Ex parte Hawkes

Board of Patent Appeals and Interferences

Apr 24, 2000

07988712 (B.P.A.I. Apr. 24, 2000)

Application for patent filed December 10, 1992,1
entitled "Method And Apparatus For Interactively Providing
Information At Multiple Sites."
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
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Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte CALVERT T. HAWKES

Appeal No. 1997-4463
Application 07/988,7121

ON BRIEF

Before URYNOWICZ, HAIRSTON, and BARRETT, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1997-4463
Application 07/988,712
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This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1-18.
We reverse.
BACKGROUND
The disclosed invention is directed to an interactive
system for providing selected messages at multiple separate
sites, such as in a store, museum, or historic attraction.
The messages are stored at a central place, called a common
source, and, in response to a operation of an input device,
messages are output from the common source to an output
device, such as a speaker, at the site. The sites have
buffers with limited storage capacity. Messages are output
from the common source to the site at a rate corresponding to
the utilization rate at the site; that is, the buffers receive
snippets of information from the common source at high speed
and output this information to the output device at a much
slower speed. The system reduces the need for processors and
circuitry at the site.
Claim 1, the sole independent claim, is reproduced below.
1. An interactive system for providing from a
common source selected site-specific messages at a
plurality of separate sites comprising:
Appeal No. 1997-4463
Application 07/988,712
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means at said common source for addressably storing
at least one site-specific message for each of said
sites;
a plurality of output devices, at least selected
ones of said sites having a said output device located
thereat;
an input device located at each site, there being at
least one input device corresponding to each output
device;
means responsive to the operation of the input
device for one of said sites for initiating the reading
out of a message to be provided at the site from the
means for addressably storing, the reading out of a
message for each site for which the corresponding input
device has been operated being initiated when the
corresponding input device is operated and proceeding
concurrently for all sites at a rate for each site which
depends on an information utilization rate for the site;
and
means for transmitting each readout message to the
output device associated with the corresponding operated
input device;
the output device outputting the selected message in
response to receipt of the readout message.
The Examiner relies on the following prior art:
Revesz et al. (Revesz) 4,888,709 December 19,
1989
Humble 4,964,053 October 16,
1990
Pfeiffer et al. (Pfeiffer) 5,198,644 March 30,
1993
(filed April 16,
1992)
Appeal No. 1997-4463
Application 07/988,712
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Bullock et al. (Bullock) 5,351,186 September
27, 1994
(filed January 16,
1991)
Claims 3 and 4 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which applicant regards as his invention.
Claims 1-18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Revesz and Humble.
Claims 1-18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Bullock and Pfeiffer. This is a new ground
of rejection entered in the Examiner's Answer.
We refer to the Office action (Paper No. 14), the Final
Rejection (Paper No. 17) (pages referred to as "FR__"), the
Examiner's Answer (Paper No. 23) (pages referred to as
"EA__"), and the Supplemental Examiner's Answer (Paper No. 25)
(pages referred to as "SEA__") for a statement of the
Examiner's rejection and to the Appeal Brief (Paper No. 22)
(pages referred to as "Br__") and the Response (Paper No. 24)
(pages referred to as "RBr__") for a statement of Appellant's
arguments thereagainst.
OPINION
Appeal No. 1997-4463
Application 07/988,712
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35 U.S.C.§ 112, second paragraph
The Examiner states (FR2):
3.1 The claim language is replete with language that is
vague and indefinite. The following is a sample of the
claim language that is vague and indefinite:
"operable in a different way" (claim 3, line 2) as
to the meaning of a "different way" in this context.
Appellant argues only this language since it is the only
specific problem raised by the Examiner. Appellant notes that
claim 2, from which claim 3 depends, recites that there may be
a number of different site-specific messages for each site.
The specification discloses a number of ways in which the
input device can be operated to select the site-specific
messages, such as pressing a separate button for each message.
"The language 'operable in a different way' thus means
pressing a different button, moving a multi-position switch to
a different switch setting or operating some other multi-state
input device in a different way so as to place the device in a
different state, for each desired message." (Br5.)
The Examiner does not respond to Appellant's arguments in
the Examiner's Answer.
We conclude that claim 3 is definite for the reasons
stated by Appellant. In addition, claim 4 gives a specific
Appeal No. 1997-4463
Application 07/988,712
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example of using a plurality of binary switches to operate in
a different way for each message. The rejection of claims 3
