Ex Parte Damale et al

Patent Trial and Appeal Board

Feb 22, 2016

12703592 (P.T.A.B. Feb. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121703,592 02/10/2010
15093 7590 02/24/2016
Kilpatrick Townsend & Stockton/Qualcomm
Two Embarcadero Center
8th Floor
San Francisco, CA 94111-3834
FIRST NAMED INVENTOR
Shridhar Y. Damale
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
142140 (899475) 4433
EXAMINER
HUANG, WEN WU
ART UNIT PAPER NUMBER
2648
NOTIFICATION DATE DELIVERY MODE
02/24/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipefiling@kilpatricktownsend.com
ocpat_uspto@qualcomm.com
qcomins t@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHRIDHAR Y. DAMALE and NIRAJ BALI
Appeal2014-002076
Application 12/703,592
Technology Center 2600
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
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Application 12/703,592
STATEivIENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--4, 6-9, 11, 12, 14--16, and 18-20. Br. 2. 1
Claims 5, 10, 13, and 17 have been canceled. Id.
Claims 1-3 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Son (US 6,212,408 Bl; issued Apr. 3, 2001) and Agapi
(US 7,792,253 B2; issued Sept. 7, 2010). Final Act. 3--4.
Claims 4 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Son, Agapi, and Cheng (US 200710129098 A 1; published
June 7, 2007). Final Act. 5-6.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Son, Agapi, and Mockarram-Dorri (US 2010/0328223 Al; published
Dec. 30, 2010). Final Act. 6-7.
Claims 8, 9, 11, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wang (US 2004/0176139 Al; published Sept. 9, 2004)
and McLean (US 2010/0223055 Al; published Sept. 2, 2010). Final Act.
8-10.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Wang, McLean, and Schrager (US 7,072,686 Bl; issued July 4, 2006).
Final Act. 10-11.
Claims 16, 18, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wang, Shin (US 2009/0253463 Al; published Oct. 8,
1 Throughout this opinion, we refer to (1) the Final Rejection mailed
December 19, 2012 ("Final Act."), (2) the Appeal Brief filed May 20, 2013,
("Br.") and (3) the Examiner's Answer mailed September 25, 2013 ("Ans.").
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2009), iviusic (US 2006/0173801 Al; published Aug. 3, 2006), and Agapi.
Final Act. 11-15.2
Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Wang, Shin, Music, Agapi, and Schrager. Final Act. 15.
We have jurisdiction under 35 U.S.C. § 6(b). We review the appealed
rejections for error based upon the issues identified by Appellants, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We affirm-in-part.
SUMMARY OF THE INVENTION
Appellants' invention is a mobile device having more than one input
mode. Spec. i-f 3. In an exemplary embodiment, a first input mode detects
the user's touch and a second mode receives voice instructions. Id. The
mobile device may switch from the first to second mode without receiving
an instruction from the user. Id.
Independent claims 1, 8, and 16 are directed to plural related
inventions. We discuss the rejections of these three claims separately in the
2 The Examiner states that claim 29 is unpatentable over Wang, Shin, Music,
and Agapi in a section heading. Final Act. 11. However, the highest
numbered claim in this application is claim 20. Also, under the heading for
the rejection of claim 29, the Examiner alternatively presents a substantive
discussion of claim 20, comparing the limitations to Wang, Shin, Music, and
Agapi. Id. at 15. Moreover, Appellants treat claim 20 as being rejected
unpatentable over Wang, Shin, Music, and Agapi. Br. 32. For the purposes
of appeal, then, we likewise treat the rejection as intending to reject claim 20
as obvious over Wang, Shin, Music, and Agapi. We consider the
misstatement of the rejection heading (Final Act. 11) to constitute harmless
error.
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following sections because each of these claims is rejected under a different
combination of prior art, presenting distinct issues on appeal.
THE OBVIOUSNESS REJECTIONS OVER SON AND AGAPI
Claims 1-4, 6, and 7
Independent claim 1, reproduced below with our emphasis, is
illustrative of the claims that are rejected over at least Son and Agapi.
