Ex Parte Jung et al

Patent Trial and Appeal Board

Dec 18, 2014

11198904 (P.T.A.B. Dec. 18, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/198,904 08/05/2005 Edward K. Y. Jung SE1-0320-US 8874
80118 7590 12/19/2014
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
DORVIL, RICHEMOND
ART UNIT PAPER NUMBER
2658
MAIL DATE DELIVERY MODE
12/19/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EDWARD K. Y. JUNG, ROYCE A. LEVIEN,
ROBERT W. LORD, MARK A. MALAMUD,
and JOHN D. RINALDO, JR.
____________

Appeal 2012-006585
Application 11/198,904
Technology Center 2600
____________

Before JOHN A. JEFFERY, ERIC B. CHEN, and JEREMY J. CURCURI,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–3, 5–10, 12, 13, 15–32, 34, 35, 39–42, 44, 45,
47–52, 56–61, and 64. Claims 4, 11, 14, 33, 36–38, 43, 46, 53–55, 62, and
63 were cancelled. We have jurisdiction under 35 U.S.C. § 6(b), and we
affirm.

STATEMENT OF THE CASE
Appellants’ voice-controllable interactive communication display
system (1) receives vocal input; (2) receives instructions reference to a first
speech output version of the vocal input; and (3) creates a second speech
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output version of the vocal input representative of the first speech output
version of the vocal input manipulated responsive to the instructions. See
generally Abstract. Claim 1 is illustrative:
1. A method for a voice-capable system, the method comprising:
receiving a vocal input to the voice-capable system;
processing the vocal input to create a first speech output version of the
vocal input, the processing including:
creating a speech representation of the vocal input with an adjustable
fidelity; and
inserting one or more time-delineated tags into the speech
representation of the vocal input to create the first speech output version,
each tag configured to be references by providing a time value; and
receiving one or more audible instructions referential to the first
speech output version of the vocal input; and
creating a second speech output version of the vocal input, the second
output version being the first speech output version of the vocal input
content manipulated responsive to the one or more audible instructions to
obviate rerecording of the vocal input.

THE REJECTIONS
The Examiner rejected claim 64 under 35 U.S.C. § 112, second
paragraph as indefinite. Ans. 4–5.1
The Examiner rejected claims 1, 5–7, 9, 10, 12, 13, 15–19, 22–32, 34,
35, 39–42, 44, 45, 47–52, and 56–612 under 35 U.S.C. § 103(a) as

1 Throughout this opinion, we refer to the Appeal Brief filed July 14, 2011
(supplemented September 12, 2011) (“Br.”) and the Examiner’s Answer
mailed December 8, 2011 (“Ans.”).
2 Although the Examiner’s statement of the rejection includes (1) cancelled
claims 4 and 53 (Ans. 5) in this rejection, and (2) cancelled claims 54 and 55
in the rejection over Maes, Jackson, and Shenefiel (Ans. 14), we nonetheless
omit those claims here and present the correct claim listings for clarity, and
deem the Examiner’s errors in this regard as harmless.
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unpatentable over Maes (US 7,092,496 B1; Aug. 15, 2006) and Jackson (US
7,197,299 B2; Mar. 27, 2007). Ans. 5–14.
The Examiner rejected claims 2, 3, 20, and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Maes, Jackson, and Shenefiel (US 7,233,982
B2; June 19, 2007). Ans. 14–15.
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Maes, Jackson, and Tucker (US 6,055,495; Apr. 25,
2000). Ans. 15–16.
The Examiner rejected claim 64 under 35 U.S.C. § 103(a) as
unpatentable over Bingley (US 2008/0275700 A1; Nov. 6, 2008) and Maes.
Ans. 16–17.

THE INDEFINITENESS REJECTION
The Examiner finds that the limitation “creating a visible textual
speech representation of the vocal input with an adjustable fidelity” renders
independent claim 64 indefinite because it is unclear how a textual
representation can have adjustable fidelity. Ans. 5, 17–19.
Appellants argue that the limitation is clear when interpreted in light
of the Specification’s describing adjusting a vocal input’s fidelity via a
textual representation. Br. 40–42.

