Ex Parte Townshend et al

Board of Patent Appeals and Interferences

Feb 12, 2009

10087651 (B.P.A.I. Feb. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte BRENT TOWNSHEND
and
JARED BERNSTEIN
________________

Appeal 2009-0856
Application 10/087,651
Technology Center 2600
________________

Decided:1 February 12, 2009
________________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY,
and THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0856
Application 10/087,651

2
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1, 2, 4-24, 26, 28, 29, 32-38, and 40-45. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants invented a system and method for measuring human
speaker intelligibility. The invention includes: (1) having a speaker orally
recite information from a list of items, e.g., words or sentences of varying
lengths and complexity; (2) having a listener hear the speaker and orally
repeat what the listener heard the speaker say, (3) automatically transcribing
what the listener repeats; (4) automatically comparing the information on the
list of items with the transcription; and (5) measuring intelligibility based on
this comparison.2 Claim 1 is illustrative:
1. An intelligibility measurement system, comprising in combination:

a human listener that hears a speaker who is repeating items and
repeats aloud what is heard, wherein the listener does not know a text
of the items the speaker repeated prior to hearing the speaker
repeating the items;

a means for automatically preparing a transcription of what the
listener repeats;

a means for automatically comparing the text of the items with the
transcription; and

a means for measuring intelligibility coupled to the comparing means.

2 See generally Spec. 5:2-8:15; Fig. 1.
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3
The Examiner relies upon the following prior art references to show
unpatentability:

Baker US 4,783,803 Nov. 08, 1988
Lewis US 5,059,127 Oct. 22, 1991

Rtischev US 5,634,086 May 27, 1997

Kahn US 6,122,614 Sep. 19, 2000

1. Claims 1, 2, 4-8, 11-18, 24, 26, 28, 29, 32, 33, 36, 37, 42, 44, and
45 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Rtischev, Kahn, and Baker (Ans. 4-7).

2. Claims 9, 10, 19-23, 34, 35, 38, 40, 41, and 43 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Rtischev, Kahn, Baker, and
Lewis (Ans. 7-8).

Rather than repeat the arguments of Appellants or of the Examiner,
we refer to the Briefs and the Answer3 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments that Appellants could have made but 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).

3 Throughout this opinion, we refer to the (1) Appeal Brief filed Aug. 13,
2007, (2) the Examiner’s Answer mailed Nov. 27, 2007, and (3) Reply Brief
filed Jan. 28, 2008.
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Appellants Arguments
Obviousness Rejection Based on Rtischev, Kahn, and Baker
Appellants do not separately argue the rejected claims, but, instead,
collectively address the rejected independent claims, i.e., claims 1, 11, 24,
36, and 45,4 by asserting that “Rtischev, nor Kahn, nor Baker teach or
suggest” claimed subject matter (App. Br. 8-9). Appellants paraphrase
limitations recited in the independent claims, without specifying a selected
claim, and argue that the paraphrased limitations are not taught or suggested
by the three references. The Appellants’ paraphrased limitations are: “(i) a
listener who hears a speaker speaking items and then repeats aloud what is
heard; (ii) automatically preparing a transcription of what the listener repeats
aloud; (iii) comparing the transcription of what the listener repeated aloud
with a text of the items spoken by the speaker; or (iv) measuring
intelligibility” (App. Br. 7-8). Since Appellants generally address
independent claims, but do not separately argue the rejected claims, we
select independent claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Obviousness Rejection Based on Rtischev, Kahn, Baker, and Lewis
Appellants again do not separately argue the rejected claims.
Appellants merely repeat the arguments earlier directed to Rtischev, Kahn,
and Baker, and assert that the combination of these three references “in no
way undermines the allowability” of independent claim 21 or the dependent

4 Appellants list independent claim 21 with this first ground of rejection
(App. Br. 7), but claim 21 is not a rejected claim in this group (Ans. 4).
Therefore, we assume this is a typographical error, and address claim 21
below with the second § 103 rejection.
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claims rejected over the combination of the three references with Lewis
(App. Br. 16).