1. A mobile computing device, comprising:
a housing;
a voice sensor to detect sound;
a speaker; and
a processing circuit to:
operate in first mode to receive instructions from a user by
detecting the user touching the device or an accessory of the
device, operate in a second mode to receive instructions from the
voice of the user through the voice sensor, and
switch from the first mode to the second mode without
receiving specific instructions from the user to switch the mode
at a time of switching when at least one predetermined
requirement is met, wherein at least one predetermined
requirement comprises a user defined calendar event set and
activated on the mobile computing device.
Contentions
The Examiner finds that Son teaches every limitation of illustrative
claim 1 except for processing-circuit functionality for switching modes when
the predetermined requirement is met. Final Act. 3. The Examiner cites
Agapi for this recited limitation and concludes that the claim would have
been obvious. Id at 4. According to the Examiner, Agapi switches from a
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touch mode to voice mode when a calendar event ends. See id. at 3--4;
Ans. 3.
Appellants argue that Agapi lacks the recited switch. Br. 29.
According to Appellants, Agapi switches from speech mode to text mode
when the calendar event commences, but the claim requires the opposite. Id.
Issue
Has the Examiner established by a preponderance of the evidence that
Agapi teaches or suggests the switching from a touch-based mode to a
voice-based mode when the recited requirement is met, as required by
claim 1?
Analysis
The key disputed limitation of claim 1, recites, in pertinent part,
"when at least one predetermined requirement is met, wherein [said] at least
one predetermined requirement comprises a user defined calendar event." In
the "Summary of the Claimed Subject Matter" section of the Brief,
Appellants point to paragraphs 3, 4, 5, 57, and 63 of the Specification as
explaining this limitation. Br. 6---7. But we see no definition in any of those
paragraphs, or elsewhere, that would confine our interpretation of what
constitutes a "user defined calendar event," or what it means for this
"predetermined requirement" to be "met."
Most of the cited paragraphs merely state that a requirement is met
without any further discussion of how. See Spec. i-fi-13, 4, 5, 57, 63. One
embodiment does describe the predetermined requirement being met upon
the arrival of a certain time, such as a calendar event. Id. at i168. But this
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embodiment is described as being only exemplary. Id. Furthermore, this
example still does not limit what kind of calendar event constitutes the
arrival of a predetermined requirement.
Reading the Specification as a whole, at least two reasonable
interpretations seem to exist for what constitutes a user defined calendar
event being met. Under a first interpretation, any given calendared meeting
reasonably can be interpreted as including at least two distinct events: (1) the
meeting's beginning or initiation, and (2) the meeting's end or termination.
Under this interpretation, the Examiner's position that the predetermined
requirement is met when Agapi's calendar event ends (Ans. 3) is reasonable.
That is, the occurrence of the end of Agapi' s calendared meeting can be
interpreted as a user defined calendar event being met just as reasonably as
interpreting the occurrence of the beginning of Agapi' s calendared meeting
as a user defined calendar event being met.
Even if we were to assume arguendo that it would be unreasonable to
interpret a meeting's beginning and end as constituting distinct calendar
events, and instead, it only would be reasonable to interpret the entire
meeting as constituting a single calendar event, a second interpretation still
exists that supports the rejection of claim 1. A general purpose dictionary
includes the following definition of "meet"-the present tense form of the
claim term "met": "to satisfy (needs, obligations, demands, etc.)."
WEBSTER;S ENCYCLOOPEDIC UNABRIGED DICTIONARY OF THE ENGLISH
LANGUAGE, 891 (1989). According to this definition, a set user-defined
calendar event or obligation, such as a meeting, is satisfied, fulfilled, or
"met" upon the completion of the entire meeting.
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For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner's obviousness rejection of representative claim 1.
Accordingly, we will sustain the Examiner's rejection of that claim, as well
as the rejection of dependent claims 2 and 3, which are not argued separately
from claim 1. See Br. 29--30.
