Ex Parte Gergic et al

Board of Patent Appeals and Interferences

May 19, 2008

10007084 (B.P.A.I. May. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAROSLAV GERGIC, RAFAH A. HOSN, JAN KLEINDIENST,
STEPHANE H. MAES, THIRUVILWAMALAI V. RAMAN,
JAN SEDIVY, and LADISLAV SEREDI
____________________

Appeal 2007-3621
Application 10/007,084
Technology Center 2100
____________________

Decided: May 19, 2008
____________________

Before ALLEN R. MACDONALD, JEAN R. HOMERE, and CAROLYN
D. THOMAS, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. §§ 6(b) and 134(a) from a final
rejection of claims 1-8, 10-24, and 26-34.
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Claims 1, 28, and 33 are exemplary:

1. A computer-implemented method for authoring a speech
application, comprising the steps of:

creating one or more reusable VoiceXML dialog components;

creating an associated parameter object for each of the reusable
VoiceXML dialog components; and

creating a VoiceXML document comprising code for invoking
a reusable VoiceXML dialog component and code for configuring the
invoked reusable VoiceXML dialog component using an associated
parameter object,

wherein the step of creating a reusable VoiceXML dialog
component comprises creating a re-entrant reusable VoiceXML dialog
component that allow reusable VoiceXML dialog components to be
one of initiated, interrupted, inspected, or resumed with a partially
filled result object or state object.1

28. A computer-implemented method for implementing a speech
application, comprising the steps of:

receiving and parsing a VoiceXML document;

invoking a reusable VoiceXML dialog components using a
subdialog element;

instantiating an associated parameter object for configuring the
invoked reusable VoiceXML document; and

1 In our analysis, we refer to this step as the “creating step.”
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dynamically compiling a grammar for the invoked reusable
VoiceXML dialog component. 2

33. A server-side speech application server, comprising:

a VoiceXML page generation engine for dynamically building a
VoiceXML page;

a first database comprising one or more server-side reusable
VoiceXML dialog components that are accessible by the VoiceXML
page generation engine for generating an intermediate VoiceXML
page;

a second database comprising backend data that is accessible by
the VoiceXML page generator to insert data in the intermediate
VoiceXML page to generate a VoiceXML page that is served to a
requesting client.

The Examiner relies upon the following evidence in rejecting the
claims on appeal:
Sorsa US 6,424,945 B1 Jul. 23, 2002
(filed Dec. 15, 1999)
Dodrill3 US 6,490,564 B1 Dec. 3, 2002
(filed Feb. 9, 2000)
Dodrill4 US 6,578,000 B1 Jun. 10, 2003
(filed Apr. 28, 2000)

2 In our analysis, we refer to this step as the “compiling step.”
3 In our analysis, we refer to this reference as “Dodrill ‘564.”
4 In our analysis, we refer to this reference as “Dodrill ‘000.”
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Voice Extensible Markup Language (VoiceXML) version 1.0, w3c
Note 05, May 2000.5

Claims 1-8, 10-12, and 33-34 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over VXML and Dodrill ‘000.6
Claims 13-24 and 26-32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over VXML, Sorsa, and Dodrill ‘564.7
We affirm-in-part.
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
VXML
1. VXML teaches reusable subdialogs. (Sections 3.1 and 14.4.)
2. VXML teaches that a document calls a subdialog and that the
document resumes operation following completion of the subdialog.
(Id.)
3. VXML teaches that VoiceXML is a type of XML schema. (Section
2.4.)
4. VXML teaches use of the Java format by teaching use of Java Speech
Grammar Format (JSGF). (Appendix D.)

5 In our analysis, we refer to this reference as “VXML.”
6 In our analysis, we refer to the combination of VXML and Dodrill ‘000 as
the “first combination.”
7 In our analysis, we refer to the combination of VXML, Sorsa, and Dodrill
‘564 as the “second combination.”
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Dodrill ‘000
5. Dodrill ‘000 teaches that an application server creates, modifies, and
stores XML documents for later execution. (Col. 7, ll. 40-67.)
Dodrill ‘564
6. Dodrill ‘564 teaches runtime execution of an extensible markup
language (XML). (Col. 5, l. 60 - col. 6, l. 3.)
7. Dodrill ‘564 teaches that using XML document development tools are
preferable to development environments that require compiling
because tools can be developed without a user having programming
language experience. (Id.)
8. Dodrill ‘564 teaches that a server interacts with a thin-client that uses
a Java applet. (Col. 9, ll. 1-11.)
PRINCIPLES OF LAW
Appellants have 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).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’”

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

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ANALYSIS
Claim 1
The Examiner concludes that the first combination renders claim 1
obvious. (Ans. 3-5.) Appellants allege that the Examiner erred in
concluding that the first combination renders claim 1 obvious because the
combination fails to teach the creating step. (App. Br. 9-11.) Thus, the issue
is whether Appellants have shown that the Examiner erred by finding that
the first combination teaches the creating step.

