Ex Parte Guruparan

Board of Patent Appeals and Interferences

Jul 25, 2012

11184470 (B.P.A.I. Jul. 25, 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.
11/184,470 07/19/2005 Guru Corattur Guruparan 2002-157 / PU05 0210US 9439
54472 7590 07/25/2012
COATS & BENNETT/SONY ERICSSON
1400 CRESCENT GREEN
SUITE 300
CARY, NC 27518
EXAMINER
SERROU, ABDELALI
ART UNIT PAPER NUMBER
2626
MAIL DATE DELIVERY MODE
07/25/2012 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 GURU CORATTUR GURUPARAN
____________

Appeal 2010-003392
Application 11/184,470
Technology Center 2600
____________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003392
Application 11/184,470
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STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-30. The Appellant appeals
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Invention
This invention relates to "the field of wireless communication and in
particular to detecting and researching novel words or phrases by a mobile
terminal." (Spec. 2, ¶[0001]). Claims 1 and 16, reproduced below, are
illustrative of the claimed subject matter:
1. A method of automatically researching novel
words or phrases by a mobile terminal without user
intervention, comprising:
monitoring the acoustic environment of the mobile
terminal;
transcribing monitored speech using voice recognition
capability in the mobile terminal;
determining that transcribed speech is novel; and
accessing one or more information resources and
downloading information related to the novel speech.

16. A mobile terminal, comprising:
a transceiver operative to communicate data over a
wireless communication system;
an acoustic sensor operative to monitor the acoustic
environment of the mobile terminal;
means for transcribing monitored speech; and
a controller operative to determine that transcribed
speech is novel, and further operative to access one or more
Appeal 2010-003392
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information resources via the wireless communication system
and download information related to the determined novel
speech.
REJECTION
Claims 1-30 stand rejected under 35 U.S.C. § 103(a) over Colbath
(U.S. Patent No. 6,618,726 B1) and Levin (U.S. Patent Application Pub. No.
2004/0102957 A1).
GROUPING OF CLAIMS
Based on the Appellant's arguments, we decide the appeal of the
obviousness rejection of claims 1-30 on the basis of claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).
ANALYSIS
CLAIM 1 LIMITATION "SPEECH IS NOVEL"
Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested
"determining that transcribed speech is novel," within the meaning of
representative claim 1?
The Examiner finds:
As to claim 1, Colbath discloses . . . determining that
transcribed speech is novel (the system determines novel words
by monitoring acoustic signals by accepting user utterances and
processing them through the system, column 2 lines 5-10, after
accepting the utterance the system searches the word/term for a
match, . . . if a match is not found then the term is determined to
be a new, unusual, or different term and it accesses a more
broad scope of documents in order to recognize this word and
after recognizing the term, pertinent information is downloaded
to the system, column 2 lines 20-30).
(Ans. 3-4).
Appellant contends;
Appeal 2010-003392
Application 11/184,470
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A word or phrase that does not appear in a database of
known words and phrases is, by definition, "strikingly new,
unusual, or different," and hence novel. In stark contrast, a
word or phrase that is recognized as belonging to a
predetermined word group is not "strikingly new, unusual, or
different," and hence is not novel.
(App. Br. 4).
Appellant also contends:
Colbath processes recognized words and phrases; the claimed
invention processes novel words and phrases. If Colbath
recognizes words and phrases as a micro-domain identifier, it
searches that micro-domain. If not, the words "are input to a
[sic] identification module program where particular word
groups are recognized." col. 2, lines 22-24. The recognized
word groups are then passed to a search engine. In Colbath's
identification module, "[t]he key words are identified and other
words are dropped." col. 2, lines 27-28 (emphasis added).
Calling identified key words "novel," because they happen not
to be on a list of micro-domain identifiers, is nonsensical.
Colbath's identification module extracts specific information
from the stream not containing micro-domain identifiers - such
as "names of people, places, organizations and companies;
times; dates; percentages; and amounts of money." col. 2, lines
25-27. These words and phrases are not "novel," by any
reasonable interpretation of that term.
(Reply Br. 2-3).
The Examiner disagrees:
The claims also recite determining that transcribed speech is
novel, such as by running the recognized speech through a
database of known words and phrases and determining as
novel, those that do not match any known words or phrases, as
stated by applicant at page 2 of the Appeal Brief. For this
matter, Colbath teaches transcribing input speech (Abstract, and
col. 3, lines 25-43), and match the transcribed utterances to a
first search database . . . . If a match to a specific topic or
micro-domain is not found, this means that these keywords are
Appeal 2010-003392
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unusual, different, or novel to the searched micro-domains, and
a general search of the recognized words is performed where
the recognized words are input to an identification module
program where particular word groups are recognized (col. 2,
lines 20-46).
As per the paragraph of col. 2, lines 19-31, wherein said
"The keywords are identified and other words are dropped ... ".
This does not mean that novel words are dropped, as interpreted
by applicant. In contrary, the novel words are within the
keywords that will be passed to the search engine for extracting
related information, and providing it to the user. The words
that are dropped are words that are not useful to a search
engine, such as stop words such as "the" and "and", that are
ignored by search engines when processing search queries (see
col. 2, line 61 - col. 4, line 14, especially col. 3, lines 13-23).
(Ans. 9-10) (emphasis added).
"During prosecution . . . the PTO gives claims their 'broadest
reasonable interpretation.'" In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir.
2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).
Here, we begin by determining the broadest reasonable interpretation
of the disputed claim term "novel." For context, we look to the portion of
the Specification (¶ 0031]) that Appellant relies on for support. 1 In
reviewing paragraph [0031], we find no specific definition. Instead,
Appellant provides a non-limiting example: “[i]f the transcribed words or
phrases do not match any database 113 entries, the controller 102 may
determine that the speech is novel . . . .” 2 (emphasis added). Nor does

