Ex Parte Kusnitz et al

Board of Patent Appeals and Interferences

Apr 24, 2003

08772047 (B.P.A.I. Apr. 24, 2003)

1 Application for patent filed December 19, 1996.
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for publication and is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JEFFREY A. KUSNITZ, JOHN A. MOORE and MARC SEGRE
____________
Appeal No. 2001-0860
Application No. 08/772,0471
____________
ON BRIEF
____________
Before JERRY SMITH, FLEMING, and SAADAT, Administrative Patent
Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 1-12, which are all of the claims pending in
this application.
We reverse.
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BACKGROUND
Appellants’ invention is directed to a method and apparatus
for enabling existing application programs for operation in
speech recognition environments. As depicted in figure 2, a new
speech enabled component 60, which supports the same interface or
objects used by application program 50, is dynamically linked at
the runtime and replaces one of existing components 58
(specification, page 6). The new component receives input from
the speech recognition system and passes the input to application
program 50 using the existing interfaces (id.). Thus,
application program 50 receives the speech enabled input from the
speech recognition program without noticing that it was not from
a standard input device such as a keyboard or a mouse
(specification, page 7).
Representative independent claim 1 is reproduced below:
1. A method, implemented in a computer system, for adding
speech capability to an existing application program comprising
the steps of:
providing said existing application program having a
plurality of object-oriented components including an input
component containing interface information that is loaded and
dynamically linked at runtime, said object-oriented input
component originally created having no speech capability;
creating a speech enabled object-oriented input component
for said existing application program by supplying an alternate
object-oriented dynamic library that supports the same interface
information in said input component;
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determining if speech recognition is installed on said
computer system while maintaining the input component and the
speech enabled object-oriented input component; and
replacing said object-oriented input component of said
application program with said speech enabled input component at
runtime to allow speech operation in said application program.
The Examiner relies on the following references in rejecting
the claims:
Gen Kiyooka, “Object-Oriented DLL’s” (OODLL), Byte, pp. 257-259,
(December 1992).
Esther Schindler, “Computer Speech” (Speech), Chapters 12 and 13,
pp. 221-294, (February 1996).
Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Speech in view of OODLL.
Rather than reiterate the viewpoints of the Examiner and
Appellants regarding the above-noted rejection, we make reference
to the answer (Paper No. 16, mailed May 5, 2000) for the
Examiner’s reasoning, and to the appeal brief (Paper No. 15,
filed February 22, 2000) for Appellants’ arguments thereagainst.
OPINION
Appellants argue that the combination of Speech and OODLL,
as proposed by the Examiner, is suggested by neither of the
references and only use of hindsight would have supplied what is
missing in the references (brief, page 4). Appellants further
point out that while Speech provides an overview of what various
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vendors offer in the field of speech recognition and lists “an
intended result from using the product,” the reference “fails to
explain how the results are obtained” (brief, pages 4 & 5).
Additionally, Appellants argue that OODLL merely teaches that
users can use a linker to bind DLL’s name into a program as long
as the DLL has the right name and exports the right set of
function (brief, page 5). Appellants further assert that the
claimed enabling an existing object-oriented application program
with speech capability by replacing an input component of the
application program is not taught or suggested by the combination
of the applied prior art (brief, page 6).
In response to Appellants’ arguments, the Examiner asserts
that Speech provides for “adding code to an existing code without
the need to recompile” and teaches speech recognition by
attaching a speech input feature to an existing application in
combination with the Dynamic Link Library technology of OODLL
(answer, page 7). The Examiner further reasons that since “the
use of DLL is an old and well known way for adding software to
existing programs at load or runtime without needing to
recompile,” it would have been obvious to one of ordinary skill
in the art to include the use of DLL with the speech recognition
capabilities taught by Speech (answer, page 9).
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The initial burden of establishing reasons for
unpatentability rests on the Examiner. In re Oetiker, 977 F.2d
1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992). The Examiner
must produce a factual basis supported by teaching in a prior art
reference or shown to be common knowledge of unquestionable
demonstration, consistent with the holding in Graham v. John
Deere Co., 383 U.S. 1 (1966). Our reviewing court requires this
evidence in order to establish a prima facie case. In re
Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed.
Cir. 1984); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72
(CCPA 1966). However, “the Board must not only assure that the
requisite findings are made, based on evidence of record, but
must also explain the reasoning by which the findings are deemed
to support the agency’s conclusion.” In re Lee, 277 F.3d 1338,
1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
Our review of Speech confirms that the reference relates to
speech-enabled applications that are available off the shelf.
One example of such products is identified as Visual Voice which
is a development tool using an object-oriented flow-chart
development system (page 243). Speech further refers to Speech
Wizard as a tool for adding speech input to Windows programs and
to Phonetic Engine 500 (PE500) as a speech system that may also
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be accompanied by its Software Development Kit (page 259 & 260).
