Ex Parte Paul

Patent Trial and Appeal Board

Sep 23, 2013

11162520 (P.T.A.B. Sep. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TERRANCE D. PAUL
____________

Appeal 2011-008738
Application 11/162,520
Technology Center 3700
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
JOHN W. MORRISON, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1-12, 14, 15, 17, 18, and 20-39. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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Claimed Subject Matter
The claimed subject matter relates “in general, to education
enhancement software and systems, and, more particularly, to software
systems and methods to monitor speech to enhance the development of
vocabulary and language ability.” Spec. 1, [Para 2]. Claim 1, reproduced
below, is illustrative of the appealed subject matter.
1. A method of supporting language development
comprising:
capturing sound in a natural language environment, using
at least one sound capture device which is located in the natural
language environment;
developing a sound signal from the captured sound,
wherein the sound signal comprises components representing
one or more features that affect a language development
environment;
analyzing the sound signal to determine at least one
characteristic of the language development environment,
wherein at least one characteristic indicates a qualitative or
quantitative assessment of the one or more features;
comparing the determined characteristic to a preselected
standard or change over time; and
reporting results.

Evidence Relied Upon
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Vildgrube 4,464,119 Aug. 7, 1984
Russell 5,679,001 Oct. 21, 1997
Tallal 6,071,123 Jun. 6, 2000
Shpiro 2002/0150869 A1 Oct. 17, 2002
Petrushin 2003/0033145 A1 Feb. 13, 2003
Clapper 2003/0120846 A1 Jun. 26, 2003
Gupta 7,302,389 B2 Nov. 27, 2007
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Morris, Suzanne Evans, Pre-Speech Assessment Scale: A Rating Scale for
the Measurement of Pre-Speech Behaviors from Birth through Two Years, J.
A. Preston Corp., 1982 (hereinafter “Morris”).
Fell, Harriet J., et al., Automatic Babble Recognition for Early Detection of
Speech Related Disorders, Proceedings of the Third International ACM
SIGCAPH Conference on Assistive Technologies, April 15-17, 1998
(hereinafter “Fell”).

Schötz, Susanne, Prosodic Cues In Human and Machine Estimation of
Female and Male Speaker Age, The XIIth Swedish Phonetic Conference,
May 26-28, 2003 (hereinafter “Schötz”).

Nwe, Tin Lay, et al., Speech emotion recognition using hidden Markov
Models, Speech Communication 41, pp. 603-623, Jun. 30, 2003 (hereinafter
“Nwe”).

Gerosa, Matteo, et al., Acoustic variability and automatic recognition of
children's speech, ITC-IRST, Centro per la Ricerca Scientifica e
Tecnologica, 1-38050 Povo, Trento, Italy; accepted: Jan. 11, 2007
(hereinafter “Gerosa”).

Metze, Florian, et al., Comparison of Four Approaches to Age and Gender
Recognition For Telephone Applications, ICASSP 2007 (hereinafter
“Metze”).

Schuller, Björn, et al., The INTERSPEECH 2009 Emotion Challenge,
International Speech Communication Association (ISCA), pp. 312-316,
2009 (hereinafter “Schuller”).

Rejections
The following Examiner’s rejections are before us for review:
I. claims 9-11, 20, 31, and 37 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement;
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II. claims 1, 2, 4-9, 12, 35, and 36 under 35 U.S.C. § 103(a) as
unpatentable over Gupta and Fell;1
III. claims 3 and 39 under 35 U.S.C. § 103(a) as unpatentable over
Gupta, Fell, and Morris;
IV. claims 14, 15, and 18 under 35 U.S.C. § 103(a) as unpatentable
over Gupta and Russell;
V. claims 10 and 31-36 under 35 U.S.C. § 103(a) as unpatentable
over Gupta, Fell, and Russell;
VI. claim 17 under 35 U.S.C. § 103(a) as unpatentable over Gupta,
Petrushin, and Vildgrube;
VII. claims 11 and 37 under 35 U.S.C. § 103(a) as unpatentable over
Gupta, Fell, Russell, Petrushin, and Vildgrube;2
VIII. claim 20 under 35 U.S.C. § 103(a) as unpatentable over Shpiro,
Gupta, and Morris;