With respect to the remaining rejections of dependent claims 4, 6, and
7, Appellants provide no patentability arguments directed to the additional
references of Cheng for claims 4 and 6 or Mockarram-Dorri for claim 7.
See Br. 29--30. Rather, Appellants rely solely upon arguments directed to
claim 1 for the remaining rejections. Id. Accordingly, for the reasons
discussed above, we also sustain the rejections of claims 4, 6, and 7.
THE OBVIOUSNESS REJECTIONS OVER WANG AND MCLEAN
Claims 8, 9, 11, 12, 14, and 153
Independent claim 8, reproduced below with our emphasis, is
illustrative of the claims rejected over at least Wang and McLean.
8. A non-transitory machine-readable medium having
instructions stored therein which, when executed by one or more
processing circuits within a mobile computing device, cause the
one or more processing circuits to perform a method of switching
the device from a first mode to a second mode, the method
compnsmg:
switching the device, based on circumstance and/or state
of the device, from the first mode to the second mode when a
3 Dependent claims 11, 12, and 14 recite a dependency from claim 10.
App. Br., Claim App. Claim 10, in tum, originally depended from
independent claim 8 (see Spec., Claim App. (as filed February 10, 2010)),
but claim 10 was subsequently canceled (App. Br., Claim App.). For the
limited purpose of the present appeal, then, we understand claims 11, 12,
and 14 to be intended to depend from independent claim 8.
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predetermined requirement is met, wherein in the first mode, the
one or more processing circuits to receive instructions from a
user by detecting the user touching the device or an accessory of
the device, and in the second mode, the one or more processing
circuits to receive instructions from the voice of the user and to
covert [sic read: convert] the detected voice to text, and
wherein the mobile computing device comprises a text to
speech module to convert the text to voice, the mobile computing
device to replay the voice to the user and prompt the user to
confirm the text or to revise the text, and the mobile computing
device to receive a voice response from the user in response to
the prompt.
Contentions
The Examiner finds that Wang teaches every limitation of
representative claim 8 except the recited text-to-speech module.
Final Act. 8. The Examiner find McLean's text-to-speech module
corresponds to the claimed text-to-speech module and concludes that the
claim \x1ould have been obvious. Id at 9. To address the recited second
mode, the Examiner finds that Wang receives instructions from the user's
voice. Id. at 8 (citing Wang, Fig. 3 (304); Fig. 2 (microphone 204)).
Appellants argue that Wang and McLean lack the second mode's
receiving and converting functions. Br. 31-32. According to Appellants,
Wang converts voice to text, but does not receive instructions from the
user's voice as recited. Id. at 31. Appellants further argue that McLean does
not supply this missing limitation. Id. at 31-32.
Issue
Has the Examiner established by a preponderance of the evidence that
Wang and McLean collectively teach or suggest "one or more processing
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circuits to receive instructions from the voice of the user and to co [ n ]vert the
detected voice to text," as in claim 8?
Analysis
The key disputed limitation of claim 8, recites, in pertinent part, "one
or more processing circuits to receive instructions from the voice of the user
and to [convert] the detected voice to text." This limitation requires two
functions: receiving instructions and converting detected voice to text. As
described in detail below, we agree with the Examiner (Final Act. 8) that
Wang discloses both functions.
Regarding the receiving function, the Specification consistently uses
the term "instructions" to mean commands. See, e.g., Spec. i-f 73 (disclosing
instructions for email· "read it " "reply " "forward " "reply to all " "next . ' ' ' '
email."); i-f 7 4 (disclosing instructions for playing music: "stop," "forward to
next song," "volume up," "volume down."); i-f 76 (disclosing instructions for
a phone call: "pick up," reject," or "direct to voicemail"). So, the recited
"instructions" cover the user's spoken commands.
According to the Examiner, Wang receives instructions by capturing a
spoken signal. See Final Act. 8 (citing step 304 of Figure 3). Wang's
spoken signal is mapped to a text character or control instruction.
Wang i-f 32, cited in Ans. 3. Like the recited instructions, Wang's control
instructions are program commands. See Wang i-f 32 (describing control
instructions to move the cursor or change the font). Accordingly,
Appellants' argument that Wang lacks receiving instructions from the user's
voice (Br. 31) is unpersuasive.