ISSUE
Has the Examiner erred in rejecting claim 64 under § 112, second
paragraph by finding that “creating a visible textual speech representation of
the vocal input with an adjustable fidelity” renders the claim indefinite?

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ANALYSIS
We begin by noting that the Examiner and Appellant interpret claim
64’s creating step quite differently to support their respective positions. The
Examiner interprets the limitation as requiring the textual representation to
have adjustable fidelity, whereas Appellants interpret the limitation to
require the vocal input to have adjustable fidelity. Compare Ans. 5, 17–19
with Br. 40–42 (citing Spec. ¶¶ 35, 45, 49–50).
These divergent interpretations underscore the ambiguity in claim 64.
That is, even if the claim could be construed as requiring the vocal input to
have adjustable fidelity, skilled artisans could also plausibly construe the
claim as requiring the textual representation to have adjustable fidelity. This
ambiguity alone renders the claim indefinite, for it is well settled that where,
as here, “if a claim is amenable to two or more plausible claim constructions,
the USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). In any
event, that is unclear how text can have fidelity—let alone adjustable
fidelity—under the Examiner’s interpretation only further bolsters the
Examiner’s position that the claim is unclear in this regard, even when
interpreted in light of the Specification. See Ans. 5, 17–19.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 64 as indefinite.

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THE OBVIOUSNESS REJECTION OVER MAES AND JACKSON
The Examiner finds that Maes discloses every recited element of
independent claim 1 except for creating a speech representation of the vocal
input with an adjustable fidelity, but cites Jackson as teaching this feature in
concluding that the claim would have been obvious. Ans. 5–6, 19–21.
Appellants argue that the cited prior art does not teach or suggest the
created second speech output version being the first speech output version of
vocal input content manipulated responsive to one or more audible
instructions as claimed. Br. 45–48. According to Appellants, Maes merely
adjusts a message’s speed, but does not manipulate content as claimed. Br.
47. Appellants add that not only are the Examiner’s assertions regarding
modifying Maes with Jackson’s analog techniques merely conclusory, but
the proposed modification would impermissibly change Maes’ computer-
software-based approach and render it unsuitable for its intended purpose.
Br. 48–52.

ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Maes and Jackson collectively would have taught or suggested
creating a second speech output version of vocal input, the second output
version being the first speech output version of vocal input content
manipulated responsive to one or more audible instructions to obviate
rerecording the vocal input?
(2) Is the Examiner’s combining the teachings of Maes and Jackson
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?
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ANALYSIS
Claims 1, 5–7, 9, 10, 12, 13, 15–19, 22–24, 34, 35, 39–42, 44, 45, 47–52,
and 56–61

We sustain the Examiner’s rejection of claim 1 for the reasons stated
by the Examiner. Ans. 5–6, 19–21. Although Appellants and the Examiner
acknowledge that Maes’ pitch-corrected time-scale modification modifies
playback speed (see Br. 47; Ans. 19), Appellants do not persuasively rebut
the Examiner’s position that Maes’ modification manipulates (i.e., adds,
deletes, or combines) sample-based content to achieve that end. Ans. 19
(citing Maes, col. 7, ll. 1-56). Nor do Appellants persuasively rebut the
Examiner’s position that a content-manipulation alternative described in
Paragraph 49 of Appellants’ Specification, namely time-shifting,
encompasses Maes’ pitch-corrected time-scale modification. Ans. 19–20.
Nor do we find error in the Examiner’s combining Jackson’s
teachings with Maes as proposed for the reasons indicated by the Examiner.
Ans. 6, 20–21. As the Examiner indicates, Jackson was cited merely to
show that storing speech with adjustable fidelity via different sampling rates
was known in the art, and that providing such a technique in Maes’ system
would have been an obvious enhancement to add value and flexibility to the
system. Id. Notably, the Examiner does not propose to incorporate
Jackson’s analog technologies into Maes’ digital system as Appellants seem
to suggest (see Br. 49–52), but rather cites Jackson for its fundamental
teaching of storing audio with adjustable fidelity. Ans. 21.
It is well settled that “a determination of obviousness based on
teachings from multiple references does not require an actual, physical
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substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012) (citations omitted). Nor is the test for obviousness whether a
secondary reference’s features can be bodily incorporated into the structure
of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art. Id. Here, we see no error in
the Examiner’s position that it would have been obvious to store audio at
different sampling rates digitally in Maes in light of Jackson—a predictable
use of prior art elements to achieve a predictable result. See KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007). Accordingly, we find the
Examiner’s combining the teachings of Maes and Jackson is supported by
articulated reasoning with some rational underpinning to justify the
Examiner’s obviousness conclusion.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 5–7, 9, 10, 12, 13, 15–19, 22–24, 34, 35, 39–42, 44, 45,
47–52, and 56–61 not argued separately with particularity.3