1 We included claim 5 in the claim listing of this ground of rejection,
because the Examiner specifically addresses claim 5 in the body of the
rejection. See Ans. 7. The Examiner’s omission of claim 5 from the ground
of rejection on page 6 of the Answer appears to be a typographical error. In
addition, although the Examiner does not specifically address claims 35 and
36 in the body of the rejection and the inclusion of claims 35 and 36 in the
ground of rejection on page 6 of the Answer may be a typographical error,
we will address the rejection of claims 35 and 36 under this ground of
rejection infra for the sake of completeness.
2 We consolidated the Examiner’s rejections of claims 11 and 37 because
both rejections are based on the combination of Gupta, Fell, Russell,
Petrushin, and Vildgrube. See Ans. 14 and 15. However, the inclusion of
Russell in the ground of rejection for claim 11 may be a typographical error
as the Examiner does not appear to rely on Russell for any teachings in the
body of the rejection of claim 11 (see Ans. 14) and claim 11’s parent claim 1
was only rejected based on Gupta and Fell (see Ans. 6; see also Br., Clms.
App’x).
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IX. claim 38 under 35 U.S.C. § 103(a) as unpatentable over Gupta,
Russell, and Morris;
X. claims 21-26, 28, and 29 under 35 U.S.C. § 103(a) as
unpatentable over Gupta, Fell, Russell, and Morris;
XI. claim 27 under 35 U.S.C. § 103(a) as unpatentable over Gupta,
Fell, Russell, Morris, and Clapper; and
XII. claim 30 under 35 U.S.C. § 103(a) as unpatentable over Gupta,
Fell, Russell, Morris, and Tallal.3

OPINION
Rejection I – Lack of Enablement
Claims 9 and 31
Claim 9 depends from independent claim 1 and recites that “the act of
analyzing comprises estimating a developmental stage represented by
utterances that occur in the sound signal.” Br., Clms. App’x. Emphasis
added. Independent claim 31 recites “a reporting component coupled to the
speech processor and operable to report metrics that quantify the identified
characteristics and estimate a developmental stage associated with the
captured vocalizations and utterances.” Id. Emphasis added.
The Examiner determines that the Specification “does not provide a
teaching on how one of ordinary skill[] in the art can make or implement”
the feature of “‘estimating the developmental stage represented by the
utterance in the sound signal.’” Ans. 5.

