Ex Parte Galli

Patent Trial and Appeal Board

Dec 8, 2014

09870223 (P.T.A.B. Dec. 8, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DOREEN LYNN GALLI
____________________

Appeal 2014-000213
Application 09/870,223
Technology Center 2100
____________________

Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JEFFREY S. SMITH, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 9, 14, 15, 17–20, and 22–25. We have jurisdiction under 35 U.S.C.
§ 6(b).

Exemplary Claims
Exemplary claims 9, 14, and 17 under appeal reads as follows
(emphasis and formatting added):
9. A method for selecting a voice prompt of an interactive
voice response system that operates according to the compiled code of
an application program that provides call flow instructions for the
interactive voice response system, the method comprising the steps of:
[(a)] receiving commands from a telephone caller;
[(b)] responsive to said received commands, determining that
the voice prompt is needed;
[(c)] responsive to said determining that voice prompt is
needed, providing a variable identified with a function of the voice
prompt;
[(d)] assigning a first value to the variable by accessing an
assignment table that is held outside the compiled code of the
application program;
[(e)] identifying a first database record that includes a digitally
encoded voice prompt consisting of a first bit pattern that consists of a
first sequence of bits, wherein the bits of the first sequence of bits are
stored contiguously in the identified first database record, and wherein
said identifying the first database record is implemented through use
of the first value which selects the first database record and specifies
the first bit pattern;
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[(f)] performing a first process that generates a first complete
message from the identified first database record and speaks the
generated first complete message to the telephone caller, said
performing the first process consisting essentially of the steps of:
[(i)] reading the identified first database record;
[(ii)] passing the first bit pattern from the first database
record that had been read to an audio apparatus;
[(iii)] performing, by the audio apparatus, a digital-to-
analog conversion of the first bit pattern that had been passed to
the audio apparatus; and
[(iv)] speaking, by the audio apparatus, the first complete
message to the telephone caller, said first complete message
consisting of the digital-to-analog converted first bit pattern.

14. The method of claim 9, wherein the voice prompt
pertaining to the first bit pattern in the first database record consists
of music, and wherein said speaking the first complete message
comprises speaking the first complete message consisting of the
digital-to-analog converted first bit pattern as said music.

17. The method of claim 9, wherein the voice prompt
pertaining to the first bit pattern in the first database record consists
of a sequence of beeps, and wherein said speaking the first complete
message comprises speaking the first complete message consisting of
the digital-to analog converted first bit pattern as said sequence of
beeps.

Rejections on Appeal
1. The Examiner rejected claims 9, 14, 15, 17–20, and 22–25
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
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2. The Examiner rejected claims 9 and 18–20 under
35 U.S.C. § 102(b) as being anticipated by Osder (US 5,493,606, issued Feb.
20, 1996).1
3. The Examiner rejected dependent claims 14, 15, 17, and 22–25
as being unpatentable under 35 U.S.C. § 103(a) over Osder. 2
Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claims
9, 14, 15, 17–20, and 22–25, under 35 U.S.C. § 112, first paragraph, because
the Examiner argued:
The exclusion of additional steps that would materially affect
the basic and novel characteristic(s) of the invention must be
supported in the original disclosure.
(Br. 5).
2. Additionally, Appellant argues that the Examiner erred in
rejecting claims 9, 14, 15, 17–20, and 22–25, under 35 U.S.C. § 112, first
paragraph, because the Examiner argued that Appellant was required to
explicitly define “what constitutes a material change.” (Br. 5–6).

