Ex Parte Browning

Board of Patent Appeals and Interferences

Dec 10, 2010

10132052 (B.P.A.I. Dec. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAMES VERNARD BROWNING
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Appeal 2009-002675
Application 10/132,052
Technology Center 2600
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Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and
THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-002675
Application 10/132,052

2
Appellant invokes our review under 35 U.S.C. § 134(a) from the final
rejection of claims 1, 4-25, and 27-32. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

STATEMENT OF THE CASE2
Appellant claims an electronic device memory module and method for
managing a memory file that includes a voice recognition system used for
editing image data in response to voice commands.3 Claim 1 is illustrative:
1. A memory module compatible for use with a host electronic device,
the memory module comprising:
an adapter region for interfacing the memory module with the host electronic
device;
a memory component;
an on-card intelligent controller; and
a voice recognition system in communication with the on-card intelligent
controller configured to translate audio data into an executable file
management command, wherein the voice recognition system receives voice
commands to edit an image captured with the host electronic device and is
trained to recognize a voice of a particular user when the memory module is
inserted into the host electronic device or removed from the host electronic
device and inserted into other host electronic devices.
Rejections
The Examiner relies on the following prior art to show
unpatentability:
Maes US 6,016,476 Jan. 18, 2000
Nordwall US 6,097,943 Aug. 1, 2000

2 Throughout this opinion we refer for their respective details to the
Specification filed Apr. 25, 2002, the Appeal Brief filed Nov. 28, 2007, and
the Examiner’s Answer mailed Jan. 24, 2008.
3 See generally Spec. 6:12 – 8:28; Figs. 1, 2.
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Tzirkel-Hancock US 6,133,904 Oct. 17, 2000
Mault US 2003/0163321 A1 Aug. 28, 2003
(filed June 18, 2001)
The Examiner, under 35 U.S.C. § 103(a), rejected:
1. Claims 1, 4-6, 9-22, 28, 30, and 31 as unpatentable over Nordwall and
Tzirkel-Hancock (Ans. 3-11);
2. Claims 7, 23-25, 27, and 32 as unpatentable over Nordwall, Tzirkel-
Hancock, and Maes (Ans. 12-17); and
3. Claims 8 and 29 as unpatentable over Nordwall, Tzirkel-Hancock, and
Mault (Ans. 17-18).
Appellant’s Contentions
Appellant asserts patentability for grouped claims 1, 4-6, 9-22, 28, 30,
and 31 (Br. 12) without separately arguing any identified claim (Br. 6-12).
We, accordingly, select independent claim 1 as representative for this group,
pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues that no voice recognition as claimed is implemented
by Nordwall, but that a Nordwall disclosed audio processing chip merely
inputs and outputs a user voice (Br. 10). Appellant also argues that the
Examiner fails to provide adequate reasoning in accord with § 103 for
combining Nordwall with Tzirkel-Hancock. Appellant, in particular, asserts
that the improvement, which Appellant contends the Examiner relied on as
rationale for modifying Nordwall, i.e., providing a portable cellular device,
is already present in Nordwall (Br. 11). Therefore, Appellant contends the
Examiner’s reasoning for modifying Nordwall fails because Tzirkel-
Hancock does not provide an advantage lacking from Nordwall (id.).

Appeal 2009-002675
Application 10/132,052

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ISSUE
Did the Examiner, under § 103(a), err in finding that Nordwall and
Tzirkel-Hancock, alone or in combination, teach or fairly suggest a voice
recognition system that receives voice commands to edit a captured image as
recited in representative claim 1?

PRINCIPLES OF LAW
The Supreme Court has stated that “obviousness analysis cannot be
confined by a formalistic conception of the words teaching, suggestion, and
motivation.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). The
Court further stated that “combination[s] of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” Id. at 416. “One of the ways in which a patent’s
subject matter can be proved obvious is by noting that there existed at the
time of invention a known problem for which there was an obvious solution
encompassed by the patent’s claims.” Id. at 419-20.