3 The Examiner’s ground of rejection on page 21 of the Answer has the last
reference listed as “Taller,” instead of “Tallal,” which appears to be a
typographical error.
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Appellant argues Specification [Para 45], [Para 55], [Para 70], and
[Para 71] support that the features of claims 9 and 31 are enabled. Br. 14.
More particularly, with reference to [Para 70] and [Para 71], Appellant notes
that “the specification states that normative charts ‘involve multiple
dimensions and combination[s] of dimensions’ and that the ‘measured
characterics’ may be compared to the normative charts.” Id. With respect to
[Para 45] and [Para 55], Appellant also note that “the specification describes
what these measured characteristics may be.”
The Examiner responds that the “[S]pecification fail[s] to show any
algorithm that performs the claimed function,” and “while paragraph 70
mentions some [type] of normative graph similar to a height and weight
[chart], the [S]pecification do[es] not show any graph that can be used to
measure language development.” Ans. 22. The Examiner notes that the
Specification does not show how one of ordinary skill in the art can modify
the height and weight chart to “‘represent[] normal ranges of language
development, including pre-linguistic development.’” Id. In addition, with
respect to Appellant’s notation that Specification [Para 45] and [Para 55]
provide measured characteristics that can be used to perform analysis, the
Examiner states that the Specification fails to provide any method or
algorithm that can be used to perform the analysis. Id.
The Examiner also responds that none of Specification [Para 45],
[Para 55], [Para 70], and [Para 71] relied on by the Appellant “provides any
information that can guide one of ordinary skill[] in the art to create [the]
speech processor” of claim 31’s reporting step. Ans. 23. The Examiner
explains that “the problem of ‘estimating a developmental stage represented
by utterance that occurs in the sound signal’ is still considered to be a
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research area that is still not solved” as evidenced by any one of Schötz,
Gerosa, and Metze. Ans. 23-24. Thus, “the [E]xaminer concludes that one
of ordinary skill[] in the art would have to select multiple paths in order to
make or use the [estimating] feature,” “none of these paths provide a clear
and effective answer,” and “the presence of multiple and ineffective path[s]
are signs of undue experimentation.” Ans. 24.
The test for compliance with the enablement requirement in the first
paragraph of 35 U.S.C. § 112 is whether the disclosure, as filed, is
sufficiently complete to enable one of ordinary skill in the art to make and
use the claimed invention without undue experimentation. See In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988). “Enablement is not precluded by the
necessity for some experimentation . . . . However, experimentation needed
to practice the invention must not be undue experimentation. The key word
is ‘undue,’ not ‘experimentation.’” Id. at 736-37.
To evaluate whether a disclosure would require undue
experimentation, the Federal Circuit has adopted the following factors to be
considered:
(1) the quantity of experimentation needed to make or use the
invention based on the content of the disclosure; (2) the amount
of direction or guidance presented; (3) the existence of working
examples; (4) the nature of the invention; 5) the state of the
prior art; (6) the relative skill of those in the art; (7) the level of
predictability in the art; and (8) the breadth of the claims.
See id. at 737. The examiner’s analysis must consider all the evidence
related to each of these factors, and any conclusion of nonenablement must
be based on the evidence as a whole. Id.
We agree with the Examiner’s that the scope of protection provided
by these claims is not adequately enabled by the description of the invention
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in the Appellant’s Specification. Although Specification [Para 70] states
that “[t]he present invention enables the development of normative charts,”
and Specification [Para 71] states that “[t]he normative charts may be useful
in the detection, diagnosis and treatment of various cond[it]ions,” this does
not adequately establish how to make and use the method of claim 9 and
system of claim 31 which require estimating a developmental stage. In other
words, there is inadequate disclosure concerning how the estimation of the
developmental stage is performed. Thus, the Examiner’s rejection is
sufficient to shift the burden to the Appellant, and Appellant failed to reply
to the Examiner’s conclusion of undue experimentation in the Answer by
showing that one of ordinary skill in the art could have practiced the claimed
invention without undue experimentation, and we are not persuaded by
Appellant’s argument that the Specification enables “estimating a
developmental stage” either represented by utterances that occur in a sound
signal (claim 9) or associated with the captured vocalizations and utterances
(claim 31).
Accordingly, we sustain the Examiner’s rejection of claims 9 and 31
under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement.
Claim 10
Claim 10 depends from independent claim 1 and recites that “the act
of analyzing comprises distinguishing between human-made sounds and
non-human-made sounds in the language environment.” Br., Clms. App’x.
Emphasis added.
The Examiner determines that the Specification “do[es] not provide a
a teaching . . . that can be used by one of ordinary skill[] in the art to
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implement the act of analyzing that is capable of distinguishing between
human and non-human made sound[s].” Ans. 5. Without specifically
addressing claim 10 (i.e., in a paragraph beginning with “[i]n respect to
claims 11 and 37”), Appellant notes that Specification [Para 15] “describes
the resolution of human sound from non-human sound.” Br. 15.
The Examiner responds that the Specification fails to show any
algorithm or give any criteria as to how one of ordinary skill in the art, or a
computer processor, can perform distinguishing human-made sound from
non-human-made sound. Ans. 25. The Examiner’s findings reasonably
establish that the disclosure, as filed, is not sufficiently complete to enable
one of ordinary skill in the art to make and use the claimed invention
without undue experimentation. Therefore, the Appellant did not establish
error in the Examiner’s rejection.
Accordingly, we sustain the Examiner’s rejection of claim 10 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.
Claim 20
Independent claim 20 is directed to a method of teaching vocabulary,
including, inter alia, the step of “monitoring the student’s communications
in a natural language environment, wherein the student is not monitored
alone, but in the context of various other people, using at least one sound
capture device which is located in the natural language environment, over a
period of time to identify indirect teaching of the vocabulary words.” Br.,
Clms. App’x. Emphasis added.
The Examiner determines that the Specification “do[es] not provide a
a teaching [as to] how one of ordinary skill[] in the art can make or
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implement [the] feature” of identifying indirect teaching of the vocabulary
words. Ans. 5.
Appellant generally argues that “the Examiner has only identified
conclusory reasoning for non-enablement and that no findings of fact have
been made” so that “[t]he burden to articulate a prima facie case has not
been met,” and “the burden to rebut with evidence and/or argument has not
yet shifted to Appellant.” Br. 12.
We agree with Appellant. The PTO bears the initial burden when
rejecting claims for lack of enablement.
When rejecting a claim under the enablement requirement of
section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by
the description of the invention provided in the specification of
the application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the
scope of enablement. If the PTO meets this burden, the burden
then shifts to the applicant to provide suitable proofs indicating
that the specification is indeed enabling.
In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re
Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)).
In the present case, the Examiner has failed to provide a reasonable
explanation as to why the scope of protection provided by claim 20 is not
adequately enabled by the description of the invention provided in
Appellant’s Specification. In particular, the Examiner has failed to
sufficiently show why Appellant’s disclosure would require undue
experimentation in order to make and/or use the claimed invention, in
particular, the feature of identifying indirect teaching of the vocabulary
words. As such, Appellant has shown error in the Examiner’s rejection.
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Accordingly, we do not sustain the Examiner’s rejection of claim 20
under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement.
Claims 11 and 37
Claim 11 depends directly from independent claim 1 and recites that
“the act of analyzing comprises estimating the emotional tone of the
utterances that occur in the sound signal.” Br., Clms. App’x. Emphasis
added. Claim 37 depends indirectly from independent claim 31, and recites
that “the speech processor comprises mechanisms operable to estimate
emotional content of the communication.” Id. Emphasis added.
The Examiner finds that the Specification “do[es] not provide a
teaching . . . that can be used by one of ordinary skill[] in the art of any act
of analyzing that is capable of estimating the emotional content of the
communication.” Ans. 5.
Appellant argues that Specification [Para 41] “describes the analysis
of emotional content including intonation and information related to turn
taking.” Br. 15.
The Examiner responds that the “disclosure disclose[s] that some
language analysis can be used to perform the analysis of the emotional
content,” but does not disclose “any algorithm or steps that can be used by
one of ordinary skill[] in the art to perform analysis [of] the emotional
content of the voice signal.” Ans. 26. The Examiner also responds that
“[A]ppellant’s disclosure do[es] not show . . . any instruction that can be
used by one of ordinary skill[] in the [art] to make or create the speech
processor.” Id. The Examiner additionally responds that the estimating of
emotional tone/content “can be considered a state of the art problem with no
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known solution,” as evidenced by Nwe and Schuller. Ans. 26-27. The
Examiner concludes that “one of ordinary skill[] in the art would have to
select multiple paths in order to make or use the [estimating] feature,” “none
of the[] paths provide a clear and effective answer,” and “the presence of
multiple and ineffective path[s] are signs of undue experimentation.” Ans.
27.
Here, we cannot agree that the Examiner’s conclusion as to undue
experimentation is reasonable. Specification [Para 41] provides a way to
estimate emotional tone/content (i.e., “[b]oth precise and imprecise language
analysis techniques can be used to develop a metric related to the emotional
content.”). Even if it is true that Nwe only provides a 55-79% effectiveness
and Schuller’s precision is only 57-70% as pointed out by the Examiner,
estimating emotional tone/content is still possible. Thus, we are persuaded
by Appellant’s arguments that the Examiner has not established that the
disclosure, as filed, is insufficiently complete to enable one of ordinary skill
in the art to make and use the claimed invention without undue
experimentation.
Accordingly, we do not sustain the Examiner’s rejection of claims 11
and 37 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement.

