Ex Parte GAUSMAN et al

Patent Trial and Appeal Board

Jan 16, 2015

12177638 (P.T.A.B. Jan. 16, 2015)

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.
12/177,638 07/22/2008 Paul GAUSMAN 2007-1292 4802
83224 7590 01/20/2015
AT&T LEGAL DEPARTMENT - NDQ
ATTN: PATENT DOCKETING
ONE AT & T WAY, ROOM 2A-207
BEDMINSTER, NJ 07921
EXAMINER
LY, ANH
ART UNIT PAPER NUMBER
2162
MAIL DATE DELIVERY MODE
01/20/2015 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAUL GAUSMAN and DAVID C. GIBBON
____________________

Appeal 2012-008621
Application 12/177,638
Technology Center 2100
____________________

Before JEAN R. HOMERE, JASON V. MORGAN, and
WILLIAM M. FINK, Administrative Patent Judges.

FINK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–30. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to annotating media content. (Spec.,
Abstract.)2 More specifically, Appellants’ invention is directed at systems

1 The real party in interest is AT&T Intellectual Property I, L.P. (App. Br.
3.)
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and methods for extracting metadata from an audio annotation of media
content. (Id.)
Claims on Appeal
Claims 1, 11, and 21 are the independent claims on appeal. Claim 1 is
illustrative of Appellants’ invention and is reproduced below with disputed
limitations emphasized:
1. A method comprising:

receiving a recorded media content;

receiving at least one audio annotation about the
recorded media content;

extracting via a processor metadata from the at
least one audio annotation; and

associating at least part of the metadata with the
recorded media content.

Evidence Considered
Buchner US 2002/0069063 A1 June 6, 2002
Azara US 2005/0182625 A1 Aug. 18, 2005
King US 2006/0053097 A1 Mar. 9, 2006
Davidson3 US 2009/0044235 A1 Feb. 12, 2009

2 Our decision refers to Appellants’ Appeal Brief filed December 29, 2011
(“App. Br.”); the Examiner’s Answer mailed March 14, 2012 (“Ans.”);
Appellants’ Reply Brief filed May 14, 2012 (“Reply Br.”); and the original
Specification filed July 22, 2008 (“Spec.”).
3 Appellants argue the Davidson reference is not prior art because it “was
only available under 35 U.S.C. § 102(e) and not under 35 U.S.C. § 103(a).”
(App. Br. 5–6.) However, prior art under § 102(e) is prior art for purposes
of § 103(a). Hazeltine Research, Inc. v. Brenner, 382 U.S. 252, 253–56
(1965). Moreover, the Examiner correctly notes that Davidson is prior art as
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Graham US 7,812,986 B2 Oct. 12, 2010

Examiner’s Rejections
Claims 1–2, 11–12, and 21–22 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by King. (Ans. 4.)
Claims 3, 13, and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over King and Graham. (Ans. 9.)
Claims 4–6, 14–16, and 24–26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over King and Davidson. (Ans. 10.)
Claims 7–9, 17–19, and 27–29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over King and Azara. (Ans. 12.)
Claims 10, 20, and 30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over King and Buchner. (Ans. 14.)

Issues on Appeal
Based on Appellants’ arguments, the issues on appeal are:
I. Whether King discloses “extracting via a processor metadata from
the at least one audio annotation,” as required by claim 1, and
similar limitations of claims 11 and 21 (App. Br. 7–9);
II. Whether the Examiner properly combined King and Graham in
rejecting claims 3, 13, and 23 (App. Br. 9–11); and

of its provisional filing dates—August 7, 2007, and November 5, 2007—
which both predate Appellants’ application. Ans. 10–12; see In re
Giacomini, 612 F.3d 1380, 1384 (Fed. Cir. 2010). Although “[a]n important
limitation is that the provisional application must provide written description
support for the claimed invention” or subject matter relied upon in the
granted patent, Appellants here do not argue that limitation applies here. See
id. at 1383. Accordingly, we agree the Examiner properly relied on
Davidson as prior art under § 103(a).
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III. Whether the Examiner properly combined King and Buchner in
rejecting claims 10, 20, and 30 (App. Br. 11–12).

ANALYSIS
I. Claim 1
In rejecting independent claims 1, 11, and 21, the Examiner relies on
King as disclosing each of the claim limitations. (Ans. 4–7.)
Appellants dispute the Examiner’s findings. Specifically, Appellants
argue King does not disclose “extracting via a processor metadata from the
at least one audio annotation,” as required by claim 1. (App. Br. 7.)
According to Appellants, the Examiner errs by “apparently interpret[ing]
generic speech recognition as extracting metadata from at least one audio
annotation.” (Id. at 8.) Appellants contend the only place metadata is found
in King is in paragraph 267, which is not related to audio annotations as
found, for example, in paragraph 136. (Id. at 9.) Thus, Appellants conclude,
King does not disclose extracting metadata from an audio annotation. (Id.)
We are not persuaded by Appellants’ argument. As the Examiner
finds, King discloses “receiving at least one audio annotation about the first
recorded media (capturing voice or sound or audio annotation).” (Ans. 4
(citations omitted).) For example, a cited paragraph from King explains:

