Ex Parte Breuer et al

Patent Trial and Appeal Board

Jan 15, 2013

10295122 (P.T.A.B. Jan. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RICHARD BREUER,
MARTIN HALBERSCHMIDT, HENRIK HODAM,
MARTIN PRANGENBERG, OLAF SCHROEER,
PETER VRANKEN, and THOMAS WOEHRMANN1
____________________

Appeal 2010-006534
Application 10/295,122
Technology Center 2600
____________________

Before JEAN R. HOMERE, JASON V. MORGAN, and LARRY J. HUME,
Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 5, 6, 10, and 11. Claims 1-4, 7-9, and 12-18 have been
previously canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is Koninklijke Philips Electronics, N.V.
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STATEMENT OF THE CASE 2
The Invention
Appellants’ “invention relates to a method of operating a speech
dialogue system which communicates with a user while a speech recognition
device and/or a speech output device and a dialogue control unit are used,
which unit controls the dialogue run between the user and the speech
dialogue system on the basis of a dialogue description.” (Spec. p. 1, ll. 1-4).
Exemplary Claims 3
Claim 5 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphasis added to disputed limitations):
5. A method of operating a speech dialogue system
adapted to communicate with a user while a speech recognition
device and a speech output device and a dialogue control unit
are used, the method comprising:
controlling a dialogue run between a user and a speech
dialogue system on a basis of a dialogue description;
marking at least a position that can be reached during a
dialogue between the user and the speech dialogue system in

2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed Feb. 10,
2009); Reply Brief (“Reply Br.,” filed Dec. 1, 2009); Examiner’s Answer
(“Ans.,” mailed Oct. 1, 2009); Final Office Action (“FOA,” mailed Sep. 10,
2008); and original Specification (“Spec.,” filed Nov. 15, 2002).
3 As pointed out by the Examiner (Ans. 3), the Claims Appendix to the
Appeal Brief (App. Br. 26) did not accurately reflect amendments made after
final rejection by Appellants. Accordingly, we have considered the claims
as amended by Appellants in the Amendment after Final Rejection filed
concurrently with the Reply Brief on Dec. 1, 2009, and which was entered
by the Examiner in the Advisory Action mailed Mar. 8, 2010.
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the dialogue run as an entry position in the speech dialogue
system;
storing an address belonging to the entry position In the
dialogue description together with a marker assigned to the
position;
automatically selecting the assigned address in the
dialogue description if the user enters the stored marker at a
later instant and the dialogue is continued from the respective
position onwards,
wherein when a position is marked as an entry position,
the speech dialogue system suggests various possible markers
to the user from which the user can select a marker belonging
to this position and wherein the speech dialogue system
predefines a marker.

Claim 6 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphasis added to disputed limitations):
6. A method of operating a speech dialogue system
adapted to communicate with a user while a speech recognition
device and a speech output device and a dialogue control unit
are used, the method comprising:
controlling a dialogue run between a user and a speech
dialogue system on the basis of a dialogue description;
marking at least a certain position that can be reached
during a dialogue between the user and the speech dialogue
system in the dialogue run as an entry position in the speech
dialogue system;
storing an address belonging to the position in the
dialogue description together with a marker assigned to the
position;
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automatically selecting the assigned address in the
dialogue description if the user enters the stored marker at a
later instant and the dialogue is continued from the respective
position onwards,
wherein when an entry position is marked, environment
parameters are stored which are needed by the dialogue
control unit for a further dialogue at this position.

Claim 10 is an exemplary claim representing an aspect of the
invention which is reproduced below (emphasis added to disputed
limitations):
10. A method of operating a speech dialogue system
adapted to communicate with a user while a speech recognition
device and a speech output device and a dialogue control unit
are used, the method comprising:
controlling a dialogue run between a user and a speech
dialogue system on the basis of a dialogue description;
marking at least a certain position that can be reached
during a dialogue between the user and the speech dialogue
system in the dialogue run as an entry position in the speech
dialogue system;
storing an address belonging to the position in the
dialogue description together with a marker assigned to the
position;
automatically selecting to the assigned address in the
dialogue description if the user enters the stored marker at a
later instant and the dialogue is continued from the respective
position onwards,
wherein an entry position is marked and/or when a
marked entry position is reached in a dialogue, the speech
dialogue system stores protocol data which contain
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information about the order in which the marked entry
position was reached relative to other marked entry positions
during the dialogue.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Malone US 5,727,175 Mar. 10, 1998
Beyda US 2001/0014146 A1 Aug. 16, 2001
Packingham US 6,985,865 B1 Jan. 10, 2006
Jost US 7,043,439 B2 May 9, 2006