1 Separate patentability is not argued for claims 18–20. Rather, Appellant
merely repeats for claim 18 the arguments directed to claim 9. While using
an argument for patentability of a first claim as a cut-and-paste argument for
a second claim might outwardly appear to be a separate argument for
patentability of the second claim, such a cut-and-paste argument is not in
fact an argument for “separate patentability.” Except for our ultimate
decision, these claims are not discussed further herein.
2 Separate patentability is not argued for claims 15 and 22–25. Rather, the
§ 103 rejection of these claims turns on our decision as to the underlying
§ 102 rejection. Except for our ultimate decision, these claims are not
further addressed herein.
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3. Appellant contends that the Examiner erred in rejecting claim 9,
under 35 U.S.C. § 102(b) because a prior decision of this Board as to a
different claim held that “consisting of” limited that different claim to
excluding the required “assembling” step of Osder. Particularly, Appellant
contents:
Therefore, Applicants deduce from the Decision on Appeal
mailed 07/13/2012, when applied to “consisting essentially of”
instead of “consisting of” in claim 9, that Osder does not
anticipate claim 9 if the “assembling step” in Osder materially
affects the basic and novel characteristics of the claimed
invention, in which case the “assembling step” of Osder would
not be within the scope of claim 9 and thus would be excluded
from claim 9. Importantly, the Decision on Appeal mailed
07/13/2012 holds that the “assembling step” is required to be
performed in Osder.
(Br. 9)(Appellant’s emphasis omitted)(Panel emphasis added).
4. Further, Appellant contends that the Examiner erred in rejecting
claim 9, under 35 U.S.C. § 102(b) because:
[P]erforming the first process of claim 9 with inclusion of
Osder's “assembling step” requires the spoken voice prompt to
include both static and dynamic elements, which is materially
outside the basic and novel characteristic of the claimed
invention.
(Br. 10)(Emphasis added).
5. Further, Appellant contends that the Examiner erred in rejecting
claim 9, under 35 U.S.C. § 102(b) because:
The claimed invention does not contemplate spoken
voice prompts having dynamic elements. All referrals in the
specification to voice prompts are to pre-recorded static
messages (e.g., specification, page 6, lines 14-17) which may
be accessed in their entirety by a value of a single metalanguage
variable such as “m.greet=3” (specification, page 8, lines 6-8).
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(Br. 10)(Emphasis added).
6. Further, Appellant contends that the Examiner erred in rejecting
claim 9, under 35 U.S.C. § 102(b) because:
In addition, the scope of the first process in claim 9
cannot include dynamic elements in the voice prompt, because
there is no enablement in Applicants’s [sic] specification for
including dynamic elements in the spoken voice prompt.
(Br. 10)(Emphasis omitted).
7. Appellant contends that the Examiner erred in rejecting claim
14, under 35 U.S.C. § 103(a) because:
Appellant notes that the Examiner has not cited any prior art
reference that discloses the preceding feature of claim 14 [,i.e.,
“wherein the voice prompt pertaining to the first bit pattern in
the first database record consists of music, and wherein said
speaking the first message comprises speaking the first message
consisting of the digital-to-analog converted first bit pattern as
said music”]. As discussed supra, a claim cannot be rejected on
a ground of obviousness if an element of the claim is unknown
in the prior art. In re Shetty, 566 F.2d 81, 86, 195 USPQ 753,
756-57 (C.C.P.A. 1977) (“Obviousness cannot be predicated on
what is unknown”). Appellant asserts that it is not obvious to
modify Osder by incorporating into Osder a claimed feature
that is unknown in the prior art.
(Br. 18)(Appellant’s emphasis omitted)(Panel emphasis added).
8. Appellant contends that the Examiner erred in rejecting claim
17, under 35 U.S.C. § 103(a) because:
Appellant notes that the Examiner has not cited any prior art
reference that discloses the preceding feature of claim 17 [,i.e.,
“wherein the voice prompt pertaining to the first bit pattern in
the first database record consists of a sequence of beeps, and
wherein said speaking the first message comprises speaking the
first message consisting of the digital-to-analog converted first
bit pattern as said sequence of beeps”]. As discussed supra, a
claim cannot be rejected on a ground of obviousness if an
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element of the claim is unknown in the prior art. In re Shetty,
566 F.2d 81, 86, 195 USPQ 753, 756-57 (C.C.P.A. 1977)
(“Obviousness cannot be predicated on what is unknown”).
Appellant asserts that it is not obvious to modify Osder by
incorporating into Osder a claimed feature that is unknown in
the prior art.
(Br. 20)(Appellant’s emphasis omitted) (Panel emphasis added).