Rejection II – Obviousness based on Gupta and Fell
The Examiner finds that Gupta discloses “capturing sound in a natural
language environment using at least one capture device that is located in the
natural language environment.” Ans. 6 (citing Gupta, col. 7, ll. 15-25).
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Appellant argues that “Gupta teaches an artificially constrained
interaction between a computer and an individual, where a computer
provides ‘prompts’ to the user ‘to provide spoken inputs in response to a
series of questions’ where ‘each question has a finite number of possible
responses,’” and “the phrase ‘natural language environment’ is inconsistent
with a scripted, automated, interaction between an individual and a
computer.” Br. 16 (citing to Gupta, col. 7, ll. 36-50). More particularly,
Appellant argues that “[a]lthough the patient in Gupta can use the tool in the
privacy of his or her home, the interaction of an individual with a computer
is not a natural language environment,” and “[t]he construction proposed by
the [Examiner] is not consistent with Appellant’s specification, since sitting
at home and the singular act of speaking to a computer would not be
considered a natural language environment” in light of the Specification’s
“multi-person social context where and when language naturally occurs.”
Br. 17.
We are persuaded by Appellant’s argument. In light of Appellant’s
Specification indicating that “by operating in a natural language
environment, as opposed to a clinical, classroom, or other special-purpose
environment,” “the subject is not monitored along, but in the context of the
various other people with which the subject normally interacts,” and “[t]he
subject can be monitored in conversations with a variety of people” (see,
e.g., Spec. 20-21, [Para 63]), one of ordinary skill in the art would interpret
the claim term “natural language environment” to have some sort of
conversational and social interaction component. However, Gupta discloses
a computer-based system having a typical automated attendant application,
wherein the attendant algorithm prompts the user to provide spoken inputs in
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response to a series of questions, each question having a finite number of
possible answers. Although the Examiner pointed to the fact that in Gupta’s
system 100, “the patient can use this tool in the privacy and convenience of
his or her own home” (col. 7, ll. 23-24), we note that Gupta’s disclosure
does not provide for any interaction between the user or patient and other
persons. Thus, we cannot agree that Gupta discloses a natural language
environment when considered in light of Appellant’s Specification.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1, and claims 2, 4, 6-9, and 12 which depend thereon,
under 35 U.S.C. § 103(a) as unpatentable over Gupta and Fell.
Turning to claims 35 and 36, these claims do not depend either
directly or indirectly from independent claim 1, but rather depend from
claim 32 which in turn depends from independent claim 31. Br., Clms.
App’x. The Examiner has not rejected claims 31 and 32 under 35 U.S.C.
§ 103(a) as unpatentable over Gupta and Fell. Rather, the Examiner rejects
claims 31 and 32 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Fell,
and Russell.4 Consequently, we shall not sustain the Examiner’s rejection of
claims 35 and 36 under 35 U.S.C. § 103(a) as unpatentable over Gupta and
Fell.

