Ex Parte Orbach

Board of Patent Appeals and Interferences

Mar 24, 2009

10424183 (B.P.A.I. Mar. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JULIAN J. ORBACH
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Appeal 2008-5321
Application 10/424,183
Technology Center 2600
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Decided:1 March 24, 2009
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and
THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1, 2, 4-6, 8-20, and 23-29. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellant invented an interactive voice response method and system
that receives speech from a communicant, analyzes the received speech to
identify characteristics, e.g., accent, language, or dialect, and uses the
identified characteristics to select a responding voice set that includes stored
verbal responses in the identified language or dialect.2 Claim 1 is
illustrative:

1. A method for tailoring responses to a communicant, comprising:

receiving a first speech sample from a communicant;

analyzing said speech sample to detect at least a first speech
characteristic of said first speech sample, wherein said at least a first
speech characteristic includes at least one of an accent, language or
dialect; and

selecting a voice response set based on said at least a first detected
speech characteristic, wherein said selecting a response based on said
detected speech characteristic comprises:

determining a communicant attribute comprising an identified
native language or dialect from said at least a first detected speech
characteristic; and

2 See generally Spec. 2:19-21; 3:3-8; 6:8 – 7:21; 8:9-14.
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selecting a response set appropriate to said determined
communicant attribute, wherein said selected response set includes
stored verbal responses in the identified native language or dialect.

The Examiner relies on the following prior art references to show
unpatentability:
O’Sullivan US 5,493,608 Feb. 20, 1996

Bohacek US 6,411,687 B1 June 25, 2002

Brown US 6,603,838 B1 Aug. 5, 2003
(filed May 31, 2000)

1. The Examiner rejected claims 1, 2, 4-6, 8-17, 19, 20, and 23-29
under 35 U.S.C. § 103(a) as unpatentable over O’Sullivan and
Bohacek (Ans. 3-7).
2. The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as
unpatentable over O’Sullivan, Bohacek, and Brown (Ans. 7).
Rather than repeat the arguments of Appellant or of the Examiner, we
refer to the Brief and the Answer3 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments that Appellant could have made but did not make in
the Brief have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

3 Appellant did not file a Reply Brief. Throughout this opinion, we,
therefore, refer to the Appeal Brief filed Dec. 29, 2007, and the Examiner’s
Answer mailed Apr. 17, 2008.
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Appellant’s Arguments
Appellant separately addresses the independent claims 1, 15, 23, and
26, and also separately addresses dependent claims 6, 8, and 18. The
remaining rejected claims are not separately addressed. Appellant,
accordingly, has waived any argument regarding the patentability of those
claims within a ground of rejection that are not separately addressed. See 37
C.F.R. § 41.37(c)(1)(vii). We separately address the rejection of the
independent claims, and also separately address the rejections of dependent
claims 6, 8, and 18.

ISSUES
Has Appellant shown that the Examiner erred in combining
O’Sullivan and Bohacek to reject claims 1, 15, 23, and 26 under
§ 103? Further, has Appellant shown that the Examiner erred in
combining O’Sullivan, Bohacek, and Brown to reject claim 18 under
§ 103? The issues turn on whether the Examiner has provided
articulated reasoning with some rational underpinning to support the
legal conclusions of obviousness.

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:
O’Sullivan
1. O’Sullivan discloses an interactive voice response system and
method that is automated to measure the speed of a caller in
responding to instructions or communicated information by
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depressing a keypad button or speaking a response. O’Sullivan
uses the measured response speeds to adjust rates for playing
recorded voice messages (O’Sullivan, Abstract; col. 2, l. 45-col. 3,
l. 15; col. 5, l. 41-col. 6, l. 56).
Bohacek
2. Bohacek discloses an automated interactive voice response system
and method that analyzes received caller speech samples to
determine speech characteristics and to connect the caller to an
attendant agent selected to match the determined caller speech
characteristics (Bohacek, Abstract; col. 1, ll. 45-60).
3. In one embodiment, Bohacek’s automated interactive voice
response system and method includes a speaker analyzer to
monitor and analyze phonemes and other detected caller speech
characteristics to identify data capable of indicating accent,
potential language preference, age, gender, and mood, i.e.,
temperament of the caller. These data identifications are
processed by a mood logic unit programmed with logic, such as a
neural net device, to make determinations of caller accent,
potential language preference, age, gender, and mood. The
determinations are used to select an appropriate attendant agent,
by reason of accent, language, age, gender, and identified caller
mood, for communicating with an analyzed caller (Bohacek, col. 3
ll. 1-59).

