Ex Parte Sailer

Patent Trial and Appeal Board

Mar 7, 2013

11870505 (P.T.A.B. Mar. 7, 2013)

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.
11/870,505 10/11/2007 Tony Stephen Sailer 13177-4 5043
757 7590 03/07/2013
BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
BORSETTI, GREG
ART UNIT PAPER NUMBER
2658
MAIL DATE DELIVERY MODE
03/07/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TONY STEPHEN SAILER
____________

Appeal 2010-010041
Application 11/870,505
Technology Center 2600
____________

Before BRUCE R. WINSOR, JEREMY J. CURCURI,
and DAVID C. McKONE, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-19, which constitute all the claims pending in this application. See
Br. 2.
1
Claim 20 is cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1
Throughout this opinion, we refer to the Appeal Brief filed February 9,
2010 (“Br.”) and the Examiner’s Answer mailed March 19, 2010 (“Ans.”).
Appeal 2010-010041
Application 11/870,505

2
THE INVENTION
Appellant’s invention relates to obtaining translations via a remote
device such as a cellular telephone, personal digital assistant (“PDA”), or
portable computer. See Spec. 4:2-6. Claim 1, which is illustrative of the
invention, reads as follows:
1. A method of providing a translation, the method
comprising:
performing by a server in communication with a
dedicated application on a portable communication
device:
(a) receiving, via the dedicated application
on the portable communication device, a
translation request that includes at least one word
in a first language, wherein the dedicated
application is dedicated to work in conjunction
with the server to provide translations services;
(b) translating the at least one word from the
first language to a second language;
( c) identifying an advertisement; and
(d) transmitting the at least one word in the
second language and the advertisement.

THE REJECTIONS
The Examiner relies on the following prior art in rejecting the claims:
Gerace US 5,991,735 Nov. 23, 1999
Franz US 6,356,865 B1 Mar. 12, 2002
Dietz US 6,385,586 B1 May 7, 2002
Hutchison US 6,785,647 B2 Aug. 31, 2004
Chan US 2006/0129424 A1 June 15, 2006

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Isotani Ryosuke Isotani et al., AN AUTOMATIC SPEECH
TRANSLATION SYSTEM ON PDA FOR TRAVEL
CONVERSATION, Proc. Of the 4th IEEE Int’l Conf.
on Multimodal Interfaces (ICMI’02), (2002).

Claims 1, 2, 4, 6-8, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dietz, Isotani, and Chan. See Ans. 3-9.
Claims 3 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dietz, Isotani, Chan, and Franz. See Ans. 9-10.
Claims 9, 10, 12, and 14-17 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Dietz, Isotani, Chan, and Gerace. See Ans. 10-14.
Claims 11 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dietz, Isotani, Chan, Gerace, and Franz. See Ans. 14-15.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Dietz, Isotani, Chan, and Hutchison. See Ans. 16.

ISSUE
The dispositive issue raised by Appellant’s contentions is whether
Dietz and Isotani teach or suggest a “dedicated application on a portable
communication device” that “is dedicated to work in conjunction with [a]
server to provide translations services,” as recited in each of independent
claims 1, 9, and 18. See Br. 4-9.

ANALYSIS
REJECTION OF CLAIMS 1, 2, 4, 6-8, AND 18 UNDER 35 U.S.C. § 103(a)
Appellant argues claims 1 and 18 together. See Br. 4-6. Each recites
a “dedicated application on a portable communication device” that “is
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Application 11/870,505

4
dedicated to work in conjunction with [a] server to provide translations
services.” Regarding the limitation “dedicated to work in conjunction with
[a] server to provide translations services,” the Examiner finds that Dietz
discloses “a language translation environment” that “may be resident on [a]
server,” the language translation environment “capable of translating the
human language into the desired language.” Ans. 4 (quoting Dietz, col. 5, l.
65-col. 6, l. 1). The Examiner concludes that because Dietz provides an
environment dedicated to language translation on a cellular telephone, it
would have been obvious to one of ordinary skill in the art that “the server is
serving a dedicated application not through a web browser.” Ans. 4.
However, the Examiner also finds that “Dietz fails to specifically teach, but
Isotani teaches: wherein the application is a dedicated application.” Ans. 4-5
(citing Isotani, § 2). The Examiner further concludes that it would have
been obvious to combine Dietz and Isotani “to provide speech to speech
translation for portable devices feasible by reducing computational cost and
memory usage.” Ans. 5 (citing Isotani, § 8).
Appellant contends that the Examiner “admitted that Dietz does not
teach that the application is a dedicated application on a portable
communication device.” Br. 5. Regarding the Examiner’s combination of
Dietz and Isotani, Appellant argues that even if they are combined, they still
fail to teach a dedicated application that “is dedicated to work in conjunction
with the server to provide translation services.” Br. 5.
In response, the Examiner disagrees that he admitted that Dietz fails to
disclose a dedicated application on a portable communication device and
explains that he found such an application in Dietz under a broadest
reasonable interpretation of “dedicated application.” See Ans. 18-19. The
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Examiner further explains that his combination of Dietz and Isotani was
under a narrower construction. See Ans. 19. We need not reach whether the
Examiner admitted that Dietz lacks a dedicated application on a portable
communication device because we agree with the Examiner’s finding (Ans.
5) that the limitation is taught by the combination of Dietz and Isotani and
conclusion that a person of ordinary skill in the art would have had reason to
make that combination.
2