and 4 is reversed.
35 U.S.C. § 103
Revesz and Humble
Revesz does not disclose (1) "an input device located at
each site, there being at least one input device corresponding
to each output device," (2) "means responsive to the operation
of the input device for one of said sites for initiating the
reading out of a message to be provided at the site from the
means for addressably storing [at the common source]," and
(3) "the reading out of a message for each site for which the
corresponding input device has been operating being initiated
when the corresponding input device is operated and proceeding
concurrently for all sites at a rate for each site which
depends on an information utilization rate for the site."
Appellant does not contest the Examiner's conclusion that
it would have been obvious to add an input device to each site
in Revesz (EA6). Thus, we do not address this limitation.
See 37 CFR § 1.192(c)(8)(iv) (1996) (arguments in the brief
must identify and address the errors in the rejection).
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Application 07/988,712
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Appellant argues that "the Examiner has failed to cite
any reference which shows or suggests either [1] storing all
information to be outputted at a central site or [2]
outputting information from such central site at a rate
corresponding to the information utilization rate at the
remote sites" (RBr4, numbers in brackets added).
The Examiner's rejection does not address the difference
of outputting message information from a common source. As
shown in Figure 3 of Revesz, the module 10 includes module
memory 154 which stores data for the display 16, such as
pricing information (e.g., col. 8, lines 6-8). Thus, messages
to be provided at the site are read out from the module memory
154, not from a common source, such as computers 30, 32, or
36. The Examiner states that "[i]f the related product
information were exclusively stored in central storage the
rate control system claimed would be inherent" (EA6), but does
not address why it would have been obvious to output messages
from a common source instead of from the module at the site.
Thus, the rejection fails to address an express claim
limitation.
Appeal No. 1997-4463
Application 07/988,712
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The Examiner admits that Revesz does not disclose
outputting information at a rate corresponding to the
utilization rate, but reasons (EA5-6):
It would have been obvious to one of ordinary skill in
the art at the time of the invention to output the
information at a rate that corresponds to the rate at
which the information is used because such a scenario is
well known in the art and the logical method (if related
product information is centrally stored); and this
scenario offers no patentably distinct feature over the
prior art. If the related product information were
exclusively stored in central storage the rate control
system claimed would be inherent because certainly the
information delivery rate from the central storage would
need to be controlled before outputted to the user. If
not, the audible message would not be a desired smooth,
intelligible sound.
In effect, the Examiner has dismissed the output rate
limitation as obvious by reasoning that it was a "well known"
and "logical" method and because it would be "inherent" in any
central storage system to provide continuous messages, without
providing any prior art evidence. The Examiner presents no
evidence that "reading out of a message . . . at a rate for
each site which depends on an information utilization rate for
each site" was well known. While there may be many examples,
it is the Examiner's duty to at least state what those
examples are so that Appellant can challenge them.
"Assertions of technical facts in areas of esoteric technology
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Application 07/988,712
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must always be supported by citation to some reference work
recognized as standard in the pertinent art." See
In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420 (CCPA
1970); accord In re Pardo, 684 F.2d 912, 917, 214 USPQ 673,
677 (CCPA 1982). See also In re Eynde, 480 F.2d 1364, 1370,
178 USPQ 470, 474 (CCPA 1973) (court will not take judicial
notice of the state of the art). Official Notice is intended
for facts which are common knowledge or capable of
unquestionable demonstration. See In re Knapp-Monarch Co.,
296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961). See also
In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA
1966). It is the Examiner's responsibility to provide
evidence, not just conclusions.
Further, we do not agree with the Examiner that the rate
limitation is necessarily inherent in a common source system
(assuming that a common source system would have been
obvious). "The mere fact that a certain thing may result from
a given set of circumstances is not sufficient [to establish
inherency.]" In re Oelrich, 666 F.2d 578, 581-82,
212 USPQ 323, 326 (CCPA 1981) (citations omitted) (emphasis
added). As Appellant points out (Br9), Humble sends a full
Appeal No. 1997-4463
Application 07/988,712
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message to each station before proceeding to the next station.
Certain conditions are required before the claimed output rate
limitation is necessary, such as the memory at the site having
a capacity less than the full length of the message, which
conditions have not been addressed by the Examiner. The