Rejection III – Obviousness based on Gupta, Fell, and Morris
Claims 3 and 39 both depend directly from independent claim 1. Br.,
Clms. App’x.

4 Claims 35 and 36 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Gupta, Fell, and Russell.
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The Examiner’s rejection of claims 3 and 39 relies on Morris for its
disclosure that “the speech involves at least two participants (see page 227
item 4 the child as the subject and the parent as the second participant) and
the method further comprises of associating the sound signal with a
particular one of the at least two participants (see page 227 item 5-6).” Ans.
9-10. Appellant argues that “Morris does nothing to resolve the failings of
Gupta.” Br. 21.
We disagree. Morris discloses tape recording a child while the child
is “talking or babbling with another person.” Morris, p. 227, paras. 4 and 5.
Thus, Morris cures Gupta’s deficiency of failing to disclose a natural
language environment. Accordingly, we sustain the Examiner’s rejection of
claims 3 and 39 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Fell,
and Morris.

Rejection IV – Obviousness based on Gupta and Russell
Independent claim 14 is directed to a method of supported learning
including, inter alia, “monitoring sounds in a natural language environment
occurring during an activity in which spoken content is delivered, wherein at
least one sound capture device which is located in the natural language
environment is used to perform the monitoring.” Br., Clms. App’x. Claims
15 and 18 both depend directly from independent claim 14. Id. The
Examiner’s rejection of independent claim 14 relies on the erroneous finding
that Gupta discloses a natural language environment. Appellant argues that
Russell does not cure the fact that Gupta fails to disclose a natural language
environment. Br. 21. We agree. Accordingly, we do not sustain the
Examiner’s rejection of independent claim 14, and claims 15 and 18
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dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Gupta and
Russell.

