Ex Parte Morin

Board of Patent Appeals and Interferences

Apr 26, 1999

08200049 (B.P.A.I. Apr. 26, 1999)

1 Application for patent filed February 22, 1994.
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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journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte LEE M. E. MORIN
________________
Appeal No. 96-2992
Application 08/200,0491
________________
ON BRIEF
________________
Before KRASS, JERRY SMITH and LALL, Administrative Patent Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 1 through 7, all the
outstanding claims in the case.
The claimed invention relates to a computer-based
device and method for providing spoken translations of a
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predetermined set of questions and phrases, upon the selection of
individual questions and phrases. Translations of these
questions and phrases are prerecorded by human speakers into a
number of languages, and an interviewer/user, in cooperation with
the interviewee, chooses into which of these languages the
translations are to be made. The interviewer chooses, in the
interviewer's language, the questions to be asked, indicates his
choice to the device and the device speaks the corresponding
questions in the chosen language for the interviewee.
Representative claim 1 is reproduced as follows:
1. A translating machine to enable an operator who is
fluent in one language to interview a respondent using a
predetermined list of available sentences, which may include
questions, where the respondent speaks any one of a plurality of
available languages other than the language in which the operator
is fluent, and where the respondent need not be literate in any
language, comprising:
A. Advance storage means for storage of spoken
translations in a form which is convertible into an audio
waveform of each of the available sentences in each of the
available languages after those translations are spoken and
recorded in advance by speakers fluent in each of those
languages,
B. Language selection means for selecting which of the
available languages is to be used with the respondent,
C. List storage means for storing the predetermined list
of available sentences as alphanumeric code,
D. Second selection means for selecting individual desired
sentences from the stored predetermined list and displaying them
Appeal No. 96-2992
Application 08/200,049
2 A supplemental brief was filed on Feb. 18,1999, only to
meet the formal requirements. Thus, any reference to the brief
in this opinion refers to the brief filed on October 19,1995.
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to the operator, and
E. Audio play-out means for producing an audio output
derived from stored spoken translations into the selected
language in the advance storage means corresponding to individual
desired sentences selected by the operator with the selection
means.
The Examiner relies on the following references:
Hashimoto et al. (Hashimoto) 4,613,944 Sept. 23, 1986
Yamamoto et al. (Yamamoto) 5,056,145 Oct. 8, 1991
Claims 1 through 7 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness the Examiner offers Yamamoto
and Hashimoto.
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the briefs2 and the answer for
their respective positions.
OPINION
We have considered the rejection advanced by the
Examiner. We have, likewise, reviewed the Appellant's arguments
against the rejection as set forth in the brief.
It is our view, after consideration of the record
before us, that the collective evidence relied upon and the level
of skill in the particular art would have suggested, to one of
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ordinary skill in the art, the obviousness of the invention as
set forth in claims 1 through 7. Accordingly, we affirm.
We consider now the Section 103 rejections as they
apply to claims 1 through 7 which are grouped together [brief,
pages 9 and 10, and answer, page 2].
As a general proposition in an appeal involving a
rejection under 35 U.S.C. § 103, an examiner is under a burden to
make out a prima facie case of obviousness. If that burden is
met, the burden of going forward then shifts to the applicant to
overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a
whole and the relative persuasiveness of the arguments. See In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992); In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed.
Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785,
788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052,
189 USPQ 143, 147 (CCPA 1976).
With respect to claim 1, the Examiner asserts that
Hashimoto teaches everything except for a storage of spoken
translations of sentences [questions and phrases] in multiple
languages. However, Yamamoto teaches the digitized recording of
the spoken foreign language and playing same back upon selection
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by the user. Therefore, the Examiner concludes that it would
have been obvious, to one of ordinary skill in the art at the
time of the invention, to incorporate this teaching of Yamamoto
into Hashimoto [answer, pages 3 to 6].
Appellant argues that the suggested combination of
Hashimoto and Yamamoto is unobvious for a number of reasons
[brief, page 12]. The "most compelling reason" Appellant offers
for said position is that it would not work because the small
amount of data that could be recorded on Yamamoto's integrated
chip (IC) memory 9 would not suffice for a reasonable amount of
available translations for the Hashimoto system [brief, page 12].
Appellant further argues that the combination is unobvious
because there is not any teaching of a way to fit these two
systems [Hashimoto and Yamamoto] together into a working device
[brief, page 13]. For this position Appellant alleges that the
Examiner has not suggested any way to do so, and that it is not
clear how Yamamoto's integrated circuit could physically be
installed in Hashimoto's system without so much modification that
a new invention would be called for just for the combination of
the two references. Appellant still further argues, with respect
to the two references, that it is not obvious [to any one] to
want to combine them [brief, pages 13 to 14]. Appellant supports
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this position by noting that it requires a great deal more
