Ex Parte Jung

Patent Trial and Appeal Board

Dec 29, 2016

12318053 (P.T.A.B. Dec. 29, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/318,053 12/19/2008 Hyun-ryong Jung 1905.1013 9906
21171 7590 01/03/2017
STA AS fr HAT SFY T T P
EXAMINER
SUITE 700 KAZEMINEZHAD, FARZAD
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WASHINGTON, DC 20005 ART UNIT PAPER NUMBER
2657
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01/03/2017 ELECTRONIC
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HYUN-RYONG JUNG
Appeal 2014-009683
Application 12/318,053
Technology Center 2600
Before ST. JOHN COURTENAY III, ELENI MANTIS MERCADER, and
JOYCE CRAIG, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2014-009683
Application 12/318,053
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—19, which constitute all the claims pending in
this application. An oral hearing was conducted on November 10, 2016. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claimed invention is directed to an input unit to receive a voice
command from a user, a determination unit to determine whether a voice
command is repeated a predetermined number of times, and a control unit to
register a shortcut command to shorten a voice command if it is determined
a voice command is repeated a predetermined number of times. Abstract.
CLAIMED SUBJECT MATTER
Claims 1 and 10, reproduced below, are illustrative of the claimed
subject matter:
1. A robot apparatus comprising:
an input unit to receive a voice command from a user;
a storage unit to store a number of times the command is input;
a determination unit to determine whether the voice command is
received by the input unit a predetermined number of times; and
a control unit to register a shortcut command to shorten the voice
command if the determination unit determines that the voice
command is received the predetermined number of
times, wherein the shortcut command comprises a word of the
voice command.
10. A method for registering a shortcut command, comprising:
receiving, by an input unit, a voice command from a user;
storing a number of times the command is input;
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determining, by a determination unit, whether the voice
command is received by the input unit a predetermined number
of times; and
registering, by a control unit, a shortcut command to shorten the
voice command, if the determination unit determines that the
voice command is received the predetermined number of times,
wherein the shortcut command comprises a word of the voice
command.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Shimomura et al. (“Shimomura”) US 2001/0021909 A1 Sept. 13, 2001
Inoue et al. (Inoue”) US 2003/0023348 Al Jan. 30, 2003
Watanabe et al. (“Watanabe”) US 2005/0102066 Al May 12, 2005
REJECTIONS ON APPEAL
The Examiner made the following rejections:
Claims 1—7, 9-16, 18, and 19 stand rejected under 35 U.S.C § 103(a)
as being unpatentable over Inoue in view of Shimomura.
Claims 8 and 17 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Inoue in view of Shimomura and further in view of
Watanabe.
ISSUES
The pivotal issue is whether the Examiner erred in finding that
the combination of Inoue and Shimomura teaches the limitations of:
receiving, by an input unit, a voice command from a user;
storing a number of times the command is input;
determining, by a determination unit, whether the voice
command is received by the input unit a predetermined number
of times; and
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Application 12/318,053
registering, by a control unit, a shortcut command to shorten the
voice command, if the determination unit determines that the
voice command is received the predetermined number of times,
wherein the shortcut command comprises a word of the voice
command,
as recited in claim 10 and similarly recited in claim 1.
ANALYSIS
We adopt the Examiner’s findings in the Answer and Final Action.
We add the following for emphasis.
We note that the Appellant’s representative acknowledged during the
oral hearing of November 10, 2016, that the claim 1 term “unit” is a nonce
word that fails to recite sufficiently definite structure. (See Hr’g Tr. 4, citing
to Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015)).
Thus, as an initial matter of claim construction, we conclude the recited
claim terms “input unit,” “storage unit”, “determination unit,” “ and “control
unit” are nonce words or verbal constructs which are not recognized as
names of corresponding structures, and are simply a substitute for the term
“means for.” (Id.; see also Ex parte Rodriguez, 92 USPQ2d 1395, 1401—
1402 (Bd. Pat. App. & Int. 2009) (precedential)). Furthermore, Appellant’s
representative conceded that the functional limitations following the claimed
units were not positively recited in the absence of terms such as “configured
to” or “adapted to.” (see Hr’g Tr. 4). 1 Absent such limiting language, our
reviewing court guides that the patentability of an apparatus claim “depends
on the claimed structure, not on the use or purpose of that structure.”
1 See e.g., In re Man Mach. Interface Techs. LLC, 822 F.3d 1282, 1286 (Fed.
Cir. 2016)(“We have noted that the phrase ‘adapted to’ generally means
‘made to,’ ‘designed to,’ or ‘configured to,’ though it can also be used more
broadly to mean ‘capable of’ or ‘suitable for.’”) (internal citations omitted).
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Application 12/318,053
Catalina Marketing Inti., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809
(Fed. Cir. 2002); see also Paragon Solutions, LLC v. Timex Corp., 566 F.3d
1075, 1090 (Fed. Cir. 2009). Therefore, we conclude the contested
functional limitations performed by the recited units do not limit the
structure of the apparatus of claim 1, under a broad but reasonable
interpretation. Thus, we conclude apparatus claim 1, under the broadest
reasonable interpretation, requires nothing more than corresponding
equivalent structures for an input unit, a storage unit, a determination unit,
and a control unit to be found in the reference. Id. Accordingly, we affirm