Rejection V – Obviousness based on Gupta, Fell, and Russell
Claim 10
Claim 10 directly depends from independent claim 1. Br., Clms.
App’x. The Examiner’s rejection of claim 10 relies on the erroneous finding
that Gupta discloses a natural language environment. Ans. 11. Appellant
argues that “Gupta, Fell, and Russell do not capture sound in a natural
language environment.” Br. 22. We agree. Accordingly, we do not sustain
the Examiner’s rejection of claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Gupta, Fell, and Russell.
Claims 31-36
Independent claim 31 is directed to a system for assessing the
language development of children and adults including, inter alia, “a speech
capture component operable to capture vocalizations and utterances of
people in natural settings.” Br., Clms. App’x. Emphasis added.
The Examiner finds that Gupta “provides a teaching of a sound
capture component to capture sound produced by a first person and a
plurality of other sound sources.” Ans. 11 (citing Gupta, col. 3, ll. 30-40).
Appellant makes the same argument as discussed supra with respect
to claim 10 and “Rejection V,” i.e., “Gupta, Fell, and Russell do not capture
sound in a natural language environment.” Br. 22. However, claim 31 does
not specifically recite the term “natural language environment,” but rather
uses the term “natural setting.” Appellant’s Specification does not define
the term “natural setting,” but does state that a purpose of the invention “is
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to provide a means to easily measure the level of a child’s language,
vocabulary, and cognitive functioning in a naturalistic setting.” Spec. 6,
[Para 25]. Appellant also argues with respect to the Gupta reference that
“the singular act of sitting in front of a computer and interacting with it
cannot be considered a natural setting as recited in claim 31.” Br. 22. Thus,
in light of Appellant’s Specification, one of ordinary skill in the art would
understand the claim term “natural setting” as being synonymous with the
claim term “natural language environment.” Accordingly, for the same
reasons as discussed supra with respect to claims 1 and 14, we are persuaded
by Appellant’s argument and accordingly, we do not sustain the Examiner’s
rejection of claims 31-36 under 35 U.S.C. § 103(a) as unpatentable over
Gupta, Fell, and Russell.

Rejection VI – Obviousness based on Gupta, Petrushin, and Vildgrube
Claim 17 directly depends from independent claim 14. Br., Clms.
App’x. The Examiner’s rejection of claim 17 relies on the erroneous finding
that Gupta discloses a natural language environment. Ans. 14. Appellant
argues neither Petrushin nor Vildgrube cures the defects of Gupta in not
disclosing a natural language environment with respect to independent claim
14. Br. 22. We agree. Accordingly, we to not sustain the Examiner’s
rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable over Gupta,
Petrushin, and Vildgrube.

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Rejection VII – Obviousness based on
Gupta, Fell, Russell, Petrushin, and Vildgrube
Claim 11
Claim 11 depends directly from claim 1. Br., Clms. App’x. The
Examiner’s rejection of claim 11 relies upon the erroneous finding that
Gupta discloses a natural language environment. Ans. 14. Appellant argues
that neither Petrushin nor Vildgrube cures the deficiency of the combination
of Gupta and Fell in failing to disclose a natural language environment. Br.
22. We agree. Accordingly, we do not sustain the Examiner’s rejection of
claim 11 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Fell, Russell,
Petrushin, and Vildgrube.
Claim 37
Claim 37 depends indirectly from claim 31. Br., Clms. App’x.
Appellant argues that “[t]he combination of Gupta, Fell, Russell, Petrushin,
and Vildgrube do not teach any aspects of claim 31 that Gupta and Russell
fail to teach (in respect to a natural language environment and capturing
vocalizations and utterances of people in natural settings).” Br. 22-23. We
are persuaded by Appellant’s arguments for the same reasons as discussed
supra with respect to claim 31. Accordingly, we do not sustain the
Examiner’s rejection of claim 37 under 35 U.S.C. § 103(a) as unpatentable
over Gupta, Fell, Russell, Petrushin, and Vildgrube.

