Ex parte Eggen

Board of Patent Appeals and Interferences

Jun 20, 2000

08430090 (B.P.A.I. Jun. 20, 2000)

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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journal and (2) is not binding precedent of the Board.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. 39
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JOSEPHUS H. EGGEN
________________
Appeal No. 1997-3909
Application 08/430,090
________________
ON BRIEF
________________
Before THOMAS, KRASS and HECKER, Administrative Patent Judges.
HECKER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final
rejection of claims 10 through 17, all of the claims pending
in the application.
Appeal No. 1997-3909
Application 08/430,090
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The invention relates to a device such as a
computer, video recorder, cd-player, etc., wherein optional
messages are contained for providing an elaboration on an
aspect of the operating device. The optional messages (such
as help messages) may be converted to speech form, and the
speech may be reproduced at a normal speed or an increased
speed.
Representative independent claim 10 is reproduced as
follows:
10. In a device comprising:
(a) functionality means for executing a main
function of the device,
(b) help means ancillary to the functionality means
for assisting the user in operating the functionality means,
said help means including:
(i) a plurality of non-speech-form help messages
including messages relevant to the operation of the
functionality means,
(ii) message selection means,
(iii) message reproducing means for converting any of
said messages into speech form,
(c) user interface means connected to the
functionality means and the help means and responsive to a
user command for obtaining help in speech form in connection
with operation of an aspect of said functionality means for
selecting from said plurality of messages a help message
Appeal No. 1997-3909
Application 08/430,090
This is indicated as a new ground of rejection in the1
Examiner’s Answer, paper no. 28. However, it is the same as
that made in the Final Rejection, paper no. 21, with the
omission of claims 16 and 17.
This is indicated as a new ground of rejection in the2
Examiner’s Answer, paper no. 28. It differs from that made in
the Final Rejection, paper no. 21, in that the APA is no
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relevant to said aspect;
the improvement comprising:
(d) means under user control for selectively causing
the message reproducing means to render said selected help
message at at least a first normal velocity or at a second
faster velocity, said second velocity being faster than said
first velocity to enable said user to quickly reach the part
of said selected help message that may be of particular help
in operating the functionality means.
The references relied on by the Examiner are as
follows:
Yabuuchi EP 0 402 911 Dec. 19, 1990
Appellant’s Admitted Prior Art (APA)
Claims 10 through 15 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the APA in view of
Yabuuchi .1
Claims 16 and 17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yabuuchi . 2
Appeal No. 1997-3909
Application 08/430,090
longer relied upon.
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Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the brief (paper no. 27), reply
brief (paper no. 29), supplemental reply brief (paper no. 36),
answer (paper no. 28) and the supplemental answer (paper no.
35) for the details thereof.
OPINION
After a careful review of the evidence before us, we
agree with the Examiner that claims 10 and 14 through 17 are
properly rejected under 35 U.S.C. § 103. Thus, we will
sustain
the rejection of these claims but we will reverse the
rejection of the remaining claims on appeal, claims 11 through
13, for the reasons set forth infra.
At the outset, we note that Appellant has indicated
on page 7 of the brief that the claims stand or fall together
in three groups. Group I includes claims 10, 14 and 15.
Group II includes claims 11 through 13. Group III includes
claims 16 and 17.
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Considering the Group I claims, with claim 10 being
representative thereof, the Examiner reasons that everything
in this Jepson claim before “the improvement comprising:” is
considered admitted prior art (APA). The APA teaches
everything except selecting different velocities for voice
message playback. Yabuuchi teaches altering the speed
(velocity) of voice playback. The Examiner indicates that it
would have been obvious to one of ordinary skill in the art at
the time of invention to use Yabuuchi’s selective playback
modes (i.e., speeds) with the APA because of the universally
recognized desirability of multi-speed playback in the
audio/speech processing arts. (Supplemental answer-page 3.)
Appellant argues that the Examiner’s reliance on
Yabuuchi for altering voice playback speed is without merit.
Appellant contends that Yabuuchi’s teaching is merely a
summary of the various playback modes, and that it is
impermissible for the Examiner to select an isolated teaching
from a reference without consideration of what the reference
as a whole teaches to one of ordinary skill in the art.
(Reply brief-pages 7 and 8.)
The cited portion of Yabuuchi states:
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Referring to Fig. 12, original voice playback is a
mode in which the recorded voice is played back at
the same speed and pitch as those in the recording
operation, rapid talking playback is a mode in which
only the speed of the voice is made higher than in
the recording operation without changing the pitch
thereof, ...(emphasis added)(page 10, lines 10-13).
We see no problem with the Examiner relying on this
passage for multi speed voice playback in Yabuuchi. Yabuuchi
teaches multi-speed voice annotations. The cited passage does
not waiver from what Yabuuchi teaches as a whole.
Appellant argues “Yabuuchi fails to teach anything
regarding selected help messages, much less anything regarding
playback of a selected help message at first and second
velocities. ... Moreover, Appellant further submits that the
playback of 'help information' is completely different from
the playback taught by Yabuuchi.” (Reply brief-pages 8 and
9.)
We fail to see the merit in this argument since the
APA clearly sets forth the help message in speech form (see
claim 10, section (b)). The Examiner merely relies on
Yabuuchi for making the speech multi-speed.
Appellant cites In re Donaldson, 16 F.3d 1189, 1193,
Appeal No. 1997-3909
Application 08/430,090
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29 USPQ2d 1845, 1848 (Fed. Cir. 1994), requiring proper credit
for the “means-plus-function” claim language. Appellant
complains that the Examiner has not identified an equivalent