digital data storage capability to store speech in digital form
... than is found on the ROM chips used by Hashimoto [brief, page
14].
The Examiner, regarding the size of the memory storage,
responds that neither Hashimoto nor Yamamoto is limited to any
specific size for its storage capacity, and moreover, no
particular boundaries for the storage size are claimed [answer,
pages 11 to 14]. Regarding the absence of any teaching of a way
to combine the two systems, the Examiner responds that the
references [as applied in the suggested combination] rely on the
knowledge of those [of ordinary skill] in the art to complement
that which is disclosed therein, and a specific teaching does not
need to be shown by a reference [answer, pages 15 to 16]. With
respect to the "it is not obvious to want to combine them"
argument [brief, page 14], the Examiner asserts that digitizing
spoken sentences, [rather than using phonemes to create
sentences], for clearer reproduction is well known in the art,
and moreover the argument of " ...not obvious to want to
combine..." is speculative [answer, pages 14 to 15]. Moreover,
CD-ROMs are known for large storage of data [answer, page 17].
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We find that Hashimoto does show an advance storage
means for storage of sentences and phrases in different
languages, means to type in the sentence or phrase desired to be
translated, means to select the language into which the phrase is
to be translated and the speakers for the synthesized translated
phrase [figure 1 and column 2, lines 15 to 21, column 6, lines 33
to 43]. It is not clear whether the advance storage in Hashimoto
was done from spoken words. Also, we note that the translated
words are synthesized for speech in Hashimoto, rather than
digitized. However, we find that Yamamoto teaches the concept of
digitally recording spoken words as well as reproducing speech
from the digitized recording which could be a foreign language
[column 2, lines 35 to 41 and column 3, lines 1 to 21]. We
conclude that it would have been obvious, to one of ordinary
skill in the art at the time of the invention, to use the
teaching of Yamamoto, to record the spoken words in digitized
form and to reproduce the digitally recorded words in a spoken
form, in Hashimoto as outlined in detail by the Examiner [answer,
pages 3 to 10].
With respect to the first argument that the suggested
combination would not work due to the size of the storage
capacity of Hashimoto and Yamamoto, we believe that it is not
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entirely determinative of the issue of obviousness. In fact, we
believe that an artisan would have found it obvious to use
Yamamoto's digital means of recording and reproducing spoken
words in Hashimoto and to provide an adequate amount of storage
for such purposes. Obviousness may sometimes be based on the
common knowledge of a person of ordinary skill in the art
without a specific suggestion in a particular reference. In re
Garrett, 949 F.2d 402, 22 USPQ2d 1077 (Fed. Cir. 1991).
Regarding Appellant's arguments about lack of a
specific teaching and not making the combination due to lack of
adequate size of storage, we find that a specific teaching is not
essential to establish obviousness for this claimed invention.
The test for obviousness is whether references would have
suggested doing what Appellant has done. In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). Thus, the absence of
express suggestion or motivation in the applied art is not alone
determinative. The prior art need not suggest solving the same
problem set forth by appellants. In re Dillon, 919 F.2d 688,
692-693, 16 USPQ2d 1897, 1901(Fed. Cir. 1990) (in banc)
(overruling in part In re Wright, 848 F.2d 1216, 1220, 6 USPQ2d
1959, 1962 (Fed. Cir. 1988)), cert. denied, 500 U.S. 904 (1991).
Thus, it is sufficient for obviousness that the artisan would
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have found it obvious to use digital storage means of adequate
size in the form of a CD-ROM in making the suggested combination
of Hashimoto and Yamamoto.
Appellant further advances the argument that secondary
factors should be considered to decide the issue of obviousness
as the suggested combination is not clearly obvious. Appellant
offers for such secondary factors: (1) satisfaction of a long-
felt need, (2) acclaim by the community, and (3) grant of an
award under "Innovations in American Government" program [brief,
pages 15 to 18].
The Examiner responds by discussing that there was no
direct relationship shown between the criteria used in
establishing the grant of a patent and the secondary evidence
presented, and in fact the two employed different evaluating
criteria [answer, pages 18 to 20].
First of all, we note that, as we found above, this is
a situation where obviousness is supported by the applied prior
art, thereby making the secondary evidence necessary for
determining nonobviousness. We have considered the positions of
the parties as to the presented secondary evidence. It is our
view that there must be some connection between the industrial
market, or community related success, and the patentability of
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the invention. Such demonstrated success in the community
recognition and the government award program may be the result of
numerous worthwhile criteria, yet very different from the
criteria for granting a patent. The purpose of secondary
considerations is to elucidate the connection between the
invention and some secondary element(s) which alerts the
reviewing party that the presumptively obvious invention claimed
may not have been obvious. Without a demonstrable connection,
this point is lost. Thus, we find that the offered secondary
factors are not relevant to the question of obviousness in this
case.
For the rationale above, we sustain the rejection of
claim 1 under 35 U.S.C. § 103 as being unpatentable over
Hashimoto and Yamamoto. Since claims 2 through 7 are in the same
grouping, they fall with claim 1. Therefore, the rejection of
claims 2 through 7 on the same ground is also sustained.
In conclusion, we affirm the Examiner’s final rejection
of claims 1 through 7 under 35 U.S.C. § 103 as being unpatentable
over Hashimoto and Yamamoto.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
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