Issue on Appeal
Did the Examiner err in rejecting claims 9, 14, 15, 17–20, and 22–25,
as failing to comply with the written description requirement because the
invention which is now claimed, with all its claimed limitations, is described
in the Specification as filed?
Did the Examiner err in rejecting claim 9 as anticipated because
Osder’s “assembling” step materially affects the basic and novel properties
of the claimed invention?
Did the Examiner err in rejecting claims 14 and 17 because in In re
Shetty, 566 F.2d 81, 86 (CCPA 1977)(“Obviousness cannot be predicated on
what is unknown.”), supersedes the standard set forth by the Court in KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007)?

PRINCIPLES OF LAW

“Consisting essentially of” is a transition phrase commonly
used to signal a partially open claim in a patent. Typically,
“consisting essentially of” precedes a list of ingredients in a
composition claim or a series of steps in a process claim. By
using the term “consisting essentially of,” the drafter signals
that the invention necessarily includes the listed ingredients and
is open to unlisted ingredients that do not materially affect the
basic and novel properties of the invention.
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PPG Industries Inc. v. Guardian Industries Corp., 156 F.3d 1351, 1354
(Fed. Cir. 1998).
To satisfy the written description requirement, the inventor “must also
convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention.” Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). In describing the
claimed invention, there is no requirement that the wording be identical to
that used in the specification as long as there is sufficient disclosure to show
one of skill in the art that the inventor “invented what is claimed.” Union
Oil Co. of California v. Atlantic Richfield Co., 208 F.3d 989, 997 (Fed. Cir.
2000).
An applicant complies with the written description requirement “by
describing the invention, with all its claimed limitations.” Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contention (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellant’s conclusions.
As to Appellant’s above contention 1, we disagree that the Examiner
has erred by stating that there must be support in the Specification for any
negative claim limitation such as the exclusion of additional steps that would
materially affect the basic and novel characteristic(s) of the invention.
Beyond this conclusory position, we do not find where Appellant explains
their reasoning. Notwithstanding that, we address this issue.
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“Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation.”
Santarus, Inc. v Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012).
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc) (“‘[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
(Citation omitted)).
The question is not whether the Specification provides a reason to
have made the invention which is now claimed, but whether the invention,
with all its claimed limitations, is described in it. See Lockwood, 107 F.3d at
1572. In the Specification, Appellant explicitly states:
The foregoing description is illustrative rather than limiting,
however, and the present invention is limited only by the
following claims [(the claims as filed)].
(Spec. 9)(emphasis added). Appellant’s explicit statement of the expansive
nature of the invention should be taken at face value. To find otherwise,
would improperly extend the scope of the invention beyond what was
actually described as in the Specification and claims as filed. Appellant’s
attempt to now add particular negative limitations to the claims is not
supported by the application as filed.
As to Appellant’s above contention 2, we disagree that the Examiner
has erred in rejecting the claims merely because the Examiner overstates that
Appellant was required to explicitly define what constitutes a material
change. We agree with Appellant that they do not need to list all things that
would constitute a material change. However, that said, Appellant is still
required to provide support for all claim limitations in the original
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disclosure. As discussed above, we agree with the Examiner that such
support is lacking.
As to Appellant’s above contention 3, we disagree. We find the
“consisting essentially of” issue before us wholly unrelated to the Board’s
prior decision as to a different claim which held that “consisting of” limited
that different claim to excluding the required “assembling” step of Osder.
As to Appellant’s above contention 4, we disagree. First, Appellant is
mistaken that “Osder’s ‘assembling step’ requires the spoken voice prompt
