Ex Parte Shepard et al

Patent Trial and Appeal Board

Feb 26, 2013

10610684 (P.T.A.B. Feb. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SCOTT SHEPARD and FRANCIS KUBALA
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Appeal 2010-006778
Application 10/610,684
Technology Center 2600
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Before BRUCE R. WINSOR, TRENTON A. WARD,
and DAVID C. MCKONE, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-47, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to language translation and, more
particularly, to aiding a human user in translating audio data. Spec.
¶ [0004]. A textual representation of the audio data is retrieved and
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presented to the user. The user selects a segment of the textual
representation for translation and receives the segment of the textual
representation and a corresponding portion of the audio data to help the user
translate the audio data. Abstract. Claims 1 and 47, which are illustrative of
the invention, read as follows:
1. A method for facilitating translation of an audio
signal that includes speech to another language, comprising:
retrieving a textual representation of the audio signal;
presenting the textual representation to a user;
receiving selection of a segment of the textual
representation for translation;
obtaining a portion of the audio signal corresponding to
the segment of the textual representation;
providing the segment of the textual representation and
the portion of the audio signal to the user; and
receiving translation actually made by the user of the
portion of the audio signal.
47. A method, comprising:
a user listening to an audio playback of information in a
first language while viewing a textual transcription of said
information in said first language on a transcription section of a
graphical user interface (GUI), said textual transcription being
synchronized with said audio playback; and
said user actually translating said audio playback of said
information thereby obtaining a translation in a second
language, said user using a different section of said GUI to
display said translation while making said translation,
whereby the synchronizing of said audio playback with
said textual transcription aids said user in making said
translation.
The Examiner relies on the following prior art in rejecting the claims:
Shiotani US 4,814,988 Mar. 21, 1989
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Schulz US 6,360,237 B1 Mar. 19, 2002
Saindon US 6,820,055 B2 Nov. 16, 2004
(filed Apr. 26, 2001)
George Foster, Pierre Isabelle, & Pierre Plamondon, Target-Text Mediated
Interactive Machine Translation, 12 MACHINE TRANSLATION 175-94
(1997) [hereinafter Foster].
Claims 1-11, 13-31, 33-38, 40, 44, and 451 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Foster and Schulz. Ans. 3-18.
Claims 41 and 46 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Foster, Schulz, and Saindon. Ans. 18-19.
Claims 12, 19, 32, 39, 42, 43, and 47 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Foster, Schulz, and Shiotani. Ans. 19-23.
Rather than repeat the arguments here, we refer to the Briefs (App.
Br.; Reply Br.) and the Answer (Ans.) for the respective positions of
Appellants and the Examiner. Only those arguments actually made by
Appellants have been considered in this decision. Arguments that
Appellants did not make in the Brief have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2010).

ISSUES
Appellants have stipulated that claims 2-46 stand or fall with claim 1.
App. Br. 13. Appellants argue independent claim 47 separately. Therefore,
we select claims 1 and 47 as the representative claims, pursuant to our
authority under 37 C.F.R. § 41.37(c)(1)(vii) (2010).
The issues raised by Appellants’ contentions are as follows:

1 Claim 45 was not listed in the summary of grounds of rejection in the
Examiner’s Answer (Ans. 3) but was discussed in detail in the grounds of
rejection (App. Br. 18) and listed in the summary of grounds of rejection in
Appellants’ Appeal Brief (App. Br. 12).
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Does the combination of Foster and Schulz teach or suggest
“receiving translation actually made by the user of the portion of the audio
signal,” as recited in claim 1? More particularly, is a “translation actually
made by the user” construed as a translation made by the user without
assistance?
In rejecting claim 1 has the Examiner erred in combining Foster and
Schulz?
In rejecting claim 47, has the Examiner erred in combining Foster,
Schulz, and Shiotani?

