Ex Parte Schwab et al

Board of Patent Appeals and Interferences

May 8, 2008

09877628 (B.P.A.I. May. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BARRY H. SCHWAB and JOHN G. POSA
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Appeal 2007-3707
Application 09/877,628
Technology Center 2600
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Decided: May 8, 2008
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Before ROBERT E. NAPPI, CARLA M. KRIVAK, and KEVIN F.
TURNER, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 and 6.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Claim 2 was canceled by the Amendment filed March 1, 2005, claims 3
and 4 were cancelled by the Amendment filed April 18, 2006, and claim 5
was cancelled by the Amendment After Final filed December 18, 2006.
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Application 09/877,628

STATEMENT OF CASE
Appellants’ claimed invention is a method of enhancing electronic
communications. The method includes storing enhancement information at
the location of the recipient (cl. 1; Spec. 1:16-12; Spec. 2:1-3; Spec. 3:10-
16).
Independent claims 1 and 6, the only claims on record in this appeal,
are reproduced below.

1. A method of enhancing an electronic communication, comprising
the steps of:

transmitting and receiving a message or file having a content; and

storing, at the location of a recipient, enhancement information
enabling the recipient to visualize the sender.

6. A method of enhancing an electronic communication, comprising
the steps of:

transmitting and receiving a message or file having a content; and

storing, at the location of a recipient,-phonemes enabling the recipient
to listen to the content in a synthesized voice of the sender.

REFERENCES
Gasper US 5,111,409 May 5, 1992
Tullis US 5,802,314 Sep. 1, 1998
Spies US 6,035,273 Mar. 7, 2000

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The Examiner rejected claim 1 under 35 U.S.C. § 103(a) based upon
the teachings of Tullis and Gasper. The Examiner rejected claim 6 under 35
U.S.C. § 103(a) based upon the teachings of Tullis and Spies.
Appellants contend that neither Tullis nor Spies teach or suggest
storing enhancement information at the location of a recipient (Br. 2).

ISSUES
Did the Examiner err in rejecting claim 1 under 35 U.S.C. §103(a) as
obvious over Tullis and Gasper? Did the Examiner err in rejecting claim 6
under 35 U.S.C. §103(a) as obvious over Tullis and Spies?

FINDINGS OF FACT
1. Appellants’ invention allows storing of enhancement
information at the location of the recipient. This enables the recipient of the
message or file to more fully appreciate the content, including visualizing
the sender (Br. 2; cl. 1).
2. Appellants’ invention also allows storing of phonemes at the
location of the recipient. This enables the recipient to listen to the content in
a synthesized voice of the sender (Br. 2; cl. 6).
3. Appellants define enhancement information as “‘helper
information,’ which enhances the value of the original file” (Spec. 2:17).
4. The helper information can include phonemes, image
information, etc. (Spec. 2:18-20; Spec. 3:1-21).
5. A phoneme is defined as “(noun) [T]he smallest phonetic unit
in a language that is capable of conveying a distinction in meaning, as the m
of mat and the b of bat in English. ETYMOLOGY: French phonème, from
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Greek ph n ma, ph n mat-, utterance, sound produced, from ph nein, to
produce a sound, from ph n , sound, voice.” The American Heritage
Dictionary of the English Language, Houghton Mifflin Co. (4th ed. 2000).
6. Tullis teaches a method and apparatus for sending and receiving
multimedia messages. The user has a database that contains all address
information on individuals with whom the user communicates and contains
all pertinent information related to those individuals such as telephone
numbers, facsimile numbers, and email addresses (col. 2, ll. 51-60).
7. Gasper teaches a hyperanimator system (col. 5, ll. 14-18). This
allows a user to create and control animated lip-synchronized images or
objects by using a personal computer (Spec. 2:51-55). The system provides
the capability of using both synthetic speech and/or digitized recording to
provide speech to synthesized actors (synactors) (col. 3, ll. 41-43).
8. Spies teaches a speaker specific speech-to-text/text-to-speech
communication system. Spies include speech compression and transmission
devices (CTDs). The text is transmitted from a speaking party’s device to a
listening party’s device where it is converted back to speech using the
speaking party’s speech profile (Abstract). The speech profiles of both
parties are stored at both CTDs (col. 2, ll. 15-27).