ANALYSIS
Claim 1, 4-6, 9-22, 28, 30, and 314
The Examiner disputes Appellant’s contention that Nordwall fails to
teach or suggest a voice recognition system (see Appellant’s Contentions,
supra) by reproducing Nordwall’s disclosures from column 7, lines 14-20

4 Appellant listed claim 32, but not claim 30, in the Appeal Brief section
heading for arguments directed to the Examiner’s rejection based on the
combination of Nordwall and Tzirkel-Hancock (Br. 8). In this section,
however, Appellant addressed claim 30 and not claim 32 (Br. 12). Thus, we
treat the listing of claim 32 and not claim 30 to be harmless typographical
errors.
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(Ans. 18). Relying on these disclosures, the Examiner finds that Nordwall
teaches that “voice parameters are necessarily obtained by training the
[Nordwall] voice recognition system” (id.). We agree with and adopt these
Examiner findings as to Nordwall’s voice recognition system teachings.
Further, based on this record, we concur with the Examiner that the claim 1
recited “voice recognition system . . . [that] is trained to recognize a voice of
a particular user when the memory module is inserted into the host
electronic device” reads on Nordwall (id.).
Appellant is silent as to the Examiner’s reliance on the above
identified Nordwall disclosures and the Examiner’s findings and conclusion
from those disclosures.
The Examiner also disputes Appellant’s contention that Nordwall in
disclosing a portable cellular device precludes the Examiner’s reasoning for
combining Nordwall and Tzirkel-Hancock (Br. 11). Specifically, the
Examiner explains:
[A]pplicant overlooks the fact that Nordwall does not teach “a
camera”, and that Tzirkel-Hancock was used therefor. So,
contra applicant, it is not true that “Nordwall already provides
this advantage” (p. 11), nor that “the Examiner’s stated reason
is actually a reason not to modify Nordwall in view of Tzirkel-
Hancock” (p. 12).
(Ans. 19.) The Examiner’s explanation for combining Nordwall and
Tzirkel-Hancock is that “Nordwall does not teach the voice recognition
system receiv[ing] voice commands to edit an image captured with the host
electronic device,” i.e., with an electronic device included camera (Ans. 4).
Based on our review of Nordwall, we adopt this finding. From Tzirkel-
Hancock the Examiner finds the reference “teach[ing] editing an image
through voice commands, [and] editing images captured by the host camera
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(col. 33, lines 13-24 and col. 34, lines 30-38)” (id.). Based on our review of
Tzirkel-Hancock we also adopt these Examiner findings. The Examiner
then reasons that “it would have been obvious to one of ordinary skill in the
art at the time of the invention to combine the voice recognition system
taught by Nordwall with the voice editing commands of Tzirkel-Hancock to
increase the usability of a device by providing . . . a camera” (id.).
Since the Examiner was not relying on Nordwall for teaching use of a
portable cellular device, we find Appellant’s argument unavailing.
Additionally, we find from at least Nordwall and Tzirkel-Hancock’s
teachings that voice recognition systems, portable cellular devices, and
cameras are familiar elements. We also do not find argument or evidence in
the record that disputes that the Examiner’s posited combination of these
familiar elements solicits anything more than predictable results.
Accordingly, we agree with the Examiner’s conclusion that the disputed
elements recited in representative claim 1 are obvious in view of the
Nordwall and Tzirkel-Hancock combined teachings. See KSR, 550 U.S. at
416.
For the foregoing reasons, we will sustain the rejection of
representative claim 1, and also will sustain the rejection of the other
independent claims 16, 28, and 31 that fall for the same reasons. Further, we
will sustain the rejection of dependent claims 4-6, 9-15, 17-22, and 30 that
are not separately argued. 37 C.F.R. § 41.37(c)(1)(vii); In re Nielson, 816
F.2d 1567, 1572 (Fed. Cir. 1987).
Claims 7, 8, 23-25, 27, 29, and 32
Appellant relies on arguments made supra to assert that these claims
are patentable (Br. 12-13). For reasons addressed supra, we find
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Appellant’s assertions unavailing. Appellant, for claims 7, 23-25, 27, and
32, further asserts that Maes fails to cure contended Nordwall and Tzirkel-
Hancock’s deficiencies (Br. 12). For claims 8 and 29, Appellant contends,
without particular argument that the combination of Nordwall, Tzirkel-
Hancock, and Mault fails to render the claims obvious (Br. 13). We find
Appellant’s contentions arising from Maes and Mault to be unavailing
because we do not find the Nordwall and Tzirkel-Hancock references
deficient, and we will sustain the rejections of these claims.
CONCLUSION
The combination of Nordwall and Tzirkel-Hancock teaches or fairly
suggests a voice recognition system that receives voice commands to edit a
captured image as recited in representative claim 1.

ORDER
The Examiner’s decision rejecting claims 1, 4-25, and 27-32 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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