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Brown
4. Brown discloses a voice messaging system that receives and
stores caller voice messages for users of the messaging system.
Brown’s voice messaging system also stores messages that are not
received from a caller for a user, i.e., non-system messages. A
non-system message can be a recorded advertisement that is
played to a selected user based on information about the user,
including age, sex, zip code, and preferred language (Brown,
Abstract; col. 1, l. 65-col. 2, l. 9; col. 9, l. 6-col. 10, l. 38).

PRINCIPLES OF LAW
An Examiner in rejecting claims under 35 U.S.C. § 103 must establish
a factual basis to support a legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073 (Fed. Cir. 1988). In doing so, the Examiner must make
the factual determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17 (1966).
To address obviousness questions involving combinations of known
elements, the Supreme Court explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., Inc., 396 U.S. 57 (1969)] are
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illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 127 S. Ct. 1727, 1740 (2007).
If the claimed subject matter cannot be fairly characterized as
involving the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement, a holding of obviousness can be based on a showing that
“there was an apparent reason to combine the known elements in the fashion
claimed.” Id. at 1740-41. Such a showing requires:
‘some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness’ . . . [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. at 1741 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
When the Examiner’s burden to establish a factual basis for
supporting the conclusion of obviousness is met, the burden shifts to the
Appellant to overcome the Examiner’s 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 (Fed. Cir. 1992). Arguments for
nonobviousness, however, must address combined references as a whole and
not separately consider the references without the combination being
addressed. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

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ANALYSIS
Obviousness Rejection over O’Sullivan and Bohacek
Claims 1, 2, 4, 5, and 9-144
We find no error in the Examiner’s obviousness rejection of
representative claim 1 based on the collective teachings of O’Sullivan and
Bohacek.
The Examiner relies on O’Sullivan for teaching an interactive voice
response system that (1) analyzes received communicant speech samples to
detect a speech characteristic, and (2) uses the detected speech characteristic
to select a response (Ans. 3). We also find that O’Sullivan amply teaches
detection of a speech characteristic to select a response. Specifically, we
find that O’Sullivan teaches use of communicant-measured response speeds
as a detected speech characteristic for selecting a response, i.e., adjusting
rates for playing back voice messages (FF 1).
Appealed claim 1, though, explicitly recites a detected “speech
characteristic includ[ing] at least one of an accent, language or dialect” and a
“selected response set includ[ing] stored verbal responses in the identified
native language or dialect.” The Examiner acknowledges this claim 1
recited subject matter by indicating that “O’Sullivan does not specifically
disclose the determined communicant attribute is at least one of foreign
accent, native language, gender or age so as to provide appropriate responses
to the caller” (Ans. 3). The Examiner addresses these acknowledgements

4 Appellant argues all of these claims together as a group. See Br. 12-13.
Appellant, however, argues claims 6 and 8 separately on different bases (Br.
13-14). Accordingly, we (1) select independent claim 1 as representative of
the group comprising claims 1, 2, 4, 5, and 9-14, and (2) treat claims 6 and 8
separately. See 37 C.F.R. § 41.37(c)(1)(vii).
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concerning O’Sullivan with findings that “Bohacek discloses a call
processing system in which a speaker analyzer outputs a signal indicative of
the speaker’s age, sex, accent, language, etc. (col. 3, lines 58-59; Figure 5)
and calls are routed based on the caller’s speaker characteristics (see col. 1,
lines 45-60; col. 3, lines 1-59)” (Id.). We concur with these findings
concerning Bohacek’s teachings (FF 2 and 3).
The Examiner’s reason to combine the references is that:
O’Sullivan and Bohacek recognize the advantages of providing a
voice response system that accounts for caller characteristics and
preferences and one of ordinary skill would clearly recognize the
desirability of adapting the response set of O’Sullivan to provide
voice responses to the user that are selected in accordance with the
identified language preference of the caller, as specifically taught by
Bohacek

