Ex Parte Galli

Board of Patent Appeals and Interferences

Feb 21, 2007

09870223 (B.P.A.I. Feb. 21, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DOREEN LYNN GALLI
____________

Appeal 2007-0338
Application 09/870,223
Technology Center 2100
____________

Decided: February 21, 2007
____________

Before JAMES D. THOMAS, MAHSHID D. SAADAT, and ALLEN R.
MACDONALD, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1-16, the only claims pending in this
application. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
Appeal 2007-0338
Application 09/870,223

INTRODUCTION
The claims are directed to an interactive voice response system.
Specifically, the system includes a database of pre-recorded voice prompts
which are held outside the compiled code of an application program. To
retrieve a voice prompt from the database, the program provides a variable
whose value specifies the entry point into the database. The variable’s value
is assigned by an assignment table. Claim 1 is illustrative:
1. An interactive voice response system, comprising:
an application program that provides call flow instructions, wherein a
call flow instruction that invokes a voice prompt provides a variable that can
be read from outside compiled code of the application program;
a programmable processor that executes the call flow instructions of
the application program;
a database that contains a plurality of pre-recorded voice prompts; and
an assignment table that assigns a value to the variable to provide an
entry point to the database.

The Examiner relies on the following prior art reference to show
unpatentability:
Osder US 5,493,606 Feb. 20, 1996

The rejections as presented by the Examiner are as follows:
1. Claims 1, 2, 9, and 10 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Osder.
2. Claims 3-8 and 11-16 are rejected under 35 U.S.C § 103(a) as
unpatentable over Osder.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
2
Appeal 2007-0338
Application 09/870,223

Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2004).

OPINION
It is our view, after consideration of the record before us, that the
disclosure of Osder fully meets the invention as set forth in claims 1, 2, 9,
and 10. We also conclude that the evidence relied upon and the level of skill
in the particular art would have suggested to one of ordinary skill in the art
the obviousness of the invention as set forth in claims 3-8 and 11-16.
Accordingly, we affirm.
We first consider the Examiner’s rejection of claims 1, 2, 9, and 10
under 35 U.S.C. § 102(b) as being anticipated by Osder. Anticipation is
established only when a single prior art reference discloses, expressly or
under the principles of inherency, each and every element of a claimed
invention as well as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital Data Systems,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984); W.L. Gore
and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303,
313 (Fed. Cir. 1983).
The Examiner has indicated how the claimed invention is deemed to
be fully met by the disclosure of Osder (Answer 13-15). Regarding
independent claim 1, Appellant argues, among other things, that Osder does
not teach a database containing plural pre-recorded voice prompts as
3
Appeal 2007-0338
Application 09/870,223

claimed. Rather, Osder is said to generate prompts as needed at runtime by
(1) expanding dynamic elements and , and (2)
concatenating the computed dynamic elements with static elements. Simply
put, Appellant contends that Osder’s prompts do not exist until runtime (i.e.,
when the actual values for the dynamic elements are computed). Therefore,
Osder’s prompts do not exist in a database as claimed (Br. 7; Reply Br. 4-6,
8-10). The Examiner responds that Osder’s static and dynamic elements are
pre-recorded prompt elements in tables stored in the SPIN1 database
(Answer 5-6).
Appellant also argues that Osder does not teach an assignment table
that assigns a value to the variable to provide an entry point to the database
as claimed (Br. 7). The Examiner argues that Osder’s SPIN Application
Table assigns the values of the identifiers (e.g., UV10AE, etc.) that point to
prompt element sets shown in Tables 2-5 that contain the pre-recorded
prompts (Answer 6). Appellant responds that even if the SPIN Application
Table corresponds to the claimed assignment table as the Examiner
contends, Osder does not disclose a “variable” to which the values UV10AE,
etc. are assigned and which can be read from outside the compiled code of
the application program as claimed (Reply Br. 11).
We will sustain the Examiner’s rejection of independent claim 1. In
our view, Osder’s stored static elements alone fully meet a “voice prompt”
giving the term its broadest reasonable interpretation. It is undisputed that
the static and dynamic elements in Osder are pre-recorded and stored in a
database. See Reply Br. 5, ll. 17-19 (noting that the static and dynamic

1 SPIN is an acronym for “Speech Interface to Network Application Platform.” See Osder, abstract.
4
Appeal 2007-0338
Application 09/870,223

