Ex Parte Feuerman

Board of Patent Appeals and Interferences

Sep 29, 2009

10700829 (B.P.A.I. Sep. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KENNETH E. FEUERMAN
____________________

Appeal 2009-005373
Application 10/700,8291
Technology Center 2100
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Decided: September 29, 2009
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Before JAMES D. THOMAS, JOHN A. JEFFERY, and JAY P. LUCAS,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed November 3, 2003. The real party in interest is Adobe
Systems.
Appeal 2009-005373
Application 10/700,829

STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1, 11, 12, 22, 24,
34, 35, 45, and 47-52 under authority of 35 U.S.C. § 134(a). The Board of
Patent Appeals and Interferences (BPAI) has jurisdiction under
35 U.S.C. § 6(b). Claims 2-10, 23, 25-33, and 46 are cancelled. Claims
13-21 and 36-44 are withdrawn.

Appellant’s invention relates to a speech-recognition technique for
generating and processing “self-describing forms” (Spec. 1, ll. 3-6). In the
words of Appellant:
[A]n audio-based form can consist of audio signals recording a
voice speaking a field name followed by a pause, during which
a form user is expected to enter the appropriate user data by
speaking (e.g., stating their name). The pattern of speaking a
field name followed by a pause is continued until each field
name has been presented to the user, and the user has been
given an opportunity to enter corresponding user data. Audio
signals including the voice speaking the form data and the
user’s voice speaking the user data together comprise a
completed form.
(Spec. 11, ll. 4-10).

Claim 1 is exemplary:
1. A computer-implemented method for generating an
audio-based form represented electronically as a digital audio
file, the audio-based form including one or more data fields, the
method comprising:

defining zoning information identifying a temporal
location and temporal dimensions of the one or more data fields
of the audio-based form;
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defining structural information including a name for each
of the one or more data fields and a description of a type of user
data expected to be provided for each of the one or more data
fields, where the audio-based form comprises audio signals
recording a voice speaking a name of a data field followed by a
pause during which a user can speak the user data expected to
be provided for the data field;

encoding the zoning and structural information in one or
more audio signals; and

incorporating the one or more audio signals including the
encoded zoning and structural information into the audio-based
form.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Reintjes US 2002/0067854 A1 Jun. 06, 2002
Coifman US 2004/0254791 A1 Dec. 16, 20042

REJECTION
The Examiner rejects the claims as follows:

Claims 1, 11, 12, 22, 24, 34, 35, 45, and 47-52 stand rejected under
35 U.S.C. § 103(a) for being obvious over Coifman in view of Reintjes.

Claim 1 is representative. See 37 C.F.R. § 41.37(c)(vii). See also In
re McDaniel, 293 F.3d 1379, 1383 (Fed. Cir. 2002) (“If the brief fails to

2 We note that Coifman relies upon the priority date established by
provisional application 60/451,024, filed March 1, 2003.
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Application 10/700,829

meet either requirement [of 37 C.F.R. § 1.192(c)(7)], the Board is free to
select a single claim from each group of claims subject to a common ground
of rejection as representative of all claims in that group and to decide the
appeal of that rejection based solely on the selected representative claim.”).

Appellant contends that the claimed subject matter is not rendered
obvious by Coifman in combination with Reintjes because the Coifman
reference does not disclose or suggest an “audio-based form,” as claimed
(App. Br. 7, bottom). The Examiner contends that each of the claims is
properly rejected (Ans. 29, top).
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this opinion. Arguments that Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.

We reverse.
ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
Appellant’s claimed “audio-based form” is disclosed in Coifman.

