Ex parte Bulfer

Board of Patent Appeals and Interferences

Feb 15, 2000

08867773 (B.P.A.I. Feb. 15, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ANDREW F. BULFER
_____________
Appeal No. 1998-2705
Application No. 08/867,773
______________
ON BRIEF
_______________
Before HAIRSTON, KRASS and FLEMING, Administrative Patent
Judges
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 9, all of the claims pending in the present
application. Claims 10 through 18 have been canceled.
The invention relates to a method of providing a speech-
based interface to Dual Tone Multi-frequency (DTMF) controlled
Appeal No. 1998-2705
Application No. 08/867-773
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telecommunication systems. In particular, Appellant discloses
on page 3 of the specification that the invention provides a
telecommunication network service for converting spoken words
to individual DTMF signals to be furnished to an automatic
system responsive to touch tone control thereof.
Independent claim 1 is reproduced as follows:
1. A method for providing a telecommunications network
service performed within a telecommunications network for use
with an automated system responsive to Dual-Tone Multi-
Frequency (DTMF) signals (touch-tones), the method comprising
the steps of:
prompting the caller to initiate a first call to the
automated system initiating a second call in the network to a
facility for performing speech recognition;
bridging the first and second calls;
receiving the spoken utterance comprising the spoken
word;
performing speech recognition on the spoken utterance,
thereby identifying the spoken word;
classifying the spoken utterance into one of a set of
categories based on said identification of the spoken word,
each of said categories having a DTMF signal associated
therewith;
generating, within the telecommunications network, the
DTMF signal associated with the category into which said
spoken utterance has been classified; and
transmitting the generated DTMF signal though the
telecommunications network to the automated system.
Appeal No. 1998-2705
Application No. 08/867-773
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The Examiner relies on the following references:
Hou et al. (Hou) 5,353,336 Oct. 4,
1994
McMahan et al. (McMahan) 5,402,477 Mar.
28, 1995
Claims 1 through 9 stand rejected under 35 U.S.C. § 103
as being unpatentable over McMahan in view of Hou.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the brief and answer for the
respective details thereof.
OPINION
We will not sustain the rejection of claims 1 through 9
under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). "Additionally, when determining
obviousness, the claimed invention should be considered as a
whole; there is no legally recognizable 'heart' of the
Appeal No. 1998-2705
Application No. 08/867-773
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invention." Para-Ordnance Mfg. v. SGS Importers Int'l, Inc.,
73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),
cert. denied, 519 U.S. 822 (1996), citing W.L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Appeal No. 1998-2705
Application No. 08/867-773
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On pages 6 and 7 of the brief, Appellant argues that
neither Hou nor McMahan teaches or suggests all the features
of Appellant's claimed limitations. In particular, Appellant
argues that Hou and McMahan fail to teach or suggest the steps
recited in Appellant's claim 1 as follows:
prompting the caller to initiate a first call to the
automated system; initiating a second call in the
network to a facility for performing speech
recognition; [and] bridging the first and second
calls.
In particular, Appellant argues that Hou does not teach
Appellant's step of initiating a second call in a network to a
speech recognition system. Rather, the Hou patent teaches
placing a first call to a voice directed communications
system. The voice directed communications system then
launches a second call to a destination specified by the first
call. Appellant argues that Hou contemplates an entirely
different process than Appellant's step of initiating a second
call to a speech recognition system. Appellant further argues
that McMahan does not teach placing calls to a speech
recognition system because McMahan performs the speech to DTMF
conversion in the telephone itself.
On page 6 of the Answer, the Examiner responds to the
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above Appellant's arguments. In particular, the Examiner
points to Hou for teaching the initiation of a first call by
way of a subscriber requesting a response. The Examiner
points to col. 3, lines 35-37. The Examiner argues that Hou
teaches initiating a second call in the network facility for
performing speech recognition as system 100, in response to
call home, places an outgoing call. The Examiner directs us
to col. 3, lines 36-40. Finally, the Examiner argues that Hou
teaches bridging the first and second calls as system 100
causes switch 10 to interconnect the outgoing call with the
subscriber's incoming call. The Examiner directs us to col.
3, lines 37-42.
Upon our review of Hou, we find that Hou teaches in col.
3, lines 24-42 that a subscriber may define a number of voice
identified calling labels and associate the labels with
respective telephone numbers. For example, the subscriber may
associate the label call home with the subscriber's home
telephone number. Hou teaches that when the subscriber places
a call to system 100 shown in Fig. 1 for the purpose of
placing a call to a particular location, e.g., home, then all
the subscriber needs to do to respond to a particular system
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100 request is to say "call home." System 100, in response
thereto, associates the spoken identified call home with the
subscriber's home telephone and then places the outgoing
telephone call thereto to switch 10 and network 200. System
100 then causes switch 10 to interconnect the outgoing call
with the subscriber's incoming call. In col. 5, lines 14-46,
Hou teaches that system 100 includes SIU 21, which is a number
of digital signal processors which operate to perform a number
of different voice processing functions including speech
recognition. Therefore, we find that Hou teaches that the
first call prompted by the caller is to the speech recognition
system, which is SIU 21, within voice directed communications
system 100. Therefore, Hou does not teach prompting the call
to initiate a first call to the automated system, initiating a
second call in the network to a facility for performing speech
recognition, and bridging first and second calls as recited in
Appellant's claim 1.
We are not inclined to dispense with proof by evidence
when the proposition at issue is not supported by a teaching
in a prior art reference or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires
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this evidence in order to establish a prima facie case. In re
Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed.
Cir. 1984); In re Knapp-Monarch Co., 296 F.2d 230, 232, 132
USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148
USPQ 268, 271-72 (CCPA 1966). Our reviewing court states in
In re Piasecki, 745 F.2d 1468, 223 USPQ 785, 788 (Fed. Cir.
1984) the following:
The Supreme Court in Graham v. John Deere Co., 383
U.S. 1 (1966), focused on the procedural and
evidentiary processes in reaching a conclusion under
Section 103. As adapted to ex parte procedure,
Graham is interpreted as continuing to place the
"burden of proof on the Patent Office which requires
it to produce the factual basis for its rejection of
an application under section 102 and 103". Citing
In re Warner, 379 F.2d 1011, 1020, 154 USPQ 173, 177
(CCPA 1967).
In view of the foregoing, we have not sustained the
rejection of claims 1 through 9 under 35 U.S.C. § 103.
Accordingly, the Examiner's decision is reversed.
REVERSED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
Appeal No. 1998-2705
Application No. 08/867-773
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) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
MRF/dal
Appeal No. 1998-2705
Application No. 08/867-773
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