Ex Parte Hedinger

Board of Patent Appeals and Interferences

Dec 24, 2003

09132450 (B.P.A.I. Dec. 24, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT A. HEDINGER
____________
Appeal No. 2002-1627
Application No. 09/132,450
____________
ON BRIEF
____________
Before RUGGIERO, BARRY, and LEVY, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1-8 and 10-15. Claims 9, 16, and 17 have been canceled. An
amendment filed March 27, 2001 after final rejection was approved
for entry by the Examiner.
The claimed invention relates to a system and method for use
in communicating over a mobile communications link. Spoken words
are converted into a sequence of letters and gaps and an encoder is
utilized to convert the letters into a digital message. After
transmission, the digital message is received and decoded and a
Appeal No. 2002-1627
Application No. 09/132,450
2
speech synthesizer is utilized to convert the decoded message into
spoken words.
Claim 1 is illustrative of the invention and reads as follows:
1. A communication system for use with a mobile
communications link having a limited bandwidth, comprising:
a plurality of mobile communication devices that communicate
with each other and that each comprise:
a microphone into which words are spoken that are to be
transmitted;
a voice recognition system coupled to the microphone for
converting the spoken words into a sequence of letters and gaps;
an encoder coupled to the voice recognition system for coding
the letters into highly compressed digital messages;
a transmitter coupled to the encoder for transmitting the
highly compressed digital messages over a low frequency mobile
communications link having a limited transmission bandwidth;
a receiver for receiving the transmitted digital messages for
processing;
a decoder coupled to the receiver for decoding the digital
messages;
a speech synthesizer coupled to the decoder for converting the
decoded messages into spoken words; and
a speaker coupled to the speech synthesizer for outputting the
converted spoken words.
The Examiner relies on the following prior art:
Ichikawa et al. (Ichikawa) 4,975,957 Dec. 04, 1990
Yamakita 5,956,681 Sep. 21, 1999
(filed Nov. 06, 1997)
Appeal No. 2002-1627
Application No. 09/132,450
1 In response to Notification of Non-Compliance, Appellant filed (Paper
No. 13) a corrected appendix containing a correct copy of the appealed claims.
3
Claims 1-8 and 10-15, all of the appealed claims, stand
finally rejected under 35 U.S.C. § 103 as being unpatentable over,
in the alternative, Ichikawa or Yamakita.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief (Paper No. 11) and the
Answer (Paper No. 14) for the respective details.1
OPINION
We have carefully considered the subject matter on appeal, the
rejections advanced by the Examiner and the evidence of
obviousness relied upon by the Examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellant’s arguments set
forth in the Brief along with the Examiner’s rationale in support
of the rejections and arguments in rebuttal set forth in the
Examiner’s Answer.
With respect to the Examiner’s 35 U.S.C. § 103 rejection of
claims 1-8 and 10-15 based on Ichikawa and the 35 U.S.C. § 103
rejection of claims 1-7 based on Yamakita, it is our view that the
evidence relied upon and the level of skill in the particular art
would not have suggested to one of ordinary skill in the art the
Appeal No. 2002-1627
Application No. 09/132,450
4
invention as claimed. We reach the opposite conclusion with
respect to the Examiner’s 35 U.S.C. § 103 rejection of claims 8 and
10-15 based on Yamakita. Accordingly, we affirm-in-part.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential part
of complying with the burden of presenting a prima facie case of
Appeal No. 2002-1627
Application No. 09/132,450
5
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
We consider first the Examiner’s 35 U.S.C. § 103 rejection of
claims 1-8 and 10-15 based on Ichikawa and note that Appellant’s
arguments in response assert that the Examiner has failed to
establish a prima facie case of obviousness since all of the
claimed limitations are not taught or suggested by the Ichikawa
reference. With respect to independent claims 1 and 8, Appellant
initially contends (Brief, pages 5 and 8) that Ichikawa lacks a
disclosure of converting spoken words into a “sequence of letters
and gaps” as claimed. We find ourselves, however, in agreement
with the Examiner (Answer, pages 4 and 5) that, although Ichikawa
has no specific mention of “gaps” being created when spoken words
are converted to characters, the skilled artisan would have
recognized and appreciated that spaces or “gaps” are necessary to
delineate the beginning and ending of words in order to create
intelligible text. We further agree with the Examiner that
Appellant has provided no basis for the assertion that Ichikawa’s
extraction and subsequent processing of spectrum envelope
information from spoken word input supports the conclusion that
letters and gaps are not created.
We are in agreement, however, with Appellant’s further
argument (Brief, pages 5, 8, and 9) that, in contrast to the
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claimed invention, which requires a mobile communications device
with transmission over a mobile communications link, Ichikawa is a
hardwired telex system designed for a desktop environment and not
for mobile communications. While the Examiner suggests the
obviousness of employing a mobile communications link in Ichikawa
and substituting wireless for hard wired connections (Answer, pages
5 and 6), there is no evidence of record to support such an
assertion. The Examiner must not only make requisite findings,
based on the evidence of record, but must also explain the
reasoning by which the findings are deemed to support the asserted
conclusion. See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430,
1433-34 (Fed. Cir. 2002).
We do not dispute the Examiner’s assertion (Answer, page 5)
that “wireless as well as wired communications links are
notoriously well known . . . .” The mere fact, however, that
system or elements are well known does not support the conclusion
that it would have been obvious for one system or element to be
substituted for another. Independent claims 1 and 8 are directed
to particular elements and steps for processing communications
specifically tied to a mobile communications network. In our view,