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellant has invented a method and system for creating audio-based
forms that can consist of audio signals (Spec. 2, ll. 18-19 and 11, l. 4). A
recorded voice indicates to a user the part of the form to be completed,
followed by a pause in the recording for the user to speak to complete the
form field. (See Spec. 11, ll. 4-10.) The recorded voice and the user
voice are digitized in a digital audio file called an “audio-based form.”
(See claim 1 and Spec. 11, ll. 8-10.)
Reintjes
2. The Reintjes reference discloses filling out a form using an electronic
pen. (See ¶ [0018].) Data fields filled out at the top of the form are
completed before (in a temporal sense) data fields at the bottom of the
form. (See ¶¶ [0026], [0036], and [0037].)
Coifman
3. The Coifman reference discloses filling out an electronic form (e.g., for a
medical patient) using speech recognition software. (See ¶¶ [0013] and
[0033].) Speech recognition software digitizes incoming analog speech
and then produces text strings. (See ¶ [0027].) Moreover, Coifman
discloses form fields 315, 318, 328 that hold data in the form of text
string values. (See ¶¶ [0031] and [0032].)

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PRINCIPLE OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).

ANALYSIS
The Examiner’s rejection is presented on pages 3 to 16 of the
Examiner’s Answer. In opposition, Appellant presents a number of
arguments.

Argument with respect to the rejection
of claims 1, 11, 12, 22, 24, 34, 35, 45, and 47 to 52
under 35 U.S.C. § 103(a)

The first argument, which addresses whether Coifman discloses
Appellant’s claimed “audio-based form,” is dispositive (App. Br. 7, bottom
to 8, top).
Appellant argues: “Coifman does not disclose such an audio-based
form [as recited in claim 1]. By contrast, Coifman contemplates using
computers (see Figure 1) to complete the computerized electronic form (i.e.,
a visually observable form, such as shown in Figure 3).” (Id.).
In reply, the Examiner finds that Coifman discloses Appellant’s
claimed “audio-based form including one or more data fields” in Figs. 2 and
3 and at paragraphs [0029] and [0030] on page 4 of Coifman. (See Ans. 3,
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bottom). The Examiner equates Coifman’s disclosure that “vocal input may
be used to provide inputs to text fields within a particular form, field or web
page” in paragraph [0029] (id.). In addition, the Examiner finds that
Appellant’s “one or more data fields” reads on a Coifman’s “text field
within a particular form.” (Id.).
We disagree with the Examiner. We closely examined the Briefs, the
Examiner’s Answer, the cited portion of Coifman, and indeed the entire
reference. We find that Coifman does not disclose the claimed “audio-based
form” for the following reasons. We find that Coifman discloses filling out
an electronic form (e.g., for a medical patient) using speech recognition
software. (See ¶¶ [0013] and [0033].) We find that Coifman’s speech
recognition software takes incoming analog speech and converts the speech
into text strings. (See FF#3.)
Coifman’s data is stored in the form of text string values, whereas the
claimed invention recites an “audio-based form.” (See FF#1 and FF#3.)
The Specification states that the claimed “audio-based form” is a recording
that can consist of digital audio signals (FF #1). This is evident in
exemplary claim 1, which recites “the audio-based form comprises audio
signals,” “encoding the zoning and structural information in one or more
audio signals,” and “incorporating the one or more audio signals.” Since
Coifman does not disclose saving “audio signals,” instead storing arrays of
text (i.e., text string values) (FF#3), we find convincing Appellant’s
argument that Coifman does not disclose the claimed “audio-based form,” as
recited in exemplary claim 1. Accordingly, we find error in the Examiner’s
analysis. Since claims 11, 12, 22, 24, 34, 35, 45, and 47-52 also recite an
“audio-based form,” as in exemplary claim 1, we find error regarding the
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Examiner’s analysis of each of these claims. Coifman simply does not
provide the evidentiary record necessary to support the Examiner's rejection.
Since the issue of whether the Coifman reference discloses
Appellant’s claimed “audio-based form” is dispositive, we do not address
the merits of Appellant’s other arguments.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner erred in rejecting claims 1, 11, 22, 24, 34, 35, 45, and
47-52.

DECISION
The Examiner’s rejection of claims 1, 11, 22, 24, 34, 35, 45, and
47-52 is reversed.

REVERSED

peb

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