ANALYSIS
CLAIM 1
Claim Construction
The Examiner finds that Foster teaches a method for facilitating
translation of text by a user in which a user makes a translation from a
textual presentation in a first language and produces a textual translation in a
second language. Ans. 3-4. The Examiner finds that Schulz teaches a text
editor in which an audio signal in a first language is coordinated with a
textual presentation of the signal in the first language to facilitate producing
a corrected textual representation. Ans. 4. The Examiner further finds that:
it would have been obvious to one of ordinary skill in the art at
the time of the invention to use known methods to retrieve a
textual representation of an audio signal for translation in
Foster, since it would provide automatic transcription, saving
transcription costs (Schulz, column 1 lines 27-34), while
enabling a user to provide fast and accurate translation of
speech data.
It would also have been obvious to one of ordinary skill
in the art at the time of the invention to combine the known
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elements of audio and text synchronization with Foster, since
the combination would produce the predictable result of
enabling the user to quickly and easily translate and edit text
displayed on the monitor, including identifying and correcting
errors, without interruption during playback of the speech from
an audio recording, as indicated in Schulz (column 5 lines
55-58).
Ans. 4-5.
Appellants contend that Foster, combined with Schulz, does not teach
or suggest “receiving translation actually made by the user of the portion of
the audio signal,” as recited in claim 1 because Foster does not teach or
suggest that the user actually makes the translation. Appellants allege,
correctly, that Foster discloses a system in which the user is provided with
word suggestions as he/she types the translation, thereby assisting the user
with the translation. See, e.g., App. Br. 18; Reply Br. 2-4. Appellants
characterize Foster’s teaching as “a human-machine translation partnership.”
App. Br. 18 (citing Foster p. 177 which refers to a “human partner”)
(emphasis omitted).
A pertinent dictionary definition, which corresponds to the plain
meaning in ordinary usage, is “actually . . . adv. as an actual or existing fact;
really” WEBSTER’S ENCYCLOPEDIC UNABRIDGED DICTIONARY OF THE
ENGLISH LANGUAGE 15 (1989). Appellants do not assert that “actually” has
any narrower meaning in the art or defined in the Specification. We note
that the only place “actually” appears in the Specification is in the
Background of the Invention: “During translation, the translator actually
translates the audio segment.” Spec. ¶ [0005].
We conclude that Appellants’ proposed claim construction would
narrow the meaning of “actually” to “really, exclusively, and without
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assistance or prompting of any kind.” To accept Appellants’ construction of
“actually” would mean, reductio ad absurdum, that a user would not
“actually” be making a translation if he/she consulted a language-to-
language (e.g., Spanish-to-English) dictionary in the process of making the
translation. Such a claim construction is not in accordance with ordinary
usage or common sense.
Accordingly, we construe a “translation actually made by the user” to
be a translation made by the user as an actual fact, i.e., really made by the
user, whether with or without assistance or prompting. Therefore Appellants
have not persuaded us of error in the Examiner’s finding that Foster teaches
a “translation actually made by the user.”
Combinability of References
Appellants contend that Foster and Schulz “operate with divergent
technologies, where their combination offers no predictable solution and no
reasonable expectation of success,” App. Br. 26, i.e., that Foster and Schulz
are non-analogous art. See generally App. Br. 26-28. We disagree. As
alluded to by the Examiner, see Ans. 27, both Foster and Schulz are
concerned, as is Appellants’ invention, with the problem of facilitating a
user’s production of an accurate output text from input data. As such, they
are both pertinent to the problem with which Appellants are concerned. See
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).
Appellants discuss and contrast the technological details and skills
associated with Foster’s text processing with Schulz’s audio signal
processing. See generally App. Br. 26-27. Appellants contend that “one
skilled in an audio-signal processing art need not be similarly skilled in a
textual-signal processing art, particularly where in-depth knowledge of
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statistical translation and statistical language modes may be needed for
machine-assisted human translation.” App. Br. 27. However, we note that
Schulz is concerned with both audio processing and text processing. See
Schulz col. 1, ll. 26-34. Accordingly, we conclude Schulz teaches a well-
known solution that would be predictably applied to the same problem in
Foster.
Appellants contend that Foster’s “teaching . . . lead[s] away from
translation by a human because it leads, instead, in the direction of
translation by a machine-human partnership.” Reply Br. 4. In view of our
construction of the phrase “translation actually made by the user,” supra, we
conclude Appellants have failed to demonstrate that Foster teaches away
from claim 1. We note that we do not find Foster’s use of the term “human
partner,” Foster p. 177, to be probative. We, and the Examiner, look to what
the references teach or suggest, not the vocabulary used by the references.
Cf. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Appellants contend that the Examiner’s rationale for combining Foster
and Schulz “is no more than a conclusory statement that merely recites
advantages offered by Appellants’ claimed subject matter, those advantages
being apparent in hindsight after one reads Appellants’ claims.” App. Br.
24-25. We disagree.
The Examiner concludes the combination of Foster and Schulz would
“produce the predictable result of enabling the user to quickly and easily