Creating step
Appellants allege that the first combination fails to teach the creating
step because none of the references in the first combination teaches a re-
entrant object functionality comprising “a re-entrant reusable VoiceXML
dialog component that allow reusable VoiceXML dialog components to be
one of initiated, interrupted, inspected, or resumed with a partially filled
result object or state object.” (App. Br. 9-11.)
We begin our analysis by construing the re-entrant object
functionality. Appellants’ Specification states that a “re-entrant object or
subdialog” supports launch with a partially filled state. (Spec. 53:20-21.)
Appellants’ Specification does not explicitly define “partially filled state,”
but gives an example of an object resumed with a partially filled state as able
to continue to collect the missing members of its result object. (Spec. 54:20-
55:2.) Appellants’ Specification states that a “result object may comprise a
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description of the full relevant internal state of the object (rather than just the
final return values).” (Spec. 54:5-6.) Accordingly, we broadly but
reasonably construe the re-entrant object functionality to involve allowing
resuming collection of missing members of a result object for which some
members have been collected based on an internal state (rather than final
result) of the result object.
For the following reasons, we conclude that Appellants have shown
that the Examiner erred in finding that the first combination teaches or
suggests the re-entrant object functionality of the creating step. VXML
teaches that a document calls a subdialog and that the document resumes
operation following completion of the subdialog. (FF 2.) However, we find
that VXML fails to teach or suggest that the resumed calling document is
able to collect missing data of the subdialog and that an internal state of the
subdialog is provided, rather than a final result from the subdialog. Dodrill
‘000 teaches creating or modifying XML documents and storing the XML
documents for later execution. (FF 5.) Dodrill ‘000 does not teach that the
missing members of XML document can be determined using the internal
state of the XML document. Thus, we conclude that Appellants have shown
that the Examiner erred in finding that the first combination teaches or
suggests the re-entrant object functionality of the creating step. Therefore,
we conclude that Appellants have shown that the Examiner erred in
concluding that the first combination renders claim 1 obvious.

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Claim 13
The Examiner concludes that the second combination renders claim
13 obvious.8 (Ans. 9-11.) Appellants allege that neither VXML nor Sorsa
teach a re-entrant reusable Voice XML dialog component of claim 13.
(App. Br. 14.) Thus, the issue is whether Appellants have shown that the
Examiner erred by finding that the second combination teaches or suggests a
re-entrant reusable Voice XML dialog component of claim 13.
We construe the re-entrant reusable Voice XML dialog component of
claim 13 in the same manner as we construed the re-entrant object
functionality of claim 1. For the same reasons presented supra with regard
to claim 1, we find that VXML does not teach or suggest the re-entrant
reusable Voice XML dialog component. The Examiner does not rely on
Dodrill ‘564 or Sorsa to teach or suggest re-entrant reusable Voice XML
dialog components. Thus, we find that the second combination does not
teach or suggest the re-entrant reusable Voice XML dialog component.
Therefore, we conclude that Appellants have shown that the Examiner
erred in concluding that the teachings and suggestions of the second
combination renders claim 13 obvious.