ISSUE
Have Appellants shown that the Examiner erred in combining
the teachings of Rtischev, Kahn, and Baker to reject claims under
§ 103? This issue turns on whether the Examiner provides articulated
reasoning with some rational underpinning to justify the obviousness
conclusion based on the collective teachings of these references.

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:
1 Rtischev teaches a method and apparatus for spoken-language
instruction that employs context-based speech recognition to
instruct and evaluate a speaker’s speaking performance, including
language fluency evaluation (Rtischev, Abstract).
2. Rtischev’s system has a person read text aloud from a script and
monitors selected parameters of the speech using speech
recognition to compare the speaker’s speech with a stored copy of
the script, and provides a scoring system that analyzes speech and
reading proficiency based on comparison of the speech with the
stored script (Rtischev, col. 3, ll. 12-16 and 60-65; Fig. 3).
3. Kahn teaches a system and method for automating preparation of
transcriptions of speech from multiple human users, i.e., speakers,
with the system including a comparison means along with means
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for determining an accuracy rate between an automated prepared
transcript and a manual prepared transcript used to check the
accuracy of the automated transcription (Kahn, Abstract; col. 2, ll.
61-65, col. 10, ll. 38-44; Fig. 4).
4. Kahn discloses having a “human transcriptionist (6)” first listen to
an audio file recording created by a human “current user (5)”
speaking, and then the “human transcriptionist (6)” manually
prepares a transcription of the perceived contents of the audio file
(Kahn, col. 8, ll. 19-28; Fig. 1 (reproduced below for reference)).

Kahn Figure 1 depicts a block diagram for a disclosed system to
automate transcription of one or more voice users.

5. Baker teaches an apparatus and method for automated transcription of
input human speech by processing sequences of speech sounds that
are identifiable as corresponding to specific words (Baker, col. 1, ll. 6-
10 and 13-21).
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6. Baker discloses that machines capable of automating transcription of
human dictation “would greatly increase the speed and ease with
which humans could communicate with computers, and greatly speed
and ease the ability with which humans could record and organize
their own words and thoughts” (Baker, col. 1, ll. 13-21).

PRINCIPLES OF LAW
An Examiner must establish a factual basis to support a legal
conclusion of obviousness in rejecting claims under 35 U.S.C. § 103. See In
re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The factual determinations
that the Examiner must make are set forth in Graham v. John Deere Co., 383
U.S. 1, 17 (1966).
To address obviousness questions involving combinations of known
elements, the Supreme Court explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock [,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 127 S. Ct. 1727, 1740 (2007).
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If the claimed subject matter cannot be fairly characterized as
involving the simple substitution of 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 can be based on a showing that
“there was an apparent reason to combine the known elements in the fashion
claimed.” Id. at 1740-41. Such a showing requires:
‘some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness’ . . . [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. at 1741 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))
(internal quotation marks omitted).
When the Examiner’s burden is met there is a shift in the
burden to the Appellants to overcome the Examiner’s prima facie case
with argument and/or evidence. Obviousness is then determined on
the basis of the evidence as a whole and the relative persuasiveness of
the arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).

ANALYSIS
Obviousness Rejection Based on Rtischev, Kahn, and Baker
Appellants argue that “[i]ntelligibility, as claimed, is distinct from
‘speech recognition,’ or a computer’s understanding of speech, which is the
focus of the cited art” (Reply Br. 2). To support this argument, Appellants
refer to the Specification, namely, 2:20-3:2, and 3:7-12, and conclude that “a
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human understanding speech is termed ‘intelligibility’ and is the focus of the
present invention, and a computer understanding speech is termed ‘speech
recognition’ and is the focus of much of the cited art” (App. Br. 8). We are
not persuaded by Appellants’ arguments because no evidence for a
specialized definition known to ordinarily skilled artisans that excludes
machine speech recognition is submitted. Evidence and not attorney
arguments alone, is required in order to rebut a prima facie case of
obviousness.5 We further are not persuaded that there are Specification
disclosures adequately supporting a specialized definition narrowed from the
broadest reasonable interpretation so as to distinguish claimed subject matter
over the cited prior art.6 In particular, we note the Specification indicates
that “[i]ntelligibility may be defined as the degree to which others can
understand a person’s speech” (Specification, 2:12-13; emphasis added).
This disclosure is open as to defining “intelligibility,” and, therefore, does
not exclude other definitions. Nowhere in the Specification do we find
anything that would preclude interpreting the term “intelligibility” with its
ordinary and customary meaning so as to exclude machine speech
recognition.7