A user can make voice annotations to a document by
scanning a portion of text from the document and then making a
voice recording that is associated with the scanned text. . . .
After the verbal annotations are recorded, the system identifies
the document from which the text was scanned, locates the
scanned text within the document, and attaches the voice
annotation at that point.
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(King ¶ 500; see also id. ¶ 333.) We observe that Appellants do not dispute
King discloses the claim limitation requiring receiving an audio annotation
about the recorded media content.
Moreover, the Examiner also finds that metadata can be extracted
from the disclosed audio annotation because the system can convert the
voice annotation to text and attach the annotation as a “textual comment.”
(Ans. 17–18.) We also agree with this finding, which is supported by the
same cited paragraph that discloses attaching voice annotations. (King ¶ 500
(“In some embodiments, the system converts the speech to text and attaches
the annotation as a textual comment.”).) Thus, King discloses receiving an
audio annotation, converting this annotation to a textual comment, and
attaching it to a file. Consistent with the Examiner’s finding, such a textual
comment is within the scope of the recited “metadata.” Accordingly, we
agree the Examiner’s finding that King discloses “extracting via a processor
metadata from the at least one audio annotation,” as required by claim 1, to
be supported by the evidence of record.
Because we are not persuaded that King does not disclose the
limitations of claim 1, we sustain the Examiner’s rejection of independent
claim 1. With respect to independent claims 11 and 21,4 and claims 2, 12,
and 22, which depend directly from claims 1, 11, and 21, Appellants make
no separate patentability arguments. Accordingly, for the foregoing reasons
we sustain the rejection of these claims as well. Similarly, with respect to
claims 4–9, 14–19, and 24–29, rejected separately under 35 U.S.C. § 103(a),

4 Claims 11 and 21 contain limitations similar to the disputed extracting
metadata limitation of claim 1. (See App. Br. 15 (claim 11), 17 (claim 21).)
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Appellants make no separate, persuasive patentability arguments.
Accordingly, for the foregoing reasons we sustain the rejection of these
claims.

II. Claims 3, 13, and 23
In rejecting claims 3, 13, and 23, the Examiner relies on the
combination of King and Graham as teaching or suggesting “the at least one
audio annotation is a telephone conversation and the recorded media content
is captured via a telephone,” as required by claim 3, and similar limitations
of claims 13 and 23. (Ans. 9–10.)
In disputing the Examiner’s finding, Appellants argue the Examiner
erred by requiring Appellants to present a prima facie case for patentability
not found in the MPEP. (App. Br. 10.) Regardless, Appellants argue “[t]he
preponderance of the evidence is against one of skill in the art blending King
et al. with Graham et al. because King et al.’s metadata in paragraphs
[0266]–[0268] are explicitly defined as ‘printed related information.’” (Id.)
We are not persuaded by Appellants’ arguments. As an initial matter,
the Examiner satisfies the “initial burden of production by ‘adequately
explain[ing] the shortcomings it perceives so that the applicant is properly
notified and able to respond.’” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011) (quoting Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007)).
Once rebuttal evidence is presented by the applicant, “all the evidence must
be considered anew” to determine whether the prima facie case has been
rebutted. In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990).
Here, in rejecting claims 3, 13, and 23, the Examiner articulated
reasons for modifying the teachings of King with the teachings of Graham in
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support of a prima facie case of unpatentability. More specifically, the
Examiner finds one of ordinary skill would have been motivated to modify
the system of King to capture telephone conversations as disclosed in
Graham for the purpose of producing a mixed media document. (Ans. 9.)
Although King does involve printed documents, as Appellants argue, the
cited portions of King also disclose capturing documents in the form of an
audio file recorded from a microphone. (King ¶ 59.) Similarly, the cited
portions of Graham refer to a “mixed media reality” in which “office portal
120 may capture other office events, such as conversations (e.g., telephone
or in-office) that occur while paper documents are on a desktop, discussions
on the phone, and small meetings in the office.” (Graham, col. 9, ll. 11–46.)
Based on these findings, we find the Examiner’s rationale for combining
King and Graham supported by the evidence of record.
In reply, Appellants introduce a new “teach[ing] away” argument.
(Reply Br. 17.) In particular, Appellants argue that King “states that a
telephone ‘is likely to be suboptimal’ for capturing voice annotations and
further notes that ‘audio facilities may best be used to capture voice
annotations.’” (Id.) Although paragraph 438, cited by Appellants, states
that “[s]uch voice capture is likely to be suboptimal in many situations,
however, for example when there is substantial background noise, and
accurate voice recognition is a difficult task at the best of times,” we do not
agree this qualifying remark would lead a person of ordinary skill in a
divergent direction as would be necessary for teaching away. See Galderma
Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013).
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Because we are not persuaded that the teachings of King and Graham
are not properly combined, we sustain the Examiner’s rejection of claims 3,
13, and 23.

III. Claims 10, 20, and 30
In rejecting claims 10, 20, and 30, the Examiner relies on the
combination of King and Buchner as teaching or suggesting “metadata is
extracted using a grammar trained to identify metadata,” as required by the
claims. (Ans. 14–15.)
Appellants dispute the Examiner’s finding. Appellants argue that the
combination of Buchner and King would
result in using the grammar concepts from Buchner et al. in the
speech recognition processes of King et al. However, since the
reference to metadata in paragraphs [0267] states nothing with
respect to speech and is not connected to the audio files
gathered from user comments in paragraph [0136], it appears
that even if the references are combined they fail to disclose the
limitations of claims 10, 20, and 30.

(App. Br. 12.)
We are not persuaded by this argument, which is directed at alleged
shortcomings of King. However, as discussed supra, we find that King
discloses extracting metadata from an audio annotation using speech
recognition. Therefore, when combined with Buchner’s teaching of a
grammar learning function in the speech recognition process (see Buchner
¶¶ 31–33), we find the combination teaches or suggests “metadata is
extracted using a grammar trained to identify metadata,” as the claims
require. Accordingly, we sustain the Examiner’s rejection of claims 10, 20,
and 30.
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DECISION
We affirm the Examiner’s final rejection of claims 1–30.
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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