PRINCIPLES OF LAW
The Supreme Court in Graham v. John Deere Co., 383 U.S. 1 (1966),
stated that three factual inquiries underpin any determination of obviousness:
Under § 103, [1] the scope and content of the prior art are to be
determined; [2] differences between the prior art and the claims
at issue are to be ascertained; and [3] the level of ordinary skill
in the pertinent art resolved. Against this background, the
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obviousness or nonobviousness of the subject matter is
determined. Such secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented. As
indicia of obviousness or nonobviousness, these inquiries may
have relevancy.
Id. at 17-18
Where the claimed subject matter involves more than the simple
substitution one known element for another or the mere application of a
known technique to a piece of prior art ready for the improvement, a holding
of obviousness must be based on “an apparent reason to combine the known
elements in the fashion claimed.” KSR Int’l v. Teleflex, Inc., 127 S. Ct.
1727, 1740-41 (2007). That is, “there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” Id., 127 S. Ct. at 1741 (quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)). Such reasoning can be based on interrelated teachings
of multiple patents, the effects of demands known to the design community
or present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art. KSR, 127 S. Ct. at 1740-41.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
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ANALYSIS
Rejection of Claim 1 as Obvious over Tullis and Gasper
The Examiner finds that Tullis teaches all the features of claim 1
except for storing enhancement information enabling the recipient to
visualize the sender (Ans.4). The Examiner also finds that Gasper teaches
storing audio information as well as video information and thus it would be
obvious to one of ordinary skill in the art to store the image information
taught by Gasper in Tullis’s method of transmitting audio information (Ans.
4). As noted in Findings of Fact 6 (FF), Tullis teaches a user database that
contains all pertinent information related to the user, but does not teach
storing enhancement information enabling the recipient to visualize the
sender. Gasper teaches a hyperanimator system that allows a user to create
and control animated lip-synchronized images (FF 7). As expressed in KSR,
supra., “there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In the present
instance, the Examiner has not stated why these unrelated references should
be combined other than alleging that the combination would result in a
method that would “advantageously store at the location of the recipient
audio message along with the corresponding video information, because this
would enable the recipient to recall at a future date the message according to
user’s preference.” (Ans 4) There is no indication in either of these
references, and none indicated by the Examiner, of the relevance of
combining these two references. Gasper does not suggest providing
enhancement information enabling the recipient to visualize the sender (cl.
1). Gasper merely allows a user of a personal computer to develop synactors
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(synthesized characters/animation). The Examiner has not provided a
rational explanation for combining these references. KSR, supra.
The Examiner has also not made the factual determinations set forth
in Graham v. John Deere, supra, and thus has not presented a prima facie
case of unpatentability.

Rejection of Claim 6 as Obvious over Tullis and Spies
The Examiner stated that Tullis teaches all the features of claim 6
except for storing phonemes at the location of the recipient, enabling the
recipient to listen to the content in a synthesized voice of the sender. The
Examiner then states that Spies teaches the recipient is “able to listen to the
content of the message in sender’s voice” (Ans. 4) by using phonemes (Ans.
5). Appellants urged that there is no mention of phonemes in Spies or
Tullis. The Examiner countered that “phonemes are basic units of
speech…” (Ans. 5).
As set forth in FF 5, a phoneme is a basic unit of speech. Spies
teaches a speech-to-text/text-to-speech system (FF 8) such as the Dragon
System or IBM’s VoiceType Dictation (col. 3, ll. 59-61). These systems use
stored speech profiles to determine the best acoustic word match for any
spoken word (col. 3, ll. 62-67). It is well known by those skilled in the art
that these compression and transmission devices (CTDs) use stored speech
profiles employing phonemes-as they are basic distinctive units of speech.
Thus, we are not persuaded by the Appellants’ arguments that Spies
does not teach phonemes. Accordingly, Appellants have not convinced us of
error in the Examiner’s rejection of claim 6.

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CONCLUSION
We therefore conclude that the Examiner did err in rejecting claim 1
under 35 U.S.C. § 103(a) and that the Examiner did not err in rejecting claim
6 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner rejecting claims 1 and 6 is affirmed-in-
part.
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)(iv).

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AFFIRMED-IN-PART

eld

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