Rejection VIII – Obviousness based on Shpiro, Gupta, and Morris
Independent claim 20 was discussed supra with respect to “Rejection
I.” The Examiner finds that Shpiro substantially discloses the subject matter
of claim 20, but “fails to provide a teaching of a ‘natural language
environment using at least one capture device which is located in the natural
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language environment.[’]” Ans. 15. The Examiner relied on Morris to
“provide a teaching of monitoring in the natural language environment
includes subject matter that is monitored with other people with which the
subject[] interacts.” Ans. 16 (citing Morris, p. 227, paras. 4 and 5, “where
the subject (the child) is talking to the parent and/or another person”).
Appellant notes a typographical error in the Examiner’s previous
Office Action mailed June 10, 2009 in which the Examiner listed the
reference name of Gupta, but thereafter had the incorrect reference patent
number of Masterson. See Non-Final Rej. 12. The present Office Action
mailed February 18, 2010 from which Appellant is appealing has the correct
reference name and patent number. See Final Rej. 12. However,
Appellant’s first argument is that “[c]laim 20 is patentable over Shpiro in
view of Masterson, since Masterson fails to teach monitoring in a natural
language environment.” Br. 23. We are not persuaded by this argument as
it is moot since it is clear that the Examiner is applying Gupta, not
Masterson.
Secondly, Appellant argues that “Shpiro in view of Gupta also fails to
teach monitoring in a natural language environment.” Id. We are also not
persuaded by Appellant’s second argument because one cannot show
nonobviousness by attacking references individually where the rejections are
based on a combination of references. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981).
In the present case, the Examiner’s reliance on Morris’s disclosure of a child
“[t]alking or [v]ocalizing directly to another person” cures Gupta’s failure to
disclose a natural language environment. See Morris, p. 227, para. 4.
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Accordingly, we sustain the Examiner’s rejection of claim 20 under
35 U.S.C. § 103(a) as unpatentable over Shpiro, Gupta, and Morris.

Rejection IX – Obviousness based on Gupta, Russell, and Morris
Claim 38 depends directly from claim 14. Br., Clms. App’x. The
Examiner relies on Morris to disclose “monitoring in the natural language
environment includes subject that is monitored with other people with which
the subject[] interacts.” Ans. 16 (citing Morris, p. 227, paras. 4-5, “wherein
the subject (child) is talking to the parent and/or another person”).
Appellant argues that Gupta “does not teach or suggest capturing
sound in a natural language environment,” and “Russell does not teach or
suggest capturing sound in a natural language environment, but instead,
when a child interacts with a computer.” Br. 23 (citing Russell, Fig. 1 and
related description).
We are not persuaded by Appellant’s arguments for the same reasons
as discussed supra with respect to claim 20 and “Rejection VIII,” i.e., the
Examiner is relying on Morris to teach recording the child’s vocalizations
while the child is interacting with another person and thus, Morris cures the
deficiency of Gupta.
Accordingly, we sustain the Examiner’s rejection of claim 38 under
35 U.S.C. § 103(a) as unpatentable over Gupta, Russell, and Morris.

Rejection X – Obviousness based on Gupta, Fell, Russell, and Morris
Appellant argues claims 21-26, 28, and 29 as a group and we select
independent claim 21 as the representative claim. Br. 24. Claims 22-26, 28,
and 29 fall with claim 21.
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Independent claim 21 is directed to a system for supporting language
acquisition including, inter alia, “a sound capture component operable to
capture sounds produced by a first person and a plurality of other sound
sources, wherein the plurality of other sound sources includes other people.”
Br., Clms. App’x.
The Examiner makes the same finding with respect to Morris as
discussed supra with respect to claim 38 and “Rejection IX.” Ans. 18.
Appellant argues that “Gupta, Fell, Russell, and Morris do not capture
sounds in a natural language environment” and “[c]laims 21 – 26, 28, and 29
are patentable at least by virtue of their dependency on claim 20.” Br. 24.
We are not persuaded by Appellant’s argument for several reasons.
First, claim 21 is an independent claim and is not dependent upon claim 20.
See Br., Clms. App’x. Second, claim 21 does not recite a “natural language
environment,” and it is well established that limitations not appearing in the
claims cannot be relied upon for patentability. See Self, 671 F.2d 1344,
1349 (CCPA 1982). Finally, Morris specifically teaches a sound capture
component (tape recorder) which is capable of performing the recited
intended use of being “operable to capture sounds produced by a first person
and a plurality of other sound sources, wherein the plurality of other sound
sources includes other people.” Br., Clms. App’x.
Accordingly, we sustain the Examiner’s rejection of independent
claim 21, and claims 22-26, 28, and 29 which fall therewith, under 35 U.S.C.
§ 103(a) as unpatentable over Gupta, Fell, Russell, and Morris.