the Examiner’s rejection of claim 1 which identifies the teachings of an
input unit, a storage unit, a determination unit, and a control unit (Final Act.
12-15).
During the oral hearing, Appellant’s representative redirected our
attention to claim 10, which was the method claim reciting commensurate
steps or acts with respect to the functional limitations recited in claim 1 (see
FIr’g Tr. 6). Although we selected claim 10 as representative based on
Appellant’s assertion that claim 10 was argued separately, Appellant’s
arguments for claim 10 refer to and rely on the arguments made with respect
to claim 1 in the Brief (14). Based on the claim construction analysis as
indicated supra, claim 1 is affirmed based on the Examiner’s rejection (Final
Act. 12—15). However, we also address the apparatus of claim 1 with its
counterpart method of claim 10 below since commensurate functional
limitations pertain to both claims.
Appellant argues that Inoue teaches a system including a microphone
that collects a voice command from a user (Inoue para. 71), where a user can
repeat motions by adding, for example “three times” after a command, such
as “walk! three times” rather than “walk! walk! walk!” (Inoue para. 207)
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(Br. 10). Conversely, the claimed invention may shorten a voice command,
such as “get me a glass of water from the dining room,” to a shortcut voice
command, such as “get me water” (Spec. para. 34) (Br. 10). Appellant
argues that the voice command of Inoue is the singular voice command
“walk” (Br. 10). Appellant asserts, therefore, that to assume the voice
command “walk! walk! walk!” is shortened to “walk! three times” is an
incorrect interpretation of Inoue (Br. 10). According to Appellant, Inoue
teaches a command to replace a repeated command with another command
(Br. 10—11). In other words, the claimed invention may shorten a voice
command such as “get me a glass of water from the dining room” to a
shortcut voice command such as “get me water,” whereas Inoue would allow
a user to replace a voice command, such as “get me a glass of water from the
dining room[,] get me a glass of water from the dining room[,] get me a
glass of water from the dining room,” to a shortcut voice command, such as
“get me a glass of water from the dining room[,] three times” (Br. 11).
Appellant further argues that Inoue makes no reference to “a storage
unit to store a number of times the command is input,” as recited in claim 1
(Br. 11).
We are not persuaded by Appellant’s argument. A careful reading of
the Examiner’s cited paragraph 207, states in pertinent part “this instruction
can be executed by an instruction form of ‘walk! ’ and ‘three times’, in place
of issuing the command of ‘walk! ’ three times or issuing a command of
‘walk three times (steps)! ’” (para. 207; emphasis added). Thus, we agree
with the Examiner’s findings that in Inoue (para. 207) to enable a robot to
walk three steps the user may issue the command of “walk! three times
(steps)!” as a simplified version of issuing the command “walk” three times
(i.e., “walk!”, “walk!”, “walk!”) (Ans. 5; Final Act. 13). But this does not
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mean that the user is precluded from issuing the command “walk” multiple
times (see para. 207). In other words, Inoue teaches multiple ways of
instructing the robot to execute a command a pre-determined number of
times (i.e., three), one being “walk!, walk!, walk!” or its simplified version
of “walk three times!” Because there is a mapping between the “walk!”
command and the steps taken by the robot, this means the robot must
determine it has received the command three times (i.e., a predetermined
number of times) prior to taking the action that comprises three steps (Ans.
5, Final Act. 13). We further note that Inoue teaches that the command of
“walk! three times” is shortened with the information amount reduced by the
robot recognizing the command of “walk” (i.e., word of the voice command)
and the parameter of “3” (see Ans. 5, and paras. 207 and 208; see also Fig.
18).
Furthermore, Shimomura (para. 103) explicitly teaches “storing topics
(keywords) that appear repeatedly”, where “keywords” may comprise of
voice commands (para. 66) (Ans. 5). Therefore, we agree with the
Examiner’s conclusion that for the robot to store keywords that appear
repeatedly, it must determine whether the keywords have been received the
repeated number of times (Ans. 5).
We further agree with the Examiner’s finding that the robot must have
been programmed to respond to a “predetermined” action, as the robot does
not possess the ability of independent thinking to decide on a predetermined
course of action (Ans. 6). In other words, the robot must determine the
number of steps it must take based on the predetermined number of times the
command is issued. So if the “walk” command is repeated 7 times the robot
must have predetermined that seven steps must be taken if the command is
repeated 7 times.
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Accordingly, we affirm the Examiner’s rejections of claims 1 and 10
and for the same reasons the rejections of claims 2—9 and 11—19 for which
Appellant repeats substantially the same arguments as those raised above.
CONCLUSION
The Examiner did not err in finding that the combination of Inoue and
Shimomura teaches the limitations of:
receiving, by an input unit, a voice command from a user;
storing a number of times the command is input;
determining, by a determination unit, whether the voice
command is received by the input unit a predetermined number
of times; and
registering, by a control unit, a shortcut command to shorten the
voice command, if the determination unit determines that the
voice command is received the predetermined number of times,
wherein the shortcut command comprises a word of the voice
command.
as recited in claim 10 and similarly recited in claim 1.
DECISION
We affirm the Examiner’s rejections of claims 1—19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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