Examples of applications that control the PE500 are implemented
as a Windows dynamic link library (SPOT) or as a custom control
added to a form and define speech recognition characteristics
(SPOT/VBX) (page 261). Therefore, the speech recognition
applications disclosed by Speech are mainly software development
kits that attach speech recognition capabilities to the existing
applications. However, it is not clear from the disclosure of
Speech what specific steps should be taken to incorporate such
activities as a dynamic link library in an existing application
having a plurality of object-oriented components. In fact,
Speech provides for no detailed method of obtaining the speech
recognizing application by dynamically linking the object-
oriented input component of the application, as recited in the
claims.
OODLL, on the other hand, relates to object-oriented dynamic
link libraries for managing complex operating systems such as
Windows. The article provides general information regarding the
design and use of DLLs that shift the emphasis toward early
specification of parameters and independent design of parts of a
large software project (Page 257, right-hand column).
Additionally, OODLL refers to different approaches for designing
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DLLs such as run-time dynamic linking which does not resolve the
name or the entry point until run time as well as binding the
DLL’s name into the program by early resolving the DLL’s entry
points (page 257, right-hand column through page 258, left-hand
column). However, our review of the reference reveals no
teaching or suggestion related to using an alternate speech
enabled object-oriented dynamic library as a part of the input
component of an application, as recited in claim 1.
As the Federal Circuit states, "[t]he mere fact that the
prior art may be modified in the manner suggested by the Examiner
does not make the modification obvious unless the prior art
suggested the desirability of the modification." In re Fritch,
972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). The court further reasons in Karsten Mfg.
Corp. v. Cleveland Gulf Co., 242 F.3d 1376, 1385, 58 USPQ2d 1286,
1293 (Fed. Cir. 2001) that for an invention to be obvious in view
of a combination of references, there must be some suggestion,
motivation, or teaching in the prior art that would have led a
person of ordinary skill in the art to select the references and
combine them in the way that would produce the claimed invention.
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See also In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988).
Based on these well-settled principles, we disagree with the
Examiner that, because OODLL discusses the use of dynamic link
libraries in software design, a speech-enabled object-oriented
input component may be dynamically linked at runtime and replace
the input component of the application. The Examiner’s position
that Appellants’ failure to point out a single limitation that is
not taught supports the conclusion that the combination of the
two applied references discloses the claimed subject matter
(answer, page 9), improperly places the burden of proving
patentability on Appellants before a prima facie case of
obviousness is presented by the Examiner. Although Speech
discusses various object-oriented development tools for building
speech-enabled applications without the need to write any source
code or modify the underlying application program, the Examiner
has failed to establish why one of ordinary skill in the art
would have found it obvious to incorporate the DLLs of OODLL
article as the claimed dynamically linked speech enabled input
component in the speech recognition applications and system
development tools of Speech.
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Even if the Examiner is contending that defining the
interface between the programs is the underlying requirement for
adding libraries to an application (answer, page 15), such
assertion does not provide a reason or motivation for combining
the teachings of the applied prior art. The Speech reference
introduces various development tools for adding speech enabled
features to an existing product without the need to recompile
and, at best, mentions implementation of such tools as a dynamic
link library. Speech, in fact, merely discusses the existence of
such tools without any details of how the development tools may
be used for adding the speech enabled input component while OODLL
merely discusses two different approaches for designing DLL
interface, i.e., fewer polymorphic entry points vs. separately
named entry points for each function. We agree with Appellant
(brief, page 6) that these disparate references to speech
recognition and DLLs fail to teach or motivate one of ordinary
skill in the art to replace an input component of the application
program with one having an alternate object-oriented dynamic
library and enable an existing object-oriented application with
speech capability, as recited in claim 1.
We note that independent claims 5 and 9 also recite means
for replacing an input component of the application program with
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an alternate speech enabled input component. Similar to claim 1,
these two claims require that an alternate object-oriented
dynamic library supporting the same interface information provide
the speech recognition capability for an existing application.
Based on our analysis above, we find that the Examiner has failed
to set forth a prima facie case of obviousness because the
necessary teachings and suggestions to combine Speech and OODLL
to replace an input component of the application program with one
having an alternate object-oriented dynamic library to enable an
existing object-oriented application with speech capability, are
not shown. Accordingly, we do not sustain the 35 U.S.C. § 103
rejection of independent claims 1, 5 and 9, as well as claims 2-
4, 6-8 and 10-12 dependent thereon, over Speech and OODLL.
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CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 1-12 under 35 U.S.C. § 103 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/ki
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David A. Mimms, Jr.
IBM Corporation
Intellectual Property Law Department
Internal Zip 4054 11400 Burnet Road
Austin, TX 78758