structure in at least one of the applied references which
performs an identical function. Also, Appellant contends “In
particular, the Examiner’s Answer has never identified the
structural changes necessary to convert the alleged prior art
apparatus in accordance with the teachings [o]f the Yabuuchi
reference so as to arrive at the invention of claim 10.”
(Reply brief-page 11.)
We note that Appellant has not identified any
corresponding structure in his own specification. We are also
hard pressed to find any structure in the labeled boxes of
Appellant’s Figure 1 or the flow chart of Figure 2. Without
further guidance, the claimed “means-plus-function” structure
appears to be more function than structure. And, in that
vain, Yabuuchi clearly recites the function of multi-speed
voice annotation (indicated by the Examiner in Figure 12).
Appellant contends that the Examiner has used
impermissible hindsight reconstruction and has proffered no
references evidencing the “universally recognized” advantages.
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Application 08/430,090
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(Reply brief-page 11.)
We assume the “universally recognized” advantages,
missing evidence thereof, are multi-speed speech. We assume
this because APA teaches the advantage of help information in
speech form. Thus, it seems clear to us that the evidence of
the desirability of multi- speed speech is in Yabuuchi itself,
e.g., fast forward of a tape recorder (page 2, lines 13, 14).
We are unconvinced by Appellant’s repeated arguments
that Yabuuchi is devoid of help messages which in turn are
ancillary to the main function of the device. Everything in
claim 10 prior to “the improvement comprising:”, a Jepson
claim, is admitted prior art (APA). Ethicon Endo-Surgery Inc.
v. U.S. Surgical Corp., 93 F.3d 1572, 1577, 40 USPQ2d 1019,
1022-23 (Fed. Cir. 1996). The APA clearly teaches the help
messages (in speech form) which in turn are ancillary to the
main function of the device. Appellant has not disputed the
APA being the first part of a Jepson claim. The Examiner
relies on Yabuuchi for making the speech multi-speed, for the
advantages incumbent therein. Furthermore, Appellant’s own
specification recites an example of the invention as
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“multimedia file reproduction” (page 1, line 8) much like
Yabuuchi’s “system which processes multi-media documents”
(page 2, lines 3,4). Appellant’s specification recites “The
message reproduction means provide for example for the
reproduction of annotations to a document being displayed,...”
(page 1, lines 10-12), much like Yabuuchi’s “voice processing
of annotating voice messages to a document” (see abstract).
Thus, for the reasons noted supra, we will sustain the
Examiner’s rejection of claim 10, and likewise claims 14 and
15 which stand or fall in the same group.
Looking at the Group II claims, with claim 11 being
the representative claim, Appellant argues that the control
for switching between first and second speech velocities
operates during reproduction of a selected help message.
Appellant contends the Examiner has completely ignored this
limitation. Appellant notes that Yabuuchi selects playback
speed from a menu (Figure 12) and closes this menu at the same
time playback is initiated, thus Yabuuchi is devoid of speed
switching during playback. (Reply brief-pages 12 and 13).
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We have thoroughly reviewed the answer and
supplemental answer, and agree with Appellant. The Examiner
has completely ignored the during limitation, which is not
taught by Yabuuchi or APA. Thus, we will not sustain the
Examiner’s rejection of claim 11, and likewise claims 12 and
13 which depend therefrom.
Finally, we will consider the rejection of the Group
III claims, claim 16 being considered the representative
claim. We note that APA is not used in this rejection, and
that Yabuuchi is the sole reference applied. Thus,
Appellant’s argument that help messages, per se, are not
recited in Yabuuchi is more relevant here. However, as
broadly recited in claim 16, we find that “help information”
is met by Yabuuchi in its annotations. Annotations by their
nature provide a further explanation or comment on the text to
which they are attached. In providing an annotation, we find
that such a further explanation or comment helps in
understanding the text to which it is attached or is ancillary
thereto.
Appellant repeats the means-plus-function argument
Appeal No. 1997-3909
Application 08/430,090
We note that in passing claim 17 lacks antecedent basis3
for “the means for fast forwarding”.
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presented with respect to claim 10 (reply brief-page 16). As
we stated supra, we find at least as much means and function
in the applied references as identified by Applicant in his
own specification. Thus, we will sustain the Examiner’s
rejection of claim 16, and likewise claim 17 which stands or3
falls in the same group.
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 reasonable teachings or
suggestions found in the prior art, or by a reasonable
inference to the artisan contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983).
In addition, the Federal Circuit reasons in Para-Ordnance Mfg.
v. SGS Importers (Fed. Cir. 1995), 73 F.3d 1085, 1087-88, 37
USPQ2d 1237, 1239-40, that for the determination of
obviousness, the court must answer whether one of ordinary
skill in the art who sets out to solve the problem, and who
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Application 08/430,090
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had before him in his workshop the prior art, would have been
reasonably expected to use the solution that is claimed by the
Appellant.
We find that those skilled in the art having the
teachings of Yabuuchi before them would have seen the
desirability of multi-speed in the voiced help messages of APA
(re claim 10), and that the broadly recited help information
of claim 16 is even anticipated by Yabuuchi. Lack of novelty
is the ultimate of obviousness. See In re Fracalossi, 681
F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982).
In view of the foregoing, the decision of the
Examiner rejecting claims 10 and 14 through 17 under 35 U.S.C.
§ 103 is affirmed; however, the decision of the Examiner
rejecting claims 11 through 13 under 35 U.S.C. § 103 is
reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Appeal No. 1997-3909
Application 08/430,090
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JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
ERROL A. KRASS ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
STUART N. HECKER )
Administrative Patent Judge )
SNH/ki
Appeal No. 1997-3909
Application 08/430,090
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