3 Although Appellants argue independent claims 34 and 59 separately (Br.
63–76), Appellants reiterate arguments similar to those made for claim 1 that
we find unpersuasive for the reasons previously discussed. We further note
that Appellants’ reference to undermining any of Jay’s intended purposes in
footnote 11 of page 51 is unclear, for such a reference was not cited in the
rejection. In any event, to the extent that this footnote is intended to apply to
the references relied upon by the Examiner in the rejection, we find this
argument unpersuasive for the reasons indicated in the opinion. We reach a
similar conclusion regarding Appellants’ repeated references to “clause [d]”
in connection with the arguments for claim 34 despite Appellants’
previously identifying only clauses [a]–[c] in this claim. Compare Br. 64
with Br. 65–67. Even if we were to treat this error as harmless, we still are
unpersuaded of error in the Examiner’s rejection for the reasons previously
discussed.
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Claims 25–32
We also sustain the Examiner’s rejection of independent claim 25
reciting, in pertinent part, a voice-capable user interface comprising a set of
editing tools including one or more of: (1) a forwarding tool; (2) a reverse
tool; (3) an undo tool; (4) a marking tool; and (5) an expansion/contraction
tool.4 In the rejection, the Examiner cites Maes for teaching three of the five
recited tools, namely tools (2), (4), and (5). See Ans. 12, 21–22. As the
Examiner indicates, only one of these recited alternatives need be present in
the prior art to satisfy the associated “one or more” language in the claim.
Appellants’ contention, then, that Maes does not teach a forwarding or
undo tool (i.e., tools (1) and (3)) (see Br. 52–58) does not squarely address—
let alone persuasively rebut—the Examiner’s position that is not based on
those tools, but the other recited tools in the group: only one of which need
be shown to satisfy the limitation in any event. Appellants’ other arguments
regarding the cited references’ combinability (Br. 58–63) are likewise
unpersuasive for the reasons noted previously.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 25, and claims 26–32 not argued separately with particularity.

THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner’s obviousness rejections of claims 2, 3,
8, 20, and 21. Ans. 14–16. Appellants reiterate similar arguments made in

4 Although claim 25 also recites a “confirmation tool,” the Examiner
apparently interprets this tool as not within the recited set of tools which,
under that interpretation, includes the other five recited tools. See Ans. 22
(noting that Maes teaches three of the five tool-based alternatives).
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connection with claim 1 which we find unpersuasive for the reasons
previously discussed. See Br. 52.
Also, because Appellants do not address the Examiner’s obviousness
rejection of claim 64 over Bingley and Maes (Ans. 16–17)—an omission
noted by the Examiner (Ans. 19)—we summarily sustain that rejection. See
MPEP § 1205.02 (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, that ground of rejection will be summarily
sustained by the Board.”). Although Appellants indicate that they appeal the
Examiner’s § 103 rejection of claim 64 over Maes and Jackson (Br. 22), the
claims were not so rejected: rather, claim 64 was rejected as obvious over
Bingley and Maes. Ans. 16–17.

CONCLUSION
The Examiner did not err in rejecting (1) claim 64 under § 112, and
(2) claims 1–3, 5–10, 12, 13, 15–32, 34, 35, 39–42, 44, 45, 47–52, 56–61,
and 64 under § 103.

DECISION
The Examiner’s decision rejecting claims 1–3, 5–10, 12, 13, 15–32,
34, 35, 39–42, 44, 45, 47–52, 56–61, and 64 is affirmed.
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

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