(Ans. 9-10). Indeed, we find O’Sullivan teaches determining a caller speech
characteristic and using the determined characteristic to adjust recorded
voice message play back (FF 1), and also that Bohacek teaches determining
caller accent, potential language preference, age, gender, and mood as
characteristics used for matching a caller to an attendant agent having
corresponding characteristics (FF 3). Accordingly, we are persuaded that
there is no error in the Examiner’s findings concerning the references’
teachings and suggestions. Nor are we persuaded of error in the Examiner’s
reliance on these findings in reasoning that ordinarily skilled artisans would
modify O’Sullivan using Bohacek’s teachings to determine speech
characteristics that include accent or potential language preference. This
conclusion has a rational underpinning in our view.
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In view of our findings regarding the cited prior art references (FF 1-
3), and the Examiner’s reasoning with rational underpinning to support
combining the references (Ans. 9-10), we are not persuaded by Appellant’s
arguments; namely, that the “references do not teach, suggest or describe
selecting a response set that is appropriate to a determined communicant
attribute and that includes stored verbal responses in an identified native
language or dialect as claimed” (Br. 13).
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 1. Therefore, we will
sustain the Examiner’s rejection of that claim, and claims 2, 4, 5, and 9-14
that fall with claim 1.
Claims 6 and 8
In addition to asserting that claims 6 and 8 are patentable for the same
reasons as their base independent claim 1, Appellant further argues that
these claims are patentable because they “specify that the selected response
set includes stored verbal responses in an identified native language of the
communicant, and that the identified native language is different than the
language of the speech sample” (Br. 13). Claims 6 and 8 indeed do recite a
“selected response set includ[ing] stored verbal responses in said identified
native language … [that] is different than a language of said speech sample.”
The Examiner acknowledges Appellant’s argument and responds by
referencing Bohacek’s teaching for determining a caller’s language
preference and selecting an attendant agent in accord with the determined
caller’s language preference (Ans. 10). As previously indicated, we concur
in the Examiner’s findings concerning Bohacek’s teachings and suggestions
regarding identification of a caller’s language preference (FF 2 and 3).
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Identifying a caller’s language preference inevitably necessitates choosing
from more than one language, and consequently Bohacek’s language
preference would include a language that is different from the speech sample
language.
For reasons previously indicated, we are not persuaded by Appellant’s
arguments. Furthermore, in combining the teachings of O’Sullivan with
Bohacek, we find that the Examiner provides articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness
(Ans. 9-10).5 Appellant has not persuasively rebutted the Examiner’s
position—a position that we find reasonable. Therefore, Appellant has not
persuaded us of error in the Examiner’s rejection of claims 6 and 8. We will
therefore sustain the Examiner’s rejection of these claims.
Claims 15-17, 19, and 206
Appellant substantively reiterates the same arguments (Br. 14-15) we
considered with respect to claims 1, 6, and 8 over O’Sullivan and Bohacek.
Therefore, for the same reasons, we will sustain the Examiner’s rejection of
claims 15-17, 19, and 20.
Claims 23, 24, and 257

5 See KSR, 127 S. Ct. at 1741.
6 Appellant argues these claims together as a group. See Br. 14-15.
Accordingly, Appellant waived any argument regarding the separate
patentability of these claims associated with this ground of rejection. See 37
C.F.R. § 41.37(c)(1)(vii).