Rejection XI – Obviousness based on
Gupta, Fell, Russell, Morris, and Clapper
Claim 27 depends directly from claim 21. Br., Clms. App’x.
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Appellant argues that “Gupta, Fell, Russell, and Morris do not capture
sounds in a natural language environment,” “Clapper does not teach or
suggest any of the failings of Gupta, Fell, Russell, and Morris,” and “[c]laim
27 is patentable at least by virtue of its dependency on claim 20.” Br. 24.
For reasons similar to those discussed supra with respect to claim 21
and “Rejection X,” we are not persuaded by Appellant’s argument. More
particularly, we note first that claim 27 is not dependent upon claim 20, it is
dependent upon claim 21. See Br., Clms. App’x. Second, claim 27 does not
recite a “natural language environment,” and it is well established that
limitations not appearing in the claims cannot be relied upon for
patentability. See Self, 671 F.2d at 1349. Finally, Morris specifically
teaches a sound capture component (tape recorder) which is capable of
performing the recited intended use of being “operable to capture sounds
produced by a first person and a plurality of other sound sources, wherein
the plurality of other sound sources includes other people.” Br., Clms.
App’x.
Accordingly, we sustain the Examiner’s rejection of claim 27 under
35 U.S.C. § 103(a) as unpatentable over Gupta, Fell, Russell, Morris, and
Clapper.

Rejection XII – Obviousness based on
Gupta, Fell, Russell, Morris, and Tallal
Claim 30 depends directly from claim 21. Br., Clms. App’x.
Appellant argues that “Gupta, Fell, Russell, and Morris do not capture
sounds in a natural language environment,” “Tall[al] does not teach or
suggest any of the failings of Gupta, Fell, Russell, and Morris,” and “[c]laim
30 is patentable at least by virtue of its dependency on claim 20.” Br. 24.
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For reasons similar to those discussed supra with respect to claim 21
and “Rejection X” and claim 27 and “Rejection XI,” we are not persuaded by
Appellant’s argument. First, claim 30 is not dependent upon claim 20, it is
dependent upon claim 21. See Br., Clms. App’x. Second, claim 30 does not
recite a “natural language environment,” and it is well established that
limitations not appearing in the claims cannot be relied upon for
patentability. See Self, 671 F.2d at 1349. Finally, Morris specifically
teaches a sound capture component (tape recorder) which is capable of
performing the recited intended use of being “operable to capture sounds
produced by a first person and a plurality of other sound sources, wherein
the plurality of other sound sources includes other people.” Br., Clms.
App’x.
Accordingly, we sustain the Examiner’s rejection of claim 30 under
35 U.S.C. § 103(a) as unpatentable over Gupta, Russell, Morris, and Tallal.

DECISION
We REVERSE the Examiner’s rejections, under either 35 U.S.C.
§ 112, first paragraph, or 35 U.S.C. § 103(a), of: claims 11, 20, and 37 as
failing to comply with the enablement requirement; claims 1, 2, 4-9, 12, 35,
and 36 as unpatentable over Gupta and Fell; claims 14, 15, and 18 as
unpatentable over Gupta and Russell; claim 10 and 31-36 as unpatentable
over Gupta, Fell, and Russell; claim 17 as unpatentable over Gupta,
Petrushin, and Vildgrube; and claim 11 and 37 as unpatentable over Gupta,
Fell, Russell, Petrushin, and Vildgrube.
We AFFIRM the Examiner’s rejections, under either 35 U.S.C. § 112,
first paragraph, or 35 U.S.C. § 103(a), of: claims 9, 10, and 31 as failing to
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comply with the enablement requirement; claims 3 and 39 as unpatentable
over Gupta, Fell, and Morris; claim 20 as unpatentable over Shpiro, Gupta,
and Morris; claim 38 as unpatentable over Gupta, Russell, and Morris;
claims 21-26, 28, and 29 as unpatentable over Gupta, Fell, Russell, and
Morris; claim 27 as unpatentable over Gupta, Fell, Russell, Morris, and
Clapper; and claim 30 as unpatentable over Gupta, Fell, Russell, Morris, and
Tallal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

mls