09870223 (B.P.A.I. Jul. 12, 2012)

Ex Parte Galli

Board of Patent Appeals and InterferencesJul 12, 2012

09870223 (B.P.A.I. Jul. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 09/870,223 05/30/2001 Doreen Lynn Galli RSW920010033US1 8092 30449 7590 07/13/2012 SCHMEISER, OLSEN & WATTS 22 CENTURY HILL DRIVE SUITE 302 LATHAM, NY 12110 EXAMINER KANG, INSUN ART UNIT PAPER NUMBER 2198 MAIL DATE DELIVERY MODE 07/13/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte DORREEN LYNN GALLI ____________________ Appeal 2010-007780 Application 09/870,223 Technology Center 2100 ____________________ Before ALLEN R. MacDONALD, JEFFREY S. SMITH and KALYAN K. DESHPANDE, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007780 Application 09/870,223 2 STATEMENT OF CASE Introduction Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims 9, 14, 15, 17-20, and 22-25. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claim Exemplary claim 9 under appeal reads as follows (formatting added): 1. 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; [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 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; Appeal 2010-007780 Application 09/870,223 3 [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. Rejections on Appeal 1. The Examiner rejected claims 9 and 18-20 as being unpatentable under 35 U.S.C. § 102(b) as being anticipated by Osder (US 5,493,606). 2. The Examiner rejected claims 14, 15, 17, and 22-25 as being unpatentable under 35 U.S.C. § 103(a) over Osder. Appellant’s Contentions 1. Appellant contends that the Examiner erred in rejecting claim 9 because “the „consisting of‟ language in the claimed first process limits the steps of the first process to the four recited steps of reading, passing, performing, and speaking.” (App. Br. 14). 2. Appellant contends that the Examiner erred in rejecting claim 9 because “Osder‟s first process includes an „assembling‟ step that is not within the scope of the four steps (reading, passing, performing, speaking) recited for claim 9.” (App. Br. 14). 3. Appellant contends that the Examiner erred in rejecting claim 9 because: Osder does not teach omission of the preceding "assembling step" of assembling the runtime voice prompt by inserting the dynamic data into the template having the static elements and the missing data. Therefore, by being required to perform said "assembling step" which is not a step in the Appeal 2010-007780 Application 09/870,223 4 claimed first process of claim 9, Osder does not teach performing the claimed first process consisting of the four recited steps (reading, passing, performing, speaking). Accordingly, Osder does not anticipate claim 9. (App. Br. 15). Issues on Appeal Did the Examiner err in rejecting claim 9 as anticipated because the „consisting of‟ language in the claim 9 limits the steps of the first process, and Osder fails to describe this limited process? ANALYSIS We agree with the Appellant‟s above contention 1. We do not agree with the Examiner‟s interpretation of MPEP 2111.03. (Ans. 16). Rather we agree with Appellant. As to above contentions 2 and 3, we agree with Appellant. NEW GROUND OF REJECTION We enter a new ground of rejection under 35 U.S.C. § 112, first paragraph, for claims 9, 14, 15, 17-20, and 22-25 as failing to satisfy the written description requirement. Appellant‟s disclosure, as originally filed, does not convey to an ordinarily skilled artisan that Appellant had possession of the now claimed invention. As argued by Appellant, the “consisting of” language of claim 9 requires the omission of any steps from the “first process” except for the four recited steps of reading, passing, performing, and speaking. The same is true for the “second process” of claim 18. Such an “omission” (i.e., Appeal 2010-007780 Application 09/870,223 5 negative limitation) must be supported in Appellant‟s disclosure as originally filed. We find no such support. Rather, claim 9 as amended and claim 18, added by amendment, recite “consisting of” which violates the written description requirement of 35 U.S.C. § 112, ¶ 1, because the mere absence of a positive recitation in the originally filed description is not basis for an exclusion, i.e., a negative limitation. See MPEP 2173.05(i). 37 C.F.R. § 41.50(b) This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . CONCLUSIONS Appellant has established that the Examiner erred in rejecting claims 9, 14, 15, 17-20, and 22-25 as being unpatentable under 35 U.S.C. § 103(a). Appeal 2010-007780 Application 09/870,223 6 DECISION 1 The Examiner‟s rejections of claims 9, 14, 15, 17-20, and 22-25 are reversed. Claim 9, 14, 15, 17-20, and 22-25 are rejected under 35 U.S.C. § 112, first paragraph as lacking a proper written description. 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). REVERSED 37 C.F.R. § 41.50(b) ELD 1 We have decided the appeal before us. However, should further prosecution of these claims result in removal of the unsupported claim limitations discussed in the above new ground of rejection, we instruct the Examiner to reinstate rejections based on the prior art as we do not find any of Appellant‟s remaining appeal arguments to be persuasive of Examiner error.