Ex Parte Pandey et al

Patent Trial and Appeal Board

Jun 14, 2016

12420877 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/420,877 0410912009
25537 7590 06/16/2016
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
FIRST NAMED INVENTOR
Siddharth Pandey
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20080490 3340
EXAMINER
ALCON, FERNANDO
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
06/16/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SID DHAR TH PANDEY and
ENRIQUE RUIZ VELASCO FONSECA
Appeal2014-004989
Application 12/420,877
Technology Center 2400
Before JOHN A. JEFFERY, MONICA S. ULLAGADDI, and
JOYCE CRAIG, 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 1-5, 7-13, and 15-21. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants' invention includes a communication device, such as a set-
top box (STB), that can (1) receive a voice command associated with
information displayed on a television, and (2) transmit an instruction
message to a user's telephone device to initiate a call or send a message
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Application 12/420,877
based on the particular command. See generally Abstract; Spec. if 7. Claim
1 is illustrative:
1. A method, comprising:
receiving, at a set top box, data from a service provider,
the data including an interactive element;
outputting, by the set top box, the data to an output device;
receiving, at the set top box, a voice command from a user,
the voice command being associated with the interactive
element;
generating, by the set top box, a text message based on the
voice command; and
transmitting, by the set top box and via a wireless protocol,
the text message and an instruction to a user device associated
with the user, in response to the voice command, wherein the
instruction indicates that the user device is to transmit the text
message to an identifier associated with the interactive element
and wherein the user device is located remotely from the set top
box.
THE REJECTIONS
The Examiner rejected claims 1-5, 7-13, and 15-21under35 U.S.C.
§ 103(a) as unpatentable over Al-Karmi (US 2008/0134278 Al; June 5,
2008), Slotznick (US 2005/0282582 Al; Dec. 22, 2005), and Stomakhin (US
2009/0070828 Al; Mar. 12, 2009). Ans. 3-10. 1
1 Throughout this opinion, we refer to the Appeal Brief filed September 25,
2013 ("Br.") and the Examiner's Answer mailed January 17, 2014 ("Ans.").
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CONTENTIONS
The Examiner finds that Al-Karmi's set-top box (STB) (1) outputs
data, namely a list of phone numbers, to an "output device" (television), and
(2) receives a command from a user associated with an on-screen interactive
element by the user scrolling and selecting a phone number from the list.
Ans. 3--4 (citing Al-Karmi i-fi-151-52). The Examiner also finds that Al-
Karmi not only transmits an instruction to a user device indicating that a
telephone call is to be placed from the user device, but also uses voice
commands associated with the interactive element. Ans. 4.
The Examiner acknowledges that Al-Karmi's STB does not receive
data, including an interactive element, from a service provider, but cites
Slotznick's sending a telephone number over a vertical blanking interval
(VBI) signal as teaching this feature. Ans. 3--4. The Examiner also
acknowledges that the Al-Karmi/Slotznick STB does not generate a text
message and instruct the user to transmit the text message to an identifier
associated with the interactive element, but cites Stomakhin as teaching
these features in concluding that the claim would have been obvious. Ans.
5---6.
Appellants argue that the Examiner's reliance on Stomakhin is in error
because Stomakhin's STB does not generate a text message based on a voice
command received from a user, but rather sends messages based on
predefined "triggering events." Br. 8-10. Appellants add that Slotznick's
STB does not receive a voice command and generate a text message based
on that command as claimed, but rather Slotznick's TV phone-a device
external to the STB--recognizes speech. Br. 10-11. Appellants argue that
Al-Karmi is also deficient in this regard, for Al-Karmi's STB merely
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forwards digitized voice signals to a mobile telephone for processing. Br.
11-12.
Appellants add that ordinarily skilled artisans would not have
combined the cited references as the Examiner proposes given their
unrelated functions, purposes, and structures, and the Examiner's alleged
motivation to do so is merely conclusory and based on hindsight. Br. 12-14.
Appellants argue other recited limitations summarized below.
ISSUES
I. Under§ 103, has the Examiner erred by finding that Al-Karmi,
Slotznick, and Stomakhin collectively would have taught or suggested an
STB:
( 1 )(a) receiving a voice command associated with an interactive
element, and (b) generating a text message based on that command as recited
in claim 1?
(2)(a) receiving and identifying a second voice command, and
(b) performing a control action with respect to the output device based on
the identified second voice command.as recited in claim 1 O?
II. Is the Examiner's proposed combination supported by articulated
reasoning with some rational underpinning to justify the Examiner's
obviousness conclusion?
ANALYSIS
Claims 1-5, 7-9, 11-13, 15, 16, 18, 19, and 21
We begin by noting that only one of the three independent claims,
namely claim 1, recites an STB. Yet it is the functionality of the recited
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Application 12/420,877
STB that is at the core of this dispute. Moreover, Appellants define an STB
quite broadly "to include any device used to receive signals from an external
source and output the signals for viewing or playing." Spec. i-f 9. Notably,
independent claims 11 and 19 do not recite an STB, but are said to pertain to
elements of the disclosed "communication device" 110 which, as noted in
paragraph 9 of the Specification, may include an STB. See Br. 5 (referring
to communication device 110 in Figure 1 in connection with the device of
claim 11 ); see also Br. 6 (referring to the communication device's memory
230 in Figure 2).
Turning to the rejection, it is undisputed that Stomakhin's STB 116 in
Figure IA generates text messages, namely short message service (SMS)
messages, responsive to "triggering events." See Ans. 5, 11 (citing
Stomakhin i-fi-116-17, 19, 24); see also Br. 10. To this end, the STB receives