The Examiner finds that Isotani’s teaching of application software
dedicated to automatic translation running on PDAs is a teaching of a
dedicated application on a portable communication device. See Ans. 5
(citing Isotani, § 2). Appellant does not challenge this finding. See Br. 5-6.
Rather, Appellant argues that “the ‘dedicated application’ in Isontani [sic] et
al. is self-contained and does not communicate with a server to provide
translation services.” Br. 5. Appellant highlights Isotani’s teaching that
“[a]ny other external devices are not needed,” Br. 6 (quoting Isotani, § 2),
and argues that Isotani’s disclosure teaches away from a modification that
would have its application communicating with a server, a modification that
“would be contrary to the basic operating principle of Isontani [sic] et al.,
which is to provide a self-contained translation device that does not need an
external device, such as a server,” Br. 6. The Examiner responds that

2
We note that Dietz teaches that its portable communication device “is
equipped with the capabilities to convert the user’s speech into text form” to
be transmitted to the server for translation. Dietz, col. 6, ll. 16-18. This at
least suggests software resident on the device in communication with a
server sending a translation request to the server. Moreover, as Dietz
explains, the device “may be designed solely for speech translations . . . .”
Dietz, col. 5, ll. 53-55. Thus, the software can be dedicated to a single task
(speech translation).
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Appellant is attacking the references individually rather than addressing the
Examiner’s combination. See Ans. 19. According to the Examiner, Isotani
was cited to show that it was well-known to dedicate an application on a
portable device to a single task, such as speech translation. See id. The
Examiner finds that Dietz, not Isotani, shows communication with a server.
See Ans. 4.
We agree with the Examiner. While Appellant gives a reason why the
application of Isotani would not communicate with a server, Appellant does
not adequately address why a person of ordinary skill in the art would have
failed to appreciate that Isotani’s teaching of an application dedicated to a
single purpose could be applied to Dietz’s teaching of a portable
communication device communicating with a server to perform speech
translation. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references.”).
The Examiner also responds that Isotani’s teaching that
communication with a server is not necessary does not constitute a teaching
away from a combination that includes communicating with a server. See
Ans. 20-21. We agree. “A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Although Isotani teaches that
communication between an application and a server is not necessary,
Appellant does not persuasively explain why such a teaching would have
discouraged a person of ordinary skill from pursuing a combination where
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an application communicates with a server. Thus, Appellant has not shown
error in the Examiner’s conclusion of obviousness.
Appellant only nominally argues claims 2, 4, and 6-8 separately. See
Br. 7.
Accordingly, we sustain the rejection of: (1) independent claims 1 and
18; and (2) claims 2, 4, and 6-8, which depend on claim 1.

REJECTION OF CLAIMS 3 AND 5 UNDER 35 U.S.C. § 103(a)
Claims 3 and 5 depend on claim 1. Appellant only nominally argues
claims 3 and 5 separately. See Br. 7. Accordingly, we sustain the rejection
of claims 3 and 5 for the same reasons as given for claim 1 above.

REJECTION OF CLAIMS 9, 10, 12, AND 14-17 UNDER 35 U.S.C. § 103(a)
Appellant presents essentially the same arguments for independent
claim 9 as presented for claim 1. See Br. 7-9. Claims 10, 12, and 14-17
depend on claim 9. Appellant only nominally argues claims 10, 12, and 14-
17 separately. See Br. 9. Accordingly, we sustain the rejection of claims 9,
10, 12, and 14-17 for the same reasons as given for claim 1 above.

REJECTION OF CLAIMS 11 AND 13 UNDER 35 U.S.C. § 103(a)
Claims 11 and 13 depend on claim 9. Appellant only nominally
argues claims 11 and 13 separately. See Br. 9. Accordingly, we sustain the
rejection of claims 11 and 13 for the same reasons as given for claims 1 and
9 above.

Appeal 2010-010041
Application 11/870,505

8
REJECTION OF CLAIM 19 UNDER 35 U.S.C. § 103(a)
Claim 19 depends on claim 18. Appellant only nominally argues
claim 19 separately. See Br. 10. Accordingly, we sustain the rejection of
claim 19 for the same reasons as given for claim 18 above.

ORDER
The decision of the Examiner to reject claims 1-19 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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