1 See App. Br. 4, pointing to paragraph [0031] of the Specification.
2 Any special meaning assigned to a term “must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention.” Multiform
Desiccants, Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).
Appeal 2010-003392
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Appellant disclose that the term “novel” has any special recognized meaning
in the art.
However, Appellant avers that: "[t]he term novel means 'strikingly
new, unusual, or different.' The American Heritage® Dictionary of the
English Language (4th ed. 2004)," available at
http://www.answers.com/topic/novel (App. Br. 4). 3
Assuming arguendo that Appellant's proffered definition comports
with the plain meaning of "novel," by applying Appellant's definition of
"novel" as “different,” we find that Colbath's unmatched words (that do not
match with Colbath's database) are "novel," within the meaning of claim 1.
This is because the unmatched words are different than Colbath's database
words.
Furthermore, Appellant’s Specification determines that transcribed
words are novel by "comparing transcribed speech to a database of common
words or phrases." (Claim 4; Spec. ¶[0015]; App. Br. 4). Similarly, the
Examiner finds, and we agree, that Colbath determines if words are novel by
comparing the words to Colbath's database of subject topics or micro-
domains names (Ans. 9-10; Colbath, col. 2, ll. 10-13, 19-21). Colbath's
database is "formed of a list of words defining specific subject topics or
micro-domain . . . names, e.g. weather, stocks, news, and the like" and thus
is a database of common words or phrases. (Colbath, col. 2, ll. 10-13).
Therefore, we agree with the Examiner's finding that Colbath's
teaching of determining the transcribed words that do not match the words in

3 Under 37 C.F.R. §41.37(c)(1)(ix), “[r]eference to unentered evidence is
not permitted in the brief.” Also see 37 C.F.R. 41.33(d)(1).
Appeal 2010-003392
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Colbath's database would have taught or suggested the disputed limitation of
"determining that transcribed speech is novel." (Ans. 4, 9-10; claim 1).
We find unpersuasive Appellant's argument that Colbath's unmatched
words are not novel because the unmatched words are "identified" by the
identification module. (Reply Br. 2-3). We conclude that Appellant's claims
do not preclude identifying keywords in the unmatched words using an
identification module. Moreover, Appellant's argument does not rebut the
Examiner's finding that Colbath's unmatched words are different (novel)
because the unmatched words are not found in Colbath's database. (Ans. 4,
9-10).
For these reasons, we are not persuaded of Examiner error.

ARGUMENTS PRESENTED FOR THE FIRST TIME IN THE REPLY BRIEF
Appellant also presents additional arguments for the first time in the
Reply Brief (Reply Br. 4-5). Because Appellant could have raised these
arguments in the Appeal Brief to rebut the rejections made in the Final
Office Action and did not do so, they waived these arguments, and therefore,
we will not consider them. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (informative decision) (“[T]he reply brief [is not] an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner's rejections, but were not.”).

Appeal 2010-003392
Application 11/184,470
8
DECISION
We affirm the Examiner’s § 103 rejection of claim 1, and that of
claims 2-30, which fall therewith.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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