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In the context of the convert function, the recited "detected voice" is
not limited to voice instructions. "[C]onvert[ing] the detected voice" also or
alternatively could entail converting spoken information, signals, or other
non-"instruction" content received from the user's voice. This construction
is consistent with the Specification. For example, the user can compose an
email by dictating text. Spec. i-f 73. To begin composing the text of the
email body, the user says "email body." Id. In voice mode, the user then
dictates spoken content and the voice-to-text module converts the voice
signal to the text of the email body. Id. So, we construe the recited
"detected voice" as being a generic term that reads on, e.g., the speech signal
carrying the instruction "email body," the dictated speech signal that is
subsequently converted to body of the text, itself, or both of these speech
signals.
To be sure, in addressing the recited convert function, the Examiner's
rejection (Final Act. 8-9) is not a model of clarity. For example, the
Examiner does not quote the limitation "to convert the detected voice into
text," as is done with the remainder of the limitations. See id. But the
Examiner nevertheless articulates findings sufficiently to support the
obviousness conclusion.
In the rejection, the Examiner points to Wang's captured spoken
signal. See id. at 8 (citing step 304 of Figure 3). And Wang converts this
spoken signal to text. Wang i-f 32, cited in Ans. 3. Although Wang
distinguishes text from control instructions (Wang i-f 32), we see nothing in
the claim that precludes interpreting "the detected voice" as reading on
dictated text.
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Construing "the detected voice" as covering dictated text is consistent
with the Specification. For example, Appellants disclose that the user's
voice commands---e.g., "reply to all"---could be converted directly to
instructions and only the dictated text---e.g., the body of an email-
converted to text data. See Spec. i-fi-158 (describing the alternative
instruction-processing embodiment), 73 (providing examples of instructions
and dictated text). That is, Wang meets the limitation because Wang
converts at least some speech to text, even if Wang's control instructions
may not be converted to text (see Wang i132). On this record, we are
unpersuaded that Wang lacks the recited converting function as Appellants
argue (Br. 31 ).
Lastly, Appellants' arguments that McLean lacks a circuit to receive
instructions and convert voice to text (id. at 32) are not germane to the
Examiner's reliance on that reference (Final Act. 8-9). As discussed, the
Examiner cites Wang-not McLean-to address this circuit. See id. at 8.
The Examiner cites McLean instead to show that it would have been obvious
to add a text-to-voice module. Id. at 8-9. And Appellants have not disputed
the Examiner's conclusion in that regard. See Br. 31-32.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner's obviousness rejection of representative claim 8.
Accordingly, we will sustain the Examiner's rejection of that claim, as well
as the rejection of dependent claims 9, 11, 14, and 15, which are not argued
separately. See Br. 32.
With respect to the remaining rejection of claim 12, Appellants
provide no patentability arguments directed to the additional reference of
Schrager. See Br. 32. Rather, Appellants rely solely upon arguments
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directed to claim 8. Id. Accordingly, we also sustain the rejection of claim
12 for the reasons discussed above.
THE OBVIOUSNESS REJECTIONS OVER WANG, SHIN, MUSIC, AND
AGAPE
Claims 16 and 18-20
Independent claim 16, reproduced below with our emphasis, is
illustrative of claims rejected over at least the combination of Wang, Shin,
Music, and Agape.
16. A mobile computing device, comprising:
a housing;
a user input device to detect a user touching the mobile
device or an accessory of the device and to co[n]vert the touches
into first digital instructions;
a voice sensor to detect sound;
a speech conversion module to convert the sound into
second digital instructions; and
a processing module to:
provide the first digital instructions to any of a
plurality of different programs or applications when in a
first mode,
provide the second digital instructions to any of the
plurality of different programs or applications when in a
second mode,
provide a common instruction to at least one of the
plurality of different programs or applications when a
same user instruction is provided via the user input device
or voice sensor, the common instruction provided to at
least one of the plurality of different programs or
applications in a same data format regardless of whether
the same user instruction is provided via user input device
or voice sensor; and
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switch modes of operation without rece1vmg
specific instructions from the user to switch the mode at a
time of switching when at least one predetermined
requirement is met, wherein at least one predetermined
requirement comprises user defined calendar event set and
activated on the mobile computing device.
