Ex Parte Ruetschi

Board of Patent Appeals and Interferences

Mar 30, 2012

10625960 (B.P.A.I. Mar. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/625,960 07/24/2003 Johannes Ruetschi 2003P04023US 1613
88087 7590 03/30/2012
Buchanan Ingersoll & Rooney PC (SEN)
P. O. Box 1404
Alexandria, VA 22313-1404
EXAMINER
RIDER, JUSTIN W
ART UNIT PAPER NUMBER
2626
MAIL DATE DELIVERY MODE
03/30/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHANNES RUETSCHI
____________

Appeal 2010-002885
Application 10/625,960
Technology Center 2600
____________

Before SCOTT R. BOALICK, THOMAS S. HAHN, and
THOMAS L. GIANNETTI, Administrative Patent Judges.

GIANNETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002855
Application 10/625,960

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1-42. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Exemplary Claim
Exemplary claim 1 on appeal reads as follows:
1. A method for inserting a caller’s speech annotations into an
original message, comprising the steps of:
providing a speech rendering of said original message;
annotating said speech message with at least one speech annotation;
and
inserting said speech annotation into said original message.

Rejections on Appeal
The Examiner finally rejected claims 1, 2, 5, 7-10, 12-18, 21, 22, 25,
27-30, and 32-38 under 35 U.S.C. § 102(e) over Spielberg (Published
Application US 2002/0129057 A1; Sep. 12, 2002).
The Examiner finally rejected claims 19 and 39 under 35 U.S.C.
§ 103(a) over Spielberg.
The Examiner finally rejected claims 41 and 42 under 35 U.S.C.
§ 103(a) over Spielberg in combination with Fuller (US 5,745,844; May 19,
1998).
The Examiner finally rejected claims 3, 4, 6, 11, 20, 23, 24, 26, 31,
and 40 under 35 U.S.C. § 103(a) over Spielberg in combination with Pizano
(European Patent Application EP 0 865 189 A2; Sep. 16, 1998).

Appeal 2010-002855
Application 10/625,960

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ANALYSIS
Rejection Under 35 U.S.C. § 102(e)
Appellant’s invention relates to the addition of text or sound
annotations into messages delivered over a voice connection. (Abstract).
Appellant’s determinative contention on appeal focuses on the
interpretation of the word “inserting” in the phrase “inserting said speech
annotation into said original message” appearing in all claims on appeal.
Appellant argues that Spielberg, disclosing a system for annotating
documents (e.g., scripts), does not meet the claimed requirement for
insertion because Spielberg does not modify the document file during
annotation. (Reply Br. 2). In Spielberg the comments are inserted in the
document by providing pointers to the location in the document file where
the comment is to be inserted. (Spielberg ¶ [0100]). This is shown in Figure
12 from Spielberg:
Appeal 2010-002855
Application 10/625,960

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In Appellant’s Specification, however, the insertion of the annotations
in the original message is described only in very general terms. (See Spec.
5:30–6:7). There is no description of how the process is implemented.
Thus, there is insufficient support in the Specification for Appellant’s
contention that “inserting” should be construed as requiring modification of
the original message file, as opposed to providing a pointer to a location in
the file.
Giving the claims their broadest reasonable construction leads us to
conclude that Spielberg’s method of inserting annotations is not excluded.
In re Thrift, 298 F.3d 1357, 1364 (Fed. Cir. 2002). Thus, Appellant’s
arguments distinguishing Spielberg are not persuasive and no error has been
Appeal 2010-002855
Application 10/625,960

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shown in the Examiner’s rejection of claims 1, 2, 5, 7-10, 12-18, 21, 22, 25,
27-30, and 32-38.

Rejections Under 35 U.S.C. § 103(a)
Appellant’s arguments with respect to claims 3, 4, 6, 11, 20, 23, 24,
26, 31, and 40 are based on the same alleged “shortfalls” of Spielberg
discussed supra. (Reply Br. 4). We do not agree with those contentions for
the reasons already presented.
For claims 19, 39, 41, and 42, Appellant presents a somewhat
different argument, namely, that those claims require physically
“overwriting” the original document during the annotation process. (Reply
Br. 4-5). Turning again to the Specification, we do not find support for this
contention. All the Specification says in this regard is that the annotated
message may be saved as a new message or replace the original message.
(Spec. 6:8-10). There is no description of how this process would be
implemented and no mention of overwriting the stored messages. Under the
broadest reasonable interpretation, we therefore conclude that Appellant’s
argument is unsupported and does not overcome the Examiner’s rejections.

CONCLUSIONS
The Examiner did not err in rejecting claims 1, 2, 5, 7-10, 12-18, 21,
22, 25, 27-30, and 32-38 under 35 U.S.C. § 102(e).
The Examiner did not err in rejecting claims 3, 4, 6, 11, 19, 20, 23, 24,
26, 31, and 39-42 under 35 U.S.C. § 103(a).
Claims 1-42 are not patentable.

Appeal 2010-002855
Application 10/625,960

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DECISION
The Examiner’s rejection of claims 1-42 is affirmed.

AFFIRMED

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