). As such,
the Examiner properly relied on Griswold (Ans. 9) for disclosing voice
recognition to identify an address for numeric/voice Internet access which
uses a set of databases to resolve the voice/number to URL correspondence.
Additionally, we remain unconvinced by Appellant’s argument (Br.
15) that the user in Griswold never sees the URL and only the driving
directions are presented to the user. First, Lambke teaches that the
recognized number from the recorded voice message is presented to the user
for verification (FF 4). Second, Griswold was relied on for teaching the
number to URL conversion (FF 5-6), which suggests taking the number
recognition one step further to using URIs that could be tied back to a
number (FF 7-8).
With respect to combining the references, we also disagree with
Appellant’s argument (Br. 16) that the combination is improper since
Griswold teaches away from recognizing the claimed URI and each
reference teaches a different system. We find that both references relate to
communicating data through voice recognition and converting such voice
data to numbers and/or URIs (FF 1, 7). Additionally, based on our findings
discussed above, we find that both references teach the details of voice to
number/URI resolution.
Therefore, we remain unconvinced by Appellant’s arguments against
the combinability of the references since, using KSR standards, the evidence
provided by the Examiner supports a finding that combining the familiar
arrangements of a method of generating telephone numbers from voice
messages disclosed by Lambke with the mapping system for numbers to a
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URI resolution would have been obvious to one of ordinary skill in the art.
Here, the combination is based on an obvious and familiar solution, such as
resolving phone numbers to IP addresses and presenting the user with the
reply URI, which produces predictable results by further converting the
recognized phone number to a URI. Therefore, in view of our analysis
above, we find that the teachings of Lambke and Griswold, when considered
as a whole, support the Examiner’s § 103 ground of rejection with respect to
claim 1.
B. Claim 25
Regarding claim 25, the Examiner reads the claimed limitation of
“wherein the voice recognition uses a domain name service as a dictionary”
on Griswold’s WebNum system, disclosed in paragraphs [0071] – [0074],
that maps telephone numbers to Internet resources (Ans. 7-8). We agree
with the Examiner’s findings in the cited portions of Griswold and further
find that mapping Numeric/Voice Name(s) to URLs or URIs (FF 7-9) meets
the dictionary limitation of claim 25.
In that regard, contrary to Appellant’s argument regarding using a
textual type spell checking database in contrast with using lookup
conversion (Br. 20), we do not find that the recited limitations of claim 25
require any specific correspondence between the number and the resolved
URI as a dictionary, as purported by Appellant. The Examiner’s findings
demonstrate that the address resolution of Griswold, in combination with the
voice recognition of Lambke to identify an address from the recorded
message, suggests the subject matter of claim 25 and renders the claim
obvious under 35 U.S.C. § 103.

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Rejection over Lambke and Horvath
With respect to the rejection of claim 12, Appellant repeats the same
arguments presented regarding claim 1 (Br. 24) and further asserts that
Horvath presses the “Find Number” key to play back the entire message and
therefore, cannot determine which portions of the received voice signal
should be used to voice recognize (Br. 24-25). We disagree with Appellant
and note that, since claim 12 does not require any specific playback
sequence, the playback order of Horvath described by Appellant (Br. 25) is
not precluded by the claim. Horvath identifies annunciation of telephone
numbers (FF 10) when the voice recognition application is launched to
search for a number in the message (FF 11). Thus, as asserted by the
Examiner (Ans. 11), Horvath identifies and analyzes the portion of the
message that contains numbers in order to identify the reply numbers.

CONCLUSION
Because Appellant has failed to point to any error in the Examiner’s
position rejecting claims 1 and 25 under 35 U.S.C. § 103(a) based on
combining Lambke and Griswold, we sustain the 35 U.S.C. § 103(a)
rejection with respect to claims 1 and 25, and also with respect to claims 2-4,
6, 8, 15, 16, and 26-34, which Appellant has not argued separately (Br. 10-
22). We also sustain the 35 U.S.C. § 103(a) rejection of claim 12 since
Appellant has not demonstrated error in the Examiner’s reasoning that the
combination of Lambke and Horvath teaches or suggests the claimed step of
determining which portion of the received voice message to analyze for a
reply address.

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Application 10/905,377

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ORDER
The decision of the Examiner rejecting claims 1-4, 6, 8, 12, 15, 16,
and 25-34 is affirmed.
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

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