Ex Parte SAVAGE et al

Board of Patent Appeals and Interferences

Jul 21, 2006

09433135 (B.P.A.I. Jul. 21, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOHN G. SAVAGE, JONATHAN S. BLACK
and KENNETH A. NICOLL
__________

Appeal No. 2006-1368
Application No. 09/433,135
___________

ON BRIEF
___________

Before OWENS, LEVY and FETTING, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from a rejection of claims 43-52, which are
all of the pending claims.
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THE INVENTION
The appellants claim a method and a self-service terminal,
such as an automated teller machine, for conducting an item
dispensing transaction using spoken words. Claim 43 is
illustrative:
43. A self-service terminal for allowing a user of the
terminal to conduct an item dispensing transaction using
spoken words, the terminal comprising:

means for creating at least one audible item dispensing
prompt which contains within the prompt itself at least one
word which is provided by the terminal and which can be
spoken by the user to instruct the terminal to dispense an
item to the user;

means for delivering the at least one audible prompt to
the user;

means for receiving at least one word spoken by the
user after the at least one audible prompt is delivered to
the user;

means for determining if the at least one word received
from the user corresponds to the at least one word provided
by the terminal; and

means for dispensing an item to the user when the at
least one word received from the user corresponds to the at
least one word provided by the terminal.

THE REFERENCES
Paganini et al. 4,420,751 Dec. 13, 1983
(Paganini)
Rabin 6,081,782 Jun. 27, 2000
(filed Dec. 29, 1993)

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THE REJECTIONS
The claims stand rejected as follows: claims 43, 44 and 46-
49 under 35 U.S.C. § 102(e) as anticipated by Rabin; claim 45
under 35 U.S.C. § 103 as obvious over Rabin in view of Paganini;1
and claims 50-52 under 35 U.S.C. § 103 as obvious over Rabin.
OPINION
We reverse the rejections of claims 43-50 and 52, and affirm
the rejection of claim 51.
Rejection of claims 43, 44 and 46-49
under 35 U.S.C. § 102(e) over Rabin
Rabin discloses a voice command control and verification
system and method which stores, for each authorized user, one or
a series of speech models of voice commands or phrases uttered by
each authorized user (col. 2, lines 16-19). In a
telecommunications system embodiment a user accesses the system
by dialing a unique telephone number assigned to the user
(col. 2, lines 39-45). In an automated teller machine (ATM)
embodiment the user accesses the system by inserting an ATM card
into an ATM machine (col. 3, lines 11-13). In either embodiment
the system stores for each user a series of voice commands that
can be recognized by a speech recognition system and can be used

1 In the examiner’s answer the examiner omitted the rejection of claim 45 from
the grounds of rejection but included that claim in the response to arguments
(page 3). We consider the examiner’s omission of claim 45 from the grounds of
rejection to be inadvertent.
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to verify the identity of the user by determining whether a
command spoken by the user matches a stored command and, if so,
whether the vocal characteristics of the same command match vocal
characteristics stored for the user (col. 2, lines 42-55; col. 6,
lines 57-65). A voice response unit (VRU) can play announcements
such as voice prompts to the user for voice commands (col. 4,
lines 56-67).
The examiner argues that Rabin’s processor (201) that
controls the ATM is a means for creating an audible prompt
(answer, pages 3-4). The appellants’ claims 43, 44 and 46-49,
however, require more than a processor. Claim 43 requires means
for determining if a user’s word corresponds to a word provided
by the terminal, and means for dispensing an item to the user
when there is such a correspondence. Independent claim 48
includes comparable requirements limited to an ATM, and
independent claim 46 requires that the audible prompt includes a
question that can be answered by a positive or negative response,
and requires means for determining whether a word spoken by a
user answers the question.

To establish a prima facie case of anticipation the examiner
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must point out where all of the claim limitations appear in a
single reference. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d
1655, 1657 (Fed. Cir. 1990); In re King, 801 F.2d 1324, 1327, 231
USPQ 136, 138-39 (Fed. Cir. 1986). The examiner does not point
out where the above-mentioned means required by the appellants’
claims appears in Rabin. Accordingly, we reverse the rejection
of claims 43, 44 and 46-49.
Rejection of claim 45 under 35 U.S.C. § 103
over Rabin in view of Paganini
The examiner does not rely upon Paganini for any disclosure
that remedies the above-discussed deficiency in the examiner’s
argument with respect to Rabin (final rejection mailed
October 25, 2004, pages 4-5). We therefore reverse the rejection
of claim 45.
Rejection of claims 50-52
under 35 U.S.C. § 103 over Rabin
Claims 50 and 52 are method claims having limitations that
correspond to the means limitations in, respectively, claims 43
and 46.
The examiner argues that it would have been obvious to one
of ordinary skill in the art to provide Rabin’s terminal with the
ability to help a consumer by providing a prompt including a word

to be spoken by the customer (e.g., for a deposit, say “deposit”)
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(answer, page 4).
In order for a prima facie case of obviousness to be
established, the teachings from the prior art itself must appear
to have suggested the claimed subject matter to one of ordinary
skill in the art. See In re Rinehart, 531 F.2d 1048, 1051, 189
USPQ 143, 147 (CCPA 1976). The mere fact that the prior art
could be modified as proposed by the examiner is not sufficient
to establish a prima facie case of obviousness. See In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir.
1992).
The examiner does not point out where Rabin itself would
have fairly suggested, to one of ordinary skill in the art,
matching a word spoken by a user with a word provided by a
terminal. Consequently, we reverse the rejection of claims 50
and 52.
Claim 51 is a method claim that requires determining whether
a user’s spoken word answers a question in an audible item
dispensing prompt which can be answered by a positive or negative
response.

The examiner finds that it was well known in the art for an
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ATM to ask whether a customer would like a receipt (answer,
page 5). The appellants do not argue that the examiner’s
statement is incorrect but, rather, merely argue that the
examiner has not cited a reference in support of the statement
(brief, page 6). Because the examiner’s statement is reasonable
and has not been challenged by the appellants, we accept it as
fact. See In re Kunzmann, 326 F.2d 424, 425 n.3, 140 USPQ 235,
236 n.3 (CCPA 1964). Thus, we conclude that Rabin’s disclosure
of voice prompts (col. 4, lines 55-65) would have fairly
suggested, to one of ordinary skill in the art, a voice asking
whether the user would like a receipt. The appellants argue that
the examiner’s argument does not relate to an item dispensing
prompt (brief, pages 6-7). That argument is not persuasive
because a receipt is an item.
For the above reasons we are not convinced of reversible
error in the examiner’s rejection of claim 51. Therefore, we
affirm the rejection of that claim.
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DECISION
The rejections of claims 43, 44 and 46-49 under
35 U.S.C. § 102(e) over Rabin, claim 45 under 35 U.S.C. § 103
over Rabin in view of Paganini, and claims 50 and 52 under
35 U.S.C. § 103 over Rabin, are reversed. The rejection of claim
51 under 35 U.S.C. § 103 over Rabin is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a)(1)(vii).
AFFIRMED-IN-PART

TERRY J. OWENS )
Administrative Patent Judge )
)
) BOARD OF PATENT
) APPEALS
) AND
STUART S. LEVY ) INTERFERENCES
Administrative Patent Judge )
)
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

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Michael Chan
NCR Corporation
1700 South Patterson BLVD.
Dayton, OH 45479-0001

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