8 We note that the Examiner refers to portions of Dodrill ‘000 (col. 7,
ll. 45-67) in the rejection of claim 13 (Ans. 10) but does not indicate
reliance on Dodrill ‘000 in a summary of the rejection of claim 13 (Ans. 9).
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Claims 28 and 32
The Examiner concludes that the second combination renders claims
28 and 32 obvious. (Ans. 14-19.) Appellants allege that the Examiner erred
in concluding that the second combination renders claims 28 and 32 obvious
because the second combination fails to teach the compiling step of both
claims 28 and 32. (App. Br. 14-15.) Thus, the issue is whether Appellants
have shown that the Examiner erred by finding that the second combination
teaches the compiling step.
The Examiner construes the compiling step to require compiling at the
moment of execution without a preprocessing compilation that is later
rendered as an executable and finds that Dodrill ‘564 teaches the compiling
step by teaching execution by an application server in a runtime
environment. (Ans. 14-18 and 23-24.)
We begin our analysis by construing the compiling step. Appellants
provide no explicit definition of dynamic compiling grammar but provide
examples that describe building grammar on the fly (Spec. 26:28-32) and
use of a compiler (Spec. 32:5-12). Accordingly, we substantially agree with
the Examiner’s construction of the compiling step (Ans. 14-18 and 23-24)
and broadly but reasonably construe the compiling step to involve compiling
grammar when grammar is to be executed.
Dodrill ‘564 teaches runtime execution of an extensible markup
language (XML). (FF 6.) Dodrill ‘564 teaches that using XML document
development tools are preferable to development environments that require
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compiling because tools can be developed without a user having
programming language experience. (FF 7.) We find that Dodrill ‘564’s
teaching of runtime execution of a markup language without a user
compiling an application does not teach or suggest compiling grammar when
grammar is to be used. The Examiner’s reliance on Dodrill ‘564’s teaching
of avoiding using languages that require compiling as a basis for teaching
runtime compiling is misplaced (Ans. 15-18 and 24) because we find that
Dodrill ‘564’s teaching of avoiding using languages that require compiling
suggests using languages that do not require programming skill rather than
teaching runtime compiling. The Examiner does not rely on VXML or
Sorsa to teach or suggest the compiling step. Thus, we find that the second
combination does not teach the compiling step.
Therefore, we conclude that Appellants have shown that the Examiner
erred in concluding that the second combination renders claims 28 and 32
obvious.
Claim 33
The Examiner concludes that the first combination renders claim 33
obvious. (Ans. 7, 8, and 21.) In particular, the Examiner finds that Dodrill
‘000 teaches a first database comprising “one or more server-side reusable
VoiceXML dialog components that are accessible by the VoiceXML page
generation engine for generating an intermediate VoiceXML page.” (Id.)
Appellants do not argue that the Examiner erred by combining the teachings
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of VXML and Dodrill ‘000, but argue that the first combination fails to
teach or suggest the first data base. (App. Br. 11-12.)
For the following reasons, we agree with the Examiner and find that
the first combination teaches the first data base. Dodrill ‘000 teaches that an
application server modifies and stores XML documents for later execution.
(FF 5.) We find that Dodrill ‘000 teaches storing server accessible XML
documents. VXML teaches reusable VoiceXML subdialogs. (FF 1.)
VXML teaches that VoiceXML is a type of XML. (FF 3.) We find proper a
substitution of VoiceXML subdialogs in place of XML documents. See
KSR, 127 S. Ct. at 1740 (citing Sakraida, 425 U.S. 273, 282). Accordingly,
we find that the first combination teaches that Dodrill ‘000’s application
server accesses and modifies stored VoiceXML subdialogs, instead of XML
documents. We find that Dodrill ‘000’s application server accessing and
modifying stored VoiceXML subdialogs teaches a VoiceXML page
generation engine accessing VoiceXML dialog components and generating
an intermediate VoiceXML page. Thus, we find that the first combination
teaches the first data base.
Therefore, we conclude that Appellants have not shown that the
Examiner erred in concluding that the first combination renders claim 33
obvious.
Claim 34
The Examiner concludes that the first combination renders claim 34
obvious. (Ans. 9 and 22.) In particular, the Examiner finds that VXML
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teaches use of Java with VoiceXML grammar elements and thus teaches that
a reusable VoiceXML dialog component comprises Java beans and a Voice
XML page generation engine comprises Java Server Page (JSP) engine.
(Id.) Appellants argue that VXML’s teaching of Java Speech Grammar
Format (JSGF) grammars fails to teach use of the beans and JSP framework.
(App. Br. 13.)
VXML teaches use of the Java format by teaching use of JSGF. (FF
4.) Dodrill ‘564 teaches that a server interacts with a thin-client that uses a
Java applet. (FF 8.) We agree with the Examiner that use of Java was well
known at the time of the invention (Ans. 9 and 22). Accordingly, at the time
of the invention, the use of Java Server Pages engine for the Voice XML
page generation engine and reusable Java beans for VoiceXML dialog
components were choices well within the grasp of one or ordinary skill in
the art and therefore obvious design choices. See KSR, 127 S. Ct. at 1740
(citing Sakraida, 425 U.S. 273, 282). Therefore, we conclude that
Appellants have not shown that the Examiner erred in concluding that the
first combination renders claim 34 obvious.
Other Claims
Appellants group dependent claims 2-8, 10-12, 14-24, 26, 27, and 29-
31 with their base independent claims. (App. Br. 9.) Accordingly,
Appellants have shown that the Examiner erred in concluding that (i) claims
2-8 and 10-12 are obvious over the teachings and suggestions of the first
combination for the same reasons presented with regard to independent
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claim 1; (ii) claims 14-24, 26, and 27 are obvious over the teachings and
suggestions of the second combination for the same reasons presented with
regard to independent claim 13; and (iii) claims 29-31 are obvious over the
teachings and suggestions of the second combination for the same reasons
presented with regard to independent claim 28.
CONCLUSIONS OF LAW
We conclude that:
(1) On the record, Appellants have shown that the Examiner erred in
concluding that claims 1-8 and 10-12 are unpatentable under 35 U.S.C.
§ 103(a) over VXML and Dodrill ‘000;
(2) On the record, Appellants have shown that the Examiner erred in
concluding that claims 13-24 and 26-32 are unpatentable under 35 U.S.C.
§ 103(a) over VXML, Sorsa, and Dodrill ‘564;
(3) Appellants have not shown that the Examiner erred in concluding
that claims 33 and 34 are unpatentable under 35 U.S.C. § 103(a) over
VXML and Dodrill ‘000;
(4) On the record, claims 1-8, 10-24, and 26-32 have not been shown
to be unpatentable; and
(5) Claims 33 and 34 are unpatentable.
DECISION
The Examiner’s rejections of claims 1-8, 10-24, and 26-32 are
reversed.
The Examiner’s rejections of claims 33 and 34 are affirmed.
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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-IN-PART

rwk

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