5 An attorney argument is not evidence unless it is an admission,
because “[a]n assertion of what seems to follow from common
experience is just attorney argument and not the kind of factual
evidence that is required to rebut a prima facie case of obviousness”
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (citations
omitted).
6 See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en
banc).
7 See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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Appellants further argue that the Examiner “improperly parse[d]”
claim elements “[w]ithout demonstrating that the entirety of the element (i)
is disclosed [in one reference], the Examiner’s rejection cannot stand”8
(Reply Br. 4-5). Appellants cite no authority to support this argument. The
Supreme Court, though, has explained that: “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR, 127 S. Ct. at 1739.
Appellants’ assert, without evidence or argument, that a speaker and a
listener are a singular element. The Examiner treats them as separate
elements. We concur with the Examiner’s implied conclusion that a speaker
who is speaking and a listener listening and repeating what is heard are not
intractably combined as a singular element (Ans. 9). Appellants have not
submitted evidence or arguments that their asserted combination is other
than a matter of choice and not a matter dictated by immutable practice. We
further concur with the Examiner’s implied conclusion that known methods
only are needed for combining a speaker with a listener repeating what is
heard (Id.). With respect to predictability of results, Appellants have not
provided evidence or argument identifying any unpredictable result from
such combination. Accordingly, we are not persuaded by Appellants that the
Examiner in this or other asserted instances improperly parsed claim
elements.

8 Appellants’ referenced element is “a listener who hears a speaker speaking
items and then repeats aloud what is heard.” The subject claim 1 verbatim
recitation is “a human listener that hears a speaker who is repeating items
and repeats aloud what is heard.”
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Appellants additionally argue that the Examiner uses improper
hindsight to combine references (Reply Br. 5). Specifically, Appellants
assert:
It would not be appropriate to combine Kahn (a listener) with
Rtischev (a speaker), as Rtischev teaches away from the participation
of a human listener. Interposing a human listener between the
Rtischev user and the Rtischev speech recognition system would only
impede the language learning process of the user by separating the
user's speech from the system. Additionally, though Baker, at col. 1,
lines 13-20, describes a general desire for speech recognition
technology, Baker also does not provide any motivation to combine it
with Rtischev or Kahn. Neither passage explains how the references
could, would, or should be combined with each other to form an
intelligibility measurement system.