Rejections on Appeal
A. Claim 5 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Jost in view of Packingham, Beyda, and Malone. (Ans.
4).
B. Claims 6 and 10-11 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Jost in view of Packingham. (Ans. 9).
Appellants separately argue against the rejection of each of claims 5,
6, and 10 (App. Br. 15-25), and thus we treat these claims separately, and
treat dependent claim 11 as standing or falling with independent claim 10.
ISSUES AND ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claims 5, 6, and 10, and we adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
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which this appeal is taken and (2) the reasons and rebuttals set forth by the
Examiner in the Examiner’s Answer in response to Appellants’ Arguments
in the Appeal Brief.
1. 35 U.S.C. § 103(a) Rejection of Claim 5
Issue 1
Appellants argue (App. Br. 15-21; Reply Br. 4-5) that the Examiner’s
unpatentability rejection of claim 5 under 35 U.S.C. §103(a) over Jost in
view of Packingham, Beyda, and Malone is in error. These contentions
present us with the following issue:
Did the Examiner err in finding that Appellants’ claimed
method is unpatentable over the combination of Jost,
Packingham, Beyda, and Malone, and particularly that the
combination teaches or suggests a method wherein, inter alia,
“when a position is marked as an entry position, the speech
dialogue system suggests various possible markers to the user
from which the user can select a marker belonging to this
position and wherein the speech dialogue system predefines a
marker,” as recited in independent claim 5?

Analysis
Appellants contend “the Examiner's application of four references to
show a single limitation which is not shown in any of them is an
impermissible hindsight combination.” (App. Br. 16). We agree with the
Examiner, and note that reliance upon a large number of references does not,
by itself, weigh against the obviousness of the claimed invention. Ans. 17,
citing In re Gorman, 933 F.2d 982 (Fed. Cir. 1991).
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Appellants further contend that “Malone is directed to a different
problem and does not address the issue of suggesting various possible
markers for the operator to select.” (App. Br. 17). We agree with the
Examiner that all three references, Jost, Packingham, and Malone relate to
defining information related to data objects. Ans. 18. Further, as held in
KSR, common sense teaches that familiar items may have obvious uses
beyond their primary purposes, and persons of ordinary skill can often fit the
teachings of multiple patents together like pieces of a puzzle. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 420 (2007). Thus, it is not necessary that the
references be physically combinable, without change, to render obvious the
invention under review. In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983).
The criterion instead is what these references would have meant to a person
of ordinary skill in the field of the invention. In re Gorman, 933 F.2d at
986. In the instant case on appeal, one of ordinary skill in the art would
recognize that combining the teachings and suggestions of Jost, Packingham,
Beyda, and Malone could lead to a speech dialogue system that suggests
various possible markers to the user, as recited in claim 5.
Additionally, Appellants contend, “none of Jost, Packingham, Beyda,
or Malone disclose or fairly suggest that a speech dialogue system should
suggest various possible markers to the user from which the user can select a
marker.” Rather, Appellants argue that each directs the reader to go in a
different direction, which different directions are inconsistent among each
other, such that these references “teach away” from the suggested
combination. App. Br. 17-18.
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With regard to Appellants’ “teach away” argument cited above, we
also agree with the Examiner’s finding that the references do not teach away
from the proffered combination. Ans. 18. “[A] reference will teach away if
it suggests that the line of development flowing from the reference's
disclosure is unlikely to be productive of the result sought by the applicant.”
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see also W.L. Gore &
Assoc., v. Garlock, Inc., 721 F.2d 1540, 1550-51 (Fed. Cir. 1983). The mere
failure of a reference to mention alternatives known in the art does not
constitute a teaching away from using the known elements. See DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009) (“A reference does not teach away … if it merely expresses a
general preference for an alternative invention but does not ‘criticize,
discredit, or otherwise discourage’ investigation into the invention
claimed.”). Thus, Packingham’s general preference for use of a default
name, and Beyda’s preference for saying “next” or “back” to establish a
marker do not constitute teaching away from the claimed system that
suggests various possible markers to the user from which the user can select
a marker belonging to the particular position, as claimed.
We agree with the Examiner’s findings (Ans. 20-21) concerning
Appellants’ arguments that Malone is non-analogous art. App. Br. 18. We
particularly agree with the Examiner that Appellants’ arguments in this
regard are misplaced. The Examiner applied Malone to the rejection to
teach the concept of providing multiple suggestions to a user. These
suggestions are not limited only to suggestions provided via a display, but
have broader implications to a system where suggestions are provided to a
user, e.g., as in Packingham. Ans. 21. We also agree with the Examiner that
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Packingham, and not Malone, was proffered as teaching the naming of
callback positions. Ans. 21.
Thus, Appellants have not provided persuasive arguments or evidence
that the Examiner erred in the rejection of claim 5. Accordingly, we sustain
the Examiner’s rejection of claim 5.
2. 35 U.S.C. § 103(a): Claim 6
Issue 2
Appellants argue (App. Br. 21-23; Reply Br. 5) that the Examiner’s
unpatentability rejection of claim 6 under 35 U.S.C. § 103(a) over Jost in
view of Packingham is in error. These contentions present us with the
following issue:
Did the Examiner err in finding that Appellants’ claimed
method is unpatentable over the combination of Jost and
Packingham, and particularly that the combination teaches or
suggests a method wherein, inter alia, “when an entry position
is marked, environment parameters are stored which are needed
by the dialogue control unit for a further dialogue at this
position,” as recited in independent claim 6?