to include both static and dynamic elements.” Although Osder’s description
and claims are so directed to both static and dynamic elements, Osder’s
Figure 2 explicitly shows a voice prompt (PROMPT PN002) with only static
elements. Therefore, although an “assembling” step is required in Osder
(even in the case of only static elements), we see no basis to conclude that
“assembling” both dynamic and static elements is required.
Second, even if the “assembling step” requires the spoken voice
prompt to include both static and dynamic elements, Appellant fails to
support their argument by showing that the introduction of such additional
steps or components would materially change the characteristics of
applicant’s invention. Appellant explicitly agreed that they have this
burden:
The Examiner further argues (office action, pages 2-3):
“If an applicant contends that additional steps or materials in
the prior art are excluded by the recitation of “consisting
essentially of,” applicant has the burden of showing that the
introduction of such additional steps or components would
materially change the characteristics of applicant’s invention. In
re De Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964). See
also Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (Bd. Pat.
App. & Inter. 1989).”
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In response, Appellant agrees with the preceding
statement by the Examiner.
(Br. 6).
As to Appellant’s above contention 5, we disagree. First, it is simply
not relevant that the claimed invention does not contemplate dynamic
effects. Second, Appellant cannot show error by merely reciting the
particulars of Appellant’s Specification without explaining how the
introduction of additional steps or components would materially change the
characteristics of Appellant’s invention. That there may be additional steps
or repeated steps in the prior art does not in and of itself yield a material
change to Appellant’s claimed steps. Appellant essentially ignores that
Appellant has the burden of showing that the introduction of such additional
steps would materially change the characteristics of applicant’s invention.
As to Appellant’s above contention 6, we disagree. It is simply not
relevant that Appellant’s disclosure does not provide enablement for Osder’s
dynamic elements.
As to Appellant’s above contentions 7 and 8, we disagree with the
Appellant’s arguments. First, Appellant misstates the law in contending that
In re Shetty, 566 F.2d at 86 (“Obviousness cannot be predicated on what is
unknown.”), supersedes the standard set forth by the Court in KSR. We
conclude that Appellant’s only citation to KSR is intended to mislead.
KSR Int'l Co. v. Teleflex Inc., 82 USPQ2d 1385, 1396 (2007)
(“When it first established the requirement of demonstrating a
teaching, suggestion, or motivation to combine known
elements in order to show that the combination is obvious, the
Court of Customs and Patent Appeals captured a helpful
insight. See Application of Bergel, 292 F. 2d 955, 956-957
(1961)”) (emphasis added).
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(Br. 16). However Appellant fails to note the Court’s modifying statement
that: “Helpful insights, however, need not become rigid and mandatory
formulas . . . .” KSR, 550 U.S. at 419. Further, Appellant does not cite the
Court’s explicit holding that:
As our precedents make clear, however, the analysis need not
seek out precise teachings directed to the specific subject matter
of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in
the art would employ.
KSR, 550 U.S. at 418.
Second, Osder explicitly teaches that providing a beep or tone is
known. (Osder 28:5). Providing plural beeps (a sequence of beeps) or
plural tones (music) are obvious as mere duplication of what is known in the
art. Cf. In re Harza, 274 F.2d 669, 671 (CCPA 1960)(“It is well settled that
the mere duplication of parts has no patentable significance unless a new and
unexpected result is produced.”).

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 9 and 18–20 as
being anticipated under 35 U.S.C. § 102(b).
(2) The Examiner has not erred in rejecting claims 14, 15, 17, and
22–25 as being unpatentable under 35 U.S.C. § 103(a).
(3) The Examiner has not erred in rejecting claims 9, 14, 15, 17–20,
and 22–25 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
(4) Claims 9, 14, 15, 17–20, and 22–25 are not patentable.
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DECISION
The Examiner’s rejection under § 112, first paragraph, of claims 9, 14,
15, 17–20, and 22–25 is affirmed.
The Examiner’s rejections under 35 U.S.C. §§ 102 and 103 of claims
9, 14, 15, 17–20, and 22–25 are affirmed.

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).

AFFIRMED

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