(Reply Br. 6). We are not persuaded by Appellants’ argument that Rtischev
teaches away from participation by a listener, because the Examiner, despite
Appellants’ argument, does not indicate that a Kahn listener is to be
interposed between the Rtischev user, i.e., speaker, and the Rtischev speech
recognition system. Instead, the Examiner indicates that Kahn teaches a
listener hearing a speaker speaking items and then prepares a transcript of
the heard speech (Ans. 9). Indeed, we find, based on a preponderance of the
evidence of record, that Rtischev teaches a method and apparatus for
evaluating the speaking capability of a person reading text aloud from a
script so that a speech recognition prepared record of the speech can be
compared with the script (FF 1 and 2). We further find Kahn teaches a
method and system for a listener to manually prepare a transcription of what
the listener perceives from hearing an audio file recording of a speaker
speaking so that a comparison of the manually prepared transcription can be
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evaluated against an automated prepared transcription (FF 3 and 4). What
the Examiner indicates is that the Rtischev user speaking text from a script is
combinable with the Kahn listener hearing speech, either live or from an
audio file, in order to manually prepare a transcription for evaluation (Ans.
4-5). The Examiner reasons and provides underpinning support for so
combining Rtischev and Kahn with the explanation that: “it would have been
obvious to one of ordinary skill in the art of speech transcription to modify
the teachings of Rtischev et al with operator [i.e., listener] based
transcription and double-checking because it would advantageously allow
for human interpretation of the audio file without tying time resources of the
user [i.e., speaker] … (Kahn et al, col. 1, lines 17-26)” (Ans. 5). The
Examiner does not indicate that a Kahn listener is to be interposed between
the Rtischev user and speech recognition system. Instead, the Examiner
reasons Kahn suggests facilitating the Rtischev transcription with a human
listener. We are persuaded by the Examiner’s reasoning and stated
underpinning support for the asserted combination of Rtischev and Kahn.
With respect to combining Rtischev and Kahn with Baker, the
Examiner reasons that Baker teaches “automated speech recognition … [to]
advantageously speed up the recording process of the operator’s [i.e.,
listener’s] perceived translation (as opposed to typing the translation
manually)… (Baker …, col. 1 lines 13-20)” (Ans. 6). Appellants argue that
“Baker … does not provide any motivation to combine it with Rtischev or
Kahn” (Reply Br. 6). We are not persuaded by Appellants’ argument,
because we concur with the Examiner concerning Baker teaching that
machines capable of automating transcription of human dictation “would
greatly increase the speed and ease with which humans could communicate
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with computers, and greatly speed and ease the ability with which humans
could record and organize their own words and thoughts” (FF 6). As
indicated above, Kahn teaches a listener hearing a speaker’s speech and
manually transcribing what is heard. The Examiner reasons from Baker’s
teaching that automated transcription of human dictation, e.g., a listener
repeating out loud what is heard, would greatly increase the speed and ease
of transcription over the Kahn manual transcription. Therefore, the
Examiner’s reasoned motivation for combining Baker with Rtischev and
Kahn is facilitating in a predictable way transcription by automation, and we
are persuaded by this reasoning and underpinning support on the part of the
Examiner.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s obviousness rejection of representative claim 1.
Therefore, we will sustain the Examiner’s rejection of that claim, and claims
2, 4-8, 11-18, 24, 26, 28, 29, 32, 33, 36, 37, 42, 44, and 45 that fall with
claim 1.
Obviousness Rejection Based on Rtischev, Kahn, Baker, and Lewis
Regarding the obviousness rejection of claims 9, 10, 19-23, 34, 35,
38, 40, 41, and 43 (Ans. 7-8), we find that Appellants have not persuasively
rebutted the Examiner’s prima facie case of obviousness for these claims,
but merely contended that the addition of Lewis fails to cure previously-
noted deficiencies of Rtischev, Kahn, and Baker (App. Br. 16).
Once the Examiner satisfied the burden of presenting a prima facie
case of obviousness, the burden shifts to Appellants to present evidence
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and/or arguments that persuasively rebut the Examiner’s prima facie case.9
Since Appellants did not particularly point out errors in the Examiner’s
reasoning to persuasively rebut the Examiner’s prima facie case of
obviousness, the rejections therefore will be sustained.

CONCLUSIONS
Appellants have not shown that the Examiner erred in combining
Rtischev, Kahn, and Baker under § 103 to arrive at the invention of
representative claim 1, or of claims 2, 4-8, 11-18, 24, 26, 28, 29, 32, 33, 36,
37, 42, 44, and 45 that fall with claim 1. Nor have Appellants persuaded us
of error in the Examiner’s rejection of claims 9, 10, 19-23, 34, 35, 38, 40,
41, and 43 under § 103. In particular, Appellants have not shown the
Examiner erred in the provided reasoning and rational underpinning to
support the combination of references.

DECISION
The Examiner’s decision rejecting all claims on appeal, i.e., claims 1,
2, 4-24, 26, 28, 29, 32-38, and 40-45, is affirmed.

9 See Oetiker, 977 F.2d at 1445.
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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).

AFFIRMED

KIS

Matthew J. Sampson
McDonnell Boehnen Hulbert & Berghoff
32nd Floor
300 S. Wacker Drive
Chicago, IL 60606