elements are stored in the database, not the prompt itself). We recognize
that Osder ultimately assembles a voice prompt at runtime by stringing
together static and dynamic elements as Appellants indicate. See, e.g.,
Osder, Fig. 1. But such pre-recorded elements of a prompt are themselves
“voice prompts” giving the term its broadest reasonable interpretation.
For example, the static element E1000B is a pre-recorded voice
saying the phrase “NEW MESSAGES” (Osder, col. 1, ll. 44-48; Fig. 1).
This static element itself conveys content to the listener. In any event, the
broad scope of the term “voice prompt” simply does not preclude Osder’s
stored, pre-recorded static elements, notwithstanding their later combination
with dynamic elements to assemble a longer voice prompt at runtime.
We also agree with the Examiner that the SPIN Application Table
reasonably meets the claimed “assignment table” limitation giving the term
its broadest reasonable interpretation. As the Examiner indicates, Osder’s
SPIN Application Table assigns the values of the identifiers (e.g., UV10AE,
etc.) that point to prompt element sets shown in Tables 2-5 that contain the
pre-recorded prompts. As shown in Fig. 3, each identifier in the SPIN
Application Table (UV10AE, etc.) corresponds to a unique SPIN application
and provides an entry point to the database. See Osder, Fig. 3 (showing
arrows pointing to Tables 2, 4, and 5). Giving the term “variable” its
broadest reasonable interpretation, we conclude that placing each SPIN
application identifier in the assignment table itself inherently involves the
table assigning a value to a variable. Moreover, the assignment table also
assigns a value to the variable associated with selecting the appropriate
prompt from the American English Prompt Set 2 (i.e., P1000, P1001, etc.).
5
Appeal 2007-0338
Application 09/870,223

Such a variable, in our view, also provides an entry point to the database.
Moreover, these variables are capable of being read from outside the
compiled code of the application program as claimed.
For at least these reasons, we will sustain the Examiner’s rejection of
independent claim 1. Since Appellant has not separately argued the
patentability of dependent claim 2 with particularity, it falls with
independent claim 1. See In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d
1525, 1528 (Fed. Cir. 1987). See also 37 C.F.R. § 41.37(c)(1)(vii).
Regarding independent claim 9, Appellant argues that Osder does not
disclose reading a database record that includes a digitally encoded voice
prompt, wherein the database record is identified by the value assigned to
the variable (Br. 8-9; Reply Br. 8). The Examiner responds that Osder’s
SPIN Application Table assigns the value of the SPIN Application ID
variable which is used to identify the appropriate prompt record (Answer 8).
We will sustain the Examiner’s rejection of claim 9. As we indicated
previously, Osder’s assignment table assigns a value to the variable
associated with selecting the appropriate prompt from the American English
Prompt Set 2 (i.e., P1000, P1001, etc.). In our view, the appropriate prompt
from this set fully meets a “database record” giving the term its broadest
reasonable interpretation.
For at least these reasons, we will sustain the Examiner’s rejection of
independent claim 9. Since Appellant has not separately argued the
patentability of dependent claim 10 with particularity, it falls with
independent claim 9.
6
Appeal 2007-0338
Application 09/870,223

We next consider the Examiner’s rejection of claims 3-8 and 11-16
under 35 U.S.C § 103(a) as unpatentable over Osder. In rejecting claims
under 35 U.S.C. § 103, it is incumbent upon the Examiner to establish a
factual basis to support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). If that burden
is met, the burden then shifts to the applicant to overcome the prima facie
case with argument and/or evidence. Obviousness is then determined on the
basis of the evidence as a whole and the relative persuasiveness of the
arguments. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992); In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686
(Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
147 (CCPA 1976).
The Examiner's rejection essentially finds that Osder teaches every
claimed feature except for the respective attributes of the voice prompts
recited in claims 3-8 and 11-16 (i.e., different speakers, different levels of
formality, music, audio tone, same meaning but different wording). The
Examiner, however, states that since callers may have different preferences
and purposes, providing the voice prompts in Osder with the various claimed
attributes would have been obvious to the skilled artisan (Answer 16).
Appellant argues that the Examiner’s rationale for modifying Osder is
merely speculative in failing to show where the prior art suggests such a
modification (Br. 11-19; Reply Br. 14-17).
We will sustain the Examiner’s rejection of claims 3-8 and 11-16. At
the outset, we note that specifying the various attributes of voice prompts in
7
Appeal 2007-0338
Application 09/870,223

these claims merely describes the content of the data stored in the voice
prompt database. Because this data content does not further limit the
claimed invention either functionally or structurally, it essentially constitutes
non-functional descriptive material. Such non-functional descriptive
material, however, does not patentably distinguish over prior art that
otherwise renders the claims unpatentable. See In re Ngai, 367 F.3d 1336,
1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004).
Nevertheless, Osder expressly states that voice prompts could be
spoken by a man or a woman (Osder, col. 28, ll. 56-58). This teaching
strongly suggests that the voice prompts can be tailored to suit particular
needs and preferences. Furthermore, Appellant’s specification states that it
is known in the art for programmers to tailor the vocal, dialect, or linguistic
characteristics of voice prompts in interactive voice response systems
(Specification 2:3-11). These teachings, in our view, amply support the
Examiner’s position that it would have been obvious to the skilled artisan to
tailor Osder’s voice prompts in the manner recited in claims 3-8 and 11-16
for users with different preferences and purposes. The Examiner’s rejection
of claims 3-8 and 11-16 is therefore sustained.

DECISION
We have sustained the Examiner's rejections with respect to all claims
on appeal. Therefore, the decision of the Examiner rejecting claims 1-16 is
affirmed.
8
Appeal 2007-0338
Application 09/870,223

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) (2004).

AFFIRMED

PGC

Schmeiser, Olsen & Watts
22 Century Hill Drive
Suite 302
Latham, NY 12110
9