7 Appellant argues these claims together as a group. See Br. 15.
Accordingly, Appellant waived any argument regarding the separate
patentability of these claims associated with this ground of rejection. See 37
C.F.R. § 41.37 (c)(1)(vii).
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Appellant again substantively reiterates the same arguments (Br. 15)
we considered with respect to claims 1, 6, and 8 over O’Sullivan and
Bohacek. Therefore, for the same reasons, we will sustain the Examiner’s
rejection of claims 23, 24, and 25.
Claims 26- 298
Appellant continues in substantively reiterating the same arguments
(Br. 15-16) we considered with respect to claims 1, 6, and 8 over O’Sullivan
and Bohacek. Therefore, for the same reasons, we will sustain the
Examiner’s rejection of claims 26-29.

Obviousness Rejection over O’Sullivan, Bohacek, and Brown
Claim 18
Claim 18 depends from base independent claim 15, and recites that a
response message comprises an “advertisement … delivered in said native
language of said communicant.”
Appellant does not raise new arguments directed to O’Sullivan and
Bohacek, nor does Appellant repeat or reference prior made arguments
directed to O’Sullivan and Bohacek (Br. 16-17). Instead, Appellant argues
that Brown “does not disclose detecting an accent or a language associated
with a speech sample to determine a native language of the communicant

8 Appellant argues these claims together as a group. See Br. 15-16.
Accordingly, Appellant waived any argument regarding the separate
patentability of these claims associated with this ground of rejection. See 37
C.F.R. § 41.37(c)(1)(vii).

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providing the speech sample” (Br. 16). Having made this argument,
Appellant asserts that “the Brown reference does not make up for the
deficiencies of the other references with respect to all of the elements of the
method recited by Claim 18” (Br. 16-17).
The Examiner acknowledges this argument and assertion, and
indicates that “O’Sullivan and Bohacek do not specifically disclose the
response comprises a message, which comprises an advertisement[, but]
Brown discloses a voice mail system that … selects and plays to a user a
non-system message (an advertisement) that is selected based on information
about the user (sex, age, location of residence) at col. 9, line 6 to col. 10, line
38)” (Ans. 7).
In accord with the Findings of Fact section above, we not only concur
with the Examiner’s findings concerning reference teachings and
suggestions, but further find that Brown teaches a voice messaging system
capable of playing a recorded advertisement selected on the basis of
information about a user, including age, sex, zip code, and preferred
language (FF 4).
Appellant rests the submitted argument on the assertion that “the
Brown reference does not make up for the deficiencies of the other
references with respect to all of the elements of the method recited by Claim
18 …” (Br. 16-17). Appellant does not dispute what the Examiner indicates
that Brown teaches and suggests. Further, Appellant does not address the
Examiner’s combination of references for the prima facie obviousness
rejection as is required.9 Concomitantly, Appellant does not submit

9 See Merck, 800 F.2d at 1097.
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argument or evidence to rebut the Examiner’s reasoning and rationale for
combining the references; namely,
It would have been obvious to one of ordinary skill at the time
of the invention to modify the system of O’Sullivan to
implement the user specific targeted advertising as taught by
Brown, for the purpose of providing the user of the calling
center/system with user/location specific information to
enhance usability and customer convenience

(Ans. 7). In view of the references’ collective teachings and the Examiner’s
reasoning for their combination, we see no error in the Examiner’s position
that ordinarily skilled artisans would modify O’Sullivan to incorporate
recorded advertisements in a user preferred language. The Examiner’s
obviousness conclusion is, in our view, amply supported by articulated
reasoning with rational underpinning.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of claim 18. Therefore, we will sustain the
Examiner’s rejection of that claim.

CONCLUSIONS
Appellant has not shown that the Examiner erred in rejecting claims 1,
15, 23, and 26 under § 103 over O’Sullivan and Bohacek, or in rejecting
claim 18 over O’Sullivan, Bohacek, and Brown. Appellant did not show
that the Examiner failed to provide articulated reasoning with some rational
underpinning for the combination of references to support the legal
conclusions of obviousness.

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DECISION
We have sustained the Examiner’s rejections with respect to all claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1, 2, 4-6, 8-
20, and 23-29 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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