Contentions
The Examiner finds that Wang, Shin, and Agapi disclose collectively
every recited element of independent 16 except for the recited common
instruction. Final Act. 11-14. The Examiner cites Music for teaching this
feature and concludes that the claim would have been obvious. Id. at 13.
According to Appellants, Music provides a common interface for two
different inputs. Br. 34. Specifically, Appellants argue that Music is
concerned with a consistent "look and feel" of the interface. Id. But
Appellants contend that Music does not provide the recited common
instruction in the same data format regardless of the input device that
provided it. Id.
Issue
Has the Examiner established by a preponderance of the evidence that
Music teaches or suggests the recited common instruction in the same data
format, as recited in claim 16?
Analysis
We agree with Appellants' contention----the Examiner has failed to
establish that Music lacks a common instruction in the same data format
regardless of the input device that provided it. Id. For the reasons discussed
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below, we agree with Appellants' contention that the Examiner's pos1t10n is
based on the look of Music's interface. See id. However, the plain meaning
of the recited "data format" imposes limitations on the data sent by that
interface.
One plain meaning of a "data format" is the structure applied to data
to provide a context for interpreting the data. MICROSOFT COMPUTER
DICTIONARY 124 (4th ed. 1999). So, the recited common instruction
requires the same context-providing structure for both voice and touch input.
The Examiner points to Music's interface controls that are presented
in "the same format." Final Act. 13 (citing Music i-f 29). Specifically, Music
graphically presents user interface 108 on a computer display. Music i-f 19.
Additionally, Music's user can provide input using touch-sensitive panel 202
shown in Figure 3. Id. i-f 29. For this second interface, Music adheres a
printed image to panel 202. Id. To provide a consistent "look and feel," a
region of panel 202 replicates user interface 108 by presenting the controls
in "the same format and orientation." Id.
In other words, the cited portion of Music (id.) relates to how the
interface looks to the user---e.g., the interface looks the same regardless of
input method. But the claim relates to how the data "looks" to the computer.
Examiner has not established that the presentation of the controls is germane
to, much less dispositive of, the format of the instructions that these controls
provide. See Final Act. 13.
Regarding the data in Music, touch-sensitive panel 202 sends
coordinate data to application 104. See, e.g., Music i-f 28. Music likewise
discusses a format accepted by the application. Id., Abstract. We take no
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pos1t10n on whether it would have been obvious to apply the same structure
to this coordinate data as the data received from graphical user interface 108.
Nor do we take any position on whether it would have been obvious
to have Music's application accept only one common format. These
rationales are not found in the record before us. Instead, the Examiner
points to the common presentation format of the presentation, and then relies
on the corresponding improvement to the accuracy of data entry without
discussing the data format. See Final Act. 13 (citing Music i-f 29); Ans. 4
(citing Music, Abstract). Accordingly, we are constrained by this record to
find that the Examiner has erred in rejecting claim 16.
For the foregoing reasons, Appellants have persuaded us of error in
the Examiner's obviousness rejection of independent claim 16.
Accordingly, we will not sustain the Examiner's rejection of that claim, as
well as claims 18 and 20, which depend from claim 16.
Regarding the rejection of dependent claim 19, the Examiner does not
rely on Schrager for disclosing the common instruction missing from the
proposed combination as explained above. Rather, the Examiner cites
Schrager to show that it would have been obvious to play a sound file stored
in a device. Final Act. 15-16. Accordingly, we will not sustain the rejection
of claim 19 for the reasons stated above.
DECISION
The Examiner's decision rejecting claims 1--4, 6-9, 11, 12, 14, and 15
is AFFIRMED.
The Examiner's decision rejecting claims 16 and 18-20 is
REVERSED.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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