data or commands associated with these "triggering events" that causes the
STB to generate text messages, for example, via a received request or an
internal periodic schedule. See Stomakhin i-f 19.
Although these "triggering events" are not user voice commands, we
nonetheless see no error in the Examiner's position that it would have been
obvious for an STB to generate text messages based on received voice
commands, particularly in light of Al-Karmi's controlling functions using
voice-activated commands that are at least received at the STB's
microphone 275 as the Examiner indicates. Ans. 4, 13 (citing Al-Karmi
i-f 57; Fig. 2). Even assuming, without deciding, that Al-Karmi's STB only
forwards the user's voice signals to the radiotelephone 104 for further
processing as Appellants contend (Br. 11-12), Al-Karmi nonetheless teaches
the fundamental concept of controlling functions via user voice commands
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received at an STB. These voice commands are effectively "triggering
events," for they trigger associated functions in response to the commands.
Providing such known voice-activated commands in lieu of, or in
conjunction with, Stomakhin's triggering events that cause the STB to
generate text messages merely applies "a known technique to a piece of
prior art ready for the improvement" to yield a predictable result-an
obvious enhancement. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 417
(2007). To the extent that Appellants' position is based on the cited
references' individual shortcomings in this regard, such arguments are
unpersuasive where, as here, the obviousness rejection is based on the cited
references' collective teachings. See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Accord Ans. 10-11 (emphasizing that the
combination of cited references disclose the claimed features-not any
individual reference).
To be sure, Slotznick's TV phone 321-a device external to the STB
317-recognizes speech via module 351 in the Figure 5 embodiment as
Appellants indicate. Br. 10-11. This argument, however, is inapposite to
the Examiner's position, for the Examiner relies principally on Al-Karmi's
STB for receiving voice-activated commands. See Ans. 12. Nor are we
persuaded of error in the Examiner's position that an STB's generating text
messages responsive to received voice commands would have been at least
an obvious variation in light of the cited references' collective teachings.
Lastly, despite Appellants' arguments to the contrary (App. Br. 12-
14), we find no error in the Examiner's articulated reason to combine the
references. Ans. 5-6, 13-14. First, Appellants' contention that no part of
any cited reference provides objective motivation for the combination (Br.
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12) is unavailing, for it is well settled that a reason to combine references
need not be found in the references sought to be combined, but may be
found in any number of sources, including common knowledge, the prior art
as a whole, or the nature of the problem itself. DyStar Textilfarben GmbH &
Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir.
2006).
Prior art is analogous if it is ( 1) from the same field of endeavor
regardless of the problem addressed, or (2) reasonably pertinent to the
particular problem with which the inventor is involved. In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004). The analogous art test, then, does not ask
whether the prior art references are analogous to each other as Appellants
seem to suggest (see Br. 12-14), but rather asks whether the references are
analogous to the claimed subject matter. See id; see also In re Kahn, 441
F.3d 977, 986-87 (Fed. Cir. 2006).
Here, we see no error in the Examiner's finding that the cited
references pertain to STB devices communicating with mobile phones (Ans.
14}-functionality that is not only in Appellants' field of endeavor of STB-
based communications with remote user devices, but also reasonably
pertinent to Appellants' problem of transmitting messages from a STB to a
user device upon user command.
Nor have Appellants shown that the prior art teaches away from
combining the cited references as the Examiner proposes, or that the
proposed combination would somehow render the prior art unsatisfactory for
its intended purpose. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
To the extent that Appellants' combinability argument is so premised (see
Br. 12-14), the record lacks evidence to substantiate such unsuitability. The
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Examiner's proposed combination is, therefore, supported by articulated
reasoning with some rational underpinning to justify the Examiner's
obviousness conclusion.
Accordingly, we are not persuaded that the Examiner erred in
rejecting claim 1, and claims 2-5, 7-9, 11-13, 15, 16, 18, 19, and 21 not
argued separately with particularity.
Claims 10, 17, and 20
We also sustain the Examiner's rejection of claim 10 reciting that the
STB (1) receives and identifies a second voice command, and (2) performs a
control action with respect to the output device based on the identified
second voice command. Despite Appellants' arguments to the contrary (Br.
14--16), Appellants do not persuasively rebut the Examiner's position that
Al-Karmi's STB (1) receives a second voice command via microphone 275,
namely any voice command after the first voice command; (2) identifies the
second voice command to forward the corresponding digitized voice signals
to the mobile phone; and (3) performs a "control action" with respect to the
output device, namely forwarding the voice signals to the phone. Ans. 14--
15 (citing Al-Karmi i-f 57; Fig. 2).
Appellants' arguments regarding Slotznick's shortcomings in this
regard (Br. 15) are inapposite to the Examiner's reliance on Al-Karmi for
this feature. Appellants' arguments regarding Al-Karmi (Br. 15-16) are
likewise unavailing, for they are not commensurate with the scope of the
claim which does not preclude the Examiner's interpretation.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 10, and claims 17 and 20 not argued separately with particularity.
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CONCLUSION
The Examiner did not err in rejecting claims 1-5, 7-13, and 15-21
under§ 103.
DECISION
The Examiner's decision rejecting claims 1-5, 7-13, and 15-21 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)(l )(iv).
AFFIRMED
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