Analysis
In particular, we concur with the Examiner’s finding that, in response
to Appellants’ argument that Packingham does not store an environmental
parameter when an entry position is marked (Ans. 22, citing App. Br. 23),
“the claim language . . . does not actually require that the environmental
parameter be stored directly because and as a result of the entry position
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being marked.” Ans. 22 (emphasis omitted). Thus, we find that Appellants’
arguments are not commensurate with the scope of the claim.
Appellants do not specifically define the phrase “environmental
parameter,” but merely provide examples in the Specification, e.g., see Spec.
5:20-23. In further support of the Examiner’s position, we note that the
Specification states “[p]referably, the environment parameters are also
stored as user-specific data, for example, in the user profile database to be
available for future sessions between the user and the speech dialogue
system.” Spec. 5: 26-28, emphasis ours.
We therefore find that that the Examiner’s interpretation of
Packingham’s user expertise mode as an “environmental parameter” (Ans.
22) is reasonable given the Specification’s statements identified above
regarding user-specific data being an environmental parameter. During
prosecution, “the PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Thus, Appellants have not provided persuasive arguments or evidence
that the Examiner erred in the rejection of claim 6. Accordingly, we sustain
the Examiner’s rejection of claim 6.
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3. 35 U.S.C. § 103(a): Claims 10-11
Issue 3
Appellants argue (App. Br. 23-24; Reply Br. 5) that the Examiner’s
unpatentability rejection of claim 10 under 35 U.S.C. § 103(a) over Jost in
view of Packingham is in error. These contentions present us with the
following issue:
Did the Examiner err in finding that Appellants’ claimed
method is unpatentable over the combination of Jost and
Packingham, and particularly that the combination teaches or
suggests a method which includes, inter alia, “wherein an entry
position is marked and/or when a marked entry position is
reached in a dialogue, the speech dialogue system stores
protocol data which contain information about the order in
which the marked entry position was reached relative to other
marked entry positions during the dialogue,” as recited in
independent claim 10?

Analysis
In particular, we concur with the Examiner’s finding that, similar to
Appellants’ arguments presented with respect to claim 6, “the claim
language does not require what applicant argues.” Ans. 23. Appellants
argue “the storing of navigation history is not responsive or related to the
marking of an entry position or the reaching of an entry position.” App. Br.
24. However, as noted by the Examiner (Ans. 23-24), we agree that the
claim only requires that information “about the order in which the marked
entry position was reached relative to other marked entry positions during
the dialogue” is stored when an entry position is marked or when a marked
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entry position is reached. Again, Appellants’ arguments are not
commensurate with the scope of claim 10.
Thus, Appellants have not provided persuasive arguments or evidence
that the Examiner erred in the rejection of claim 10. Accordingly, we
sustain the Examiner’s rejection of claim 10. In addition, Appellants have
not presented any substantive argument against the rejection of dependent
claim 11, such that claim 11 falls with claim 10.
CONCLUSIONS
(1) The Examiner did not err with respect to the unpatentability
rejection of claim 5 under 35 U.S.C. § 103(a) over Jost in view of
Packingham, Beyda, and Malone.
(2) The Examiner did not err with respect to the unpatentability
rejection of claims 6, 10, and 11 under 35 U.S.C. § 103(a) over Jost in view
of Packingham.
DECISION
The decision of the Examiner to reject claims 5, 6, 10, and 11 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) (2011).
AFFIRMED
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