any teaching or suggestion to modify Ichikawa to implement a mobile
wireless communications system could come only from Appellant’s own
Appeal No. 2002-1627
Application No. 09/132,450
7
disclosure and not from any teaching or suggestion in the reference
itself.
As noted above, the Examiner has the burden of initially
presenting a prima facie case of obviousness. The Examiner cannot
satisfy this burden by simply dismissing differences between the
claimed invention and the teachings of the prior art as being
obvious. The Examiner must present us with an evidentiary record
which supports the finding of obviousness. It does not matter how
strong the Examiner’s convictions are that the claimed invention
would have been obvious, or whether we might have an intuitive
belief that the claimed invention would have been obvious within
the meaning of 35 U.S.C. § 103. Neither circumstance is a
substitute for evidence lacking in the record before us.
In view of the above discussion, since the Examiner has not
established a prima facie case of obviousness, the 35 U.S.C. § 103
rejection of independent claims 1 and 8, as well as claims 2-7 and
10-15 dependent thereon, based on Ichikawa is not sustained.
We next consider the Examiner’s 35 U.S.C. § 103 rejection of
appealed claims 1-8 and 10-15 based on Yamakita. With respect to
independent claim 1, Appellant reiterates the argument, asserted
with respect to Ichikawa, that Yamakita has no disclosure of a
voice recognition system that converts spoken words into a
Appeal No. 2002-1627
Application No. 09/132,450
8
“sequence of letters and gaps.” For all of the reasons discussed
supra with regard to Ichikawa, we remain of the opinion that the
skilled artisan would have recognized that the conversion of spoken
words into text would necessarily create gaps between words to
provide intelligible communication.
We are in agreement, however, with Appellant’s further
argument that, unlike independent claim 1 which requires that
speech processing involving conversion of spoken words into text
takes place at the mobile communication device, Yamakita’s speech
processing occurs at the receiving end of the communication network
and not at the mobile terminal. In this regard, our interpretation
of the disclosure of Yamakita coincides with that of Appellant,
i.e., no conversion of speech into text takes place at the mobile
terminal 101 illustrated in Figures 1-3. We further note that the
Examiner has identified (Answer, page 4) the unit illustrated in
Figure 11 of Yamakita as corresponding to the claimed voice
recognition unit. It is clear from Yamakita (column 31, lines 38-
47), however, that Figure 11 is a functional block diagram of
speech recognition section 117 which, as illustrated in Yamakita’s
Figure 1, is not part of the mobile terminal 110 but rather a part
of speech control host unit 108.
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Application No. 09/132,450
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Accordingly, since all of the limitations of independent claim
1 are not taught or suggested by the applied Yamakita reference,
the Examiner has not established a prima facie case of obviousness.
Therefore the 35 U.S.C. § 103 rejection of independent claim 1, as
well as claims 2-7 dependent thereon, based on Yamakita is not
sustained.
Turning to a consideration of the Examiner’s 35 U.S.C. § 103
rejection of claims 8 and 10-15 based on Yamakita, we note that
while we found Appellants’ arguments to be persuasive with respect
to the obviousness rejection of claims 1-7, we reach the opposite
conclusion with respect to claims 8 and 10-15. A review of the
language of independent method claim 8 reveals that, in contrast to
independent system claim 1 which specifically requires the voice
recognition system to be included in the mobile communication
terminal, the step of converting spoken word to text is not
required to be performed at the mobile terminal. In fact,
according to the express language of claim 8, the only steps
required to be performed by mobile terminals are the speaking of
words into a microphone at the transmitting end and the decoding of
a converted digital message at the receiving end. In our view,
while the voice recognition unit in Yamakita (117, Figure 11) is
not part of the mobile terminal 101, as discussed previously with
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Application No. 09/132,450
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regard to claim 1, there is no such limiting requirement in claim
8.
In view of the above discussion, it is our opinion that the
Examiner has established a prima facie case of obviousness with
respect to claim 8 based on the disclosure of Yamakita which has
not been overcome by any convincing arguments from Appellant.
Accordingly, the Examiner’s 35 U.S.C. § 103 rejection of claim 8
based on Yamakita is sustained.
We also sustain the Examiner’s 35 U.S.C. § 103 rejection of
dependent claims 10-15 based on Yamakita. Appellant’s sole
argument (Brief, pages 9 and 10) in response to the Examiner’s
rejection refers to the arguments made with respect to dependent
claims 2-7 which are the apparatus counterparts of method claims
10-15. These arguments, however, specifically mention only claims
2 and 3 and the extent of the arguments is to repeat the language
of the claims. Simply pointing out what a claim requires with no
attempt to point out how the claims patentably distinguish over the
prior art does not comply with 37 CFR § 1.192(c)(8) and does not
amount to a separate argument for patentability. In re Nielson,
816 F.2d 1567, 1572, 2 USPQ2d 1525,1528 (Fed. Cir. 1987).
In summary, we have not sustained the Examiner’s 35 U.S.C.
§ 103 rejection of claims 1-8 and 10-15 based on Ichikawa. With
Appeal No. 2002-1627
Application No. 09/132,450
11
respect to the Examiner’s 35 U.S.C. § 103(a) rejection of appealed
claims 1-8 and 10-15 based on Yamakita, we have not sustained the
rejection of claims 1-7, but have sustained the rejection of claims
8 and 10-15. Therefore, the Examiner’s decision rejecting claims
1-8 and 10-15 is affirmed-in-part.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART

JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
JFR/dal
Appeal No. 2002-1627
Application No. 09/132,450
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PAUL S HUNTER
JOYCE KOSINSKI
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