translate and edit text displayed on the monitor … without interruption
during playback of the speech from an audio recording, as indicated in
Schulz (column 5 lines 55-58).” Ans. 4-5. The Examiner’s obviousness
rejection is based on the principle that “combination of familiar elements
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according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR, 550 U.S. at 416.
We conclude that the Examiner has articulated a reason with some
rational underpinning to support the prima facie case of obviousness. See id.
at 418. The Examiner has concluded, and we agree, that the combination of
Foster and Schulz would have been an obvious combination of familiar
elements according to known methods that does no more than yield
predictable results, see id. at 416; that is a predictable variation that could
have been implemented by a person of ordinary skill in the art, see id. at
417.
Appellants’ contention that the Examiner exercised impermissible
hindsight is unpersuasive as it does not identify with specificity what
knowledge relied on by the Examiner in articulating the ground of rejection
was not within the knowledge of a person of ordinary skill in the art of
ordinary skill in the art at the time of the invention, but was instead gleaned
from Appellants’ claims. See In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971). Contrary to Appellants’ assertion, App. Br. 24-25, we
conclude that the advantages recited by the Examiner were discernible from
Foster and Schulz. See Ans. 4-5 (citing Schulz col. 1, ll. 27-34; col. 5, ll.
55-58).
Appellants’ observe that “[i]f it were as obvious to have combined the
teachings of Foster and Schulz to achieve the alleged ‘predictable result’ as
the Office Action represents, Appellants query, as a threshold matter, why
that combination was not previously made.” App. Br. 25. In the absence of
evidence of secondary factors to rebut the Examiner’s conclusion of
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obviousness, it is mere attorney argument to which we give little persuasive
weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
We also find Appellants’ contentions that the combination made by
the Examiner would not be “obvious to try,” App. Br. 26, and that the
references do not recite a “motivation” for the combination, App. Br. 26-27,
to be unpersuasive as they do not address the rationale articulated by the
Examiner.
Accordingly, we will sustain the rejection of claim 1, and claims 2-46,
which Appellants have stipulated stand or fall with claim 1.
CLAIM 47
With regard to claim 47, the Examiner’s findings regarding the
teachings of, and rationale for combining, Foster and Schulz are
substantially the same as for claim 1, discussed supra. See Ans. 22-23. The
Examiner further finds that Shiotani teaches a GUI in which text to be
translated is displayed to the user in a section of the GUI and translated text
is displayed in a different section of the GUI to allow a human user to
correct the translated text. Ans. 23 (citing Shiotani, Figs. 4(a), 4(b); col. 2,
ll. 15-20).
[I]t would have been obvious to one of ordinary skill in the art
at the time of the invention to display the segment of the textual
representation in a same window as will be used by the user to
provide the translation of the portion of the audio signal,
including as a split screen in a translation window in Foster,
since one of ordinary skill in the art has good reason to pursue
the options within his or her technical grasp in order to achieve
the predictable result of quickly and efficiently translating
source information.
Ans. 23.
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Appellants contend that claim 47 is allowable for the same reasons
that claim 1 is allowable, and because Shiotani does not cure the deficiencies
of Foster and Schulz argued with regard to claim 1. App. Br. 28-29. We
find these contentions unpersuasive for the reasons discussed supra
regarding claim 1.
Appellants contend that Schulz and Shiotani are not analogous art.
App. Br. 29-34. First of all, we note that the Examiner’s rationale for
combining Shiotani with the combination of Foster and Schulz relied on
Shiotani’s relationship to, and combination with, Foster, Ans. 23, not
Schulz; Appellants have not argued that Foster and Shiotani are not properly
combinable. Nonetheless, Shiotani, Foster, and Schulz are all concerned, as
is Appellants’ invention, with the problem of facilitating a user’s production
of an accurate output text from input data. As such, they are all pertinent to
the problem with which Appellants are concerned. See Klein, 647 F.3d at
1348. Accordingly, we conclude Foster and Schulz are analogous art, and
Appellants have not shown that the Examiner erred.
Appellants contend that “[t]he Examiner’s purported motivation to
combine the cited references is merely conclusory and based on
impermissible hindsight.” App. Br. 29. We conclude that the Examiner has
articulated a reason with some rational underpinning to support the prima
facie case of obviousness. See KSR, at 418. The Examiner has concluded,
and we agree, that the combination of Foster, Schulz, and Shiotani would
have been an obvious combination of familiar elements according to known
methods that does no more than yield predictable results, see id. at 416.
Appellants’ contention that the Examiner exercised impermissible
hindsight is unpersuasive as it does not identify with specificity what
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knowledge relied on by the Examiner in articulating the ground of rejection
was not within the knowledge of a person of ordinary skill in the art at the
time of the invention, but was, instead gleaned from Appellants’ claims. See
McLaughlin, 443 F.2d at 1395.
Appellants’ remaining contentions are variations of those argued with
regard to claim 1 and are unpersuasive for the same reasons.
Accordingly, Appellants have not demonstrated that the Examiner
erred in rejecting claim 47, and we will sustain the rejection.

ORDER
The decision of the Examiner to reject claims 1-47 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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