Examiner has failed to provide evidence that outputting
information at a rate corresponding to the utilization rate
would have been obvious.
In summary, the combination of Revesz and Humble does not
teach or suggest: (1) "means responsive to the operation of
the input device for one of said sites for initiating the
reading out of a message to be provided at the site from the
means for addressably storing [at the common source]," and
(2) "the reading out of a message for each site . . .
proceeding concurrently for all sites at a rate for each site
which depends on an information utilization rate for the
site." Therefore, the Examiner has failed to establish a
prima facie case of obviousness. The rejection of claims 1-18
is reversed.
Bullock and Pfeiffer
Appeal No. 1997-4463
Application 07/988,712
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Bullock does not disclose "means responsive to the
operation of the input device for one of said sites for
initiating the reading out of a message to be provided at the
site from the means for addressably storing [at the common
source]" (emphasis added). The Examiner states that Bullock
stores the message at the common site 16 and at each remote
site 18 (SEA4). However, this does not address the claim
limitation which requires the message to be read out from the
common source, not just stored at the common source. It is
clear that Bullock reads out the message from the local memory
at the user unit, not from a common source at computer 16.
Bullock further does not disclose "the reading out of a
message for each site . . . proceeding concurrently for all
sites at a rate for each site which depends on an information
utilization rate for the site."
The Examiner realizes that outputting the messages from
the central processor at a rate that corresponds to the
utilization rate is not performed because the site-specific
messages are stored at the site (EA10). The Examiner states
(EA10-11):
However, if the related product information were
extensive (audio data can often require excessive
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Application 07/988,712
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memory), or repetitive among several products, central
storage of the product information would become more cost
efficient. If the related product information were
exclusively stored in central storage the rate control
system claimed would be inherent because certainly the
information delivery rate from the central storage would
need to be controlled before [being] outputted to the
user. If not, the audible message would not be a desired
smooth, intelligible sound.
The Examiner also points to Pfeiffer, Figure 4 and column 11,
lines 62-68, for the teaching that "the information delivery
rate to the controller would need to correspond to the
utilization rate of the controller" (EA11).
Appellant points (Br8) out that the Examiner proposes
making one level of modification, storing all information to
be outputted at a central site, and then adds a second level
of modification, the read-out rate for a site depending on the
site information utilization rate, without any evidence or
suggestion for such modifications in the references.
The Examiner's response (SEA4-6) appears to basically
repeat the reasoning in the Examiner's Answer (EA10-11).
We must agree with Appellant that the Examiner has failed
to provide any evidence of motivation to distribute the
message information from a common source. The Examiner
concludes that central storage would be more cost efficient.
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Application 07/988,712
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However, that some reason can be invented is not evidence of
obviousness in the prior art. Central storage of messages is
contrary to the teachings of Bullock. It appears that the
motivation for the proposed modification comes from
Appellant's disclosure.
In addition, Pfeiffer does not disclose outputting
information from a processor at a rate that corresponds to the
utilization rate at a certain location. Pfeiffer merely
states that the bus bit rate must equal the clock speed of the
controller (col. 11, lines 66-68). We agree with Appellant
that this implies the data rates for a transmitter and a
receiver must be matched, which has nothing to do with reading
a message (or other kind of information) out of storage at a
rate corresponding to the utilization rate somewhere else.
In summary, the combination of Bullock and Pfeiffer does
not teach or suggest: (1) "means responsive to the operation
of the input device for one of said sites for initiating the
reading out of a message to be provided at the site from the
means for addressably storing [at the common source]," and
(2) "the reading out of a message for each site . . .
proceeding concurrently for all sites at a rate for each site
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Application 07/988,712
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which depends on an information utilization rate for the
site." Therefore, the Examiner has failed to establish a
prima facie case of obviousness. The rejection of claims 1-18
is reversed.
CONCLUSION
The rejections of claims 3 and 4 under 35 U.S.C. § 112,
second paragraph, is reversed.
The rejections of claims 1-18 under 35 U.S.C. § 103 are
reversed.
REVERSED
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
Appeal No. 1997-4463
Application 07/988,712
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Ronald J. Kransdorf
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