Ex Parte Wohlsen et al

Board of Patent Appeals and Interferences

Apr 25, 2005

09351723 (B.P.A.I. Apr. 25, 2005)

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not written for publication and is not binding precedent of the Board

Paper No. 31

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte ROBERT C. WOHLSEN
and SUE MCNEILL
______________

Appeal No. 2005-0743
Application 09/351,723
______________

ON BRIEF
_______________

Before THOMAS, RUGGIERO and GROSS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

The appellant’s have appealed to the Board from the examiner’s final
rejection of claims 23, 25, 30, 32 and 37. From the generic notice of
Appeal filed on April 7, 2003 (Paper No. 23), appellants have indicated at

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the top of page 2 of the brief filed on June 6, 2003 that only claims 23, 25,
30, 32 and 37 are appealed or argued among claims 23-43 remaining in
the case and rejected by the examiner in the final rejection.
Representative claim 23 is reproduced below:
23. A method of obtaining a user’s identity by voice, comprising:

receiving a set of at least one known grammar and a set of at least
one known voiceprint corresponding to a plurality of utterances from each
of a first plurality of users;

for each of the first plurality of users, associating the set of at least
one known grammar and the set of at least one known voiceprint with an
identifier of said user;

receiving at least one utterance from a subject user;

performing a voice recognition on at least one of the at least one
utterance received from the subject user, said voice recognition being
different from extracting a grammar from a first at least one of the at least
utterance received from the subject user;

responsive to the voice recognition technique, selecting from the first
plurality of users a second plurality of users, smaller than the first plurality
of users by a factor of at least ten, for which the first voice recognition
most closely matches at least one selected from the set of at least one
grammar and the set of at least one voiceprint associated with the
identifiers of the second plurality of users;

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from the second plurality of users, selecting the user for which a
grammar of the first at least one of the at least one utterance received
from the subject user most closely matches at least one of the set of at
least one grammar associated with the identifiers of the second plurality of
users;

verifying a voiceprint of at least one of the at least one utterance
has at least a similarity to the set of at least one voiceprint of the selected
user; and

responsive to the verifying step, providing the identifier of the
selected user as the identifier of the subject user.

The following reference is relied on by the examiner:
Schier 6,246,988 June 12, 2001
(filing date Feb. 10, 1998)

Claims 25 and 32 stand rejected under the second paragraph of
35 U.S.C. § 112 because, in the examiner’s view, the claims are indefinite
for failing to particularly point out and distinctly claim the subject matter
which appellants regard as their invention. The claims are also rejected
under 35 U.S.C. § 103. At the bottom of page 3 of the answer, the
examiner lists all claims 23-43 which are inclusive of the claims 23, 25, 30,

32 and 37 on appeal. They are rejected under 35 U.S.C. § 103 as being
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unpatentable over Schier further in view of well-known prior art.
Rather than repeat the positions of the appellants’ and the examiner,
reference is made to the brief and reply brief for the appellants’ positions,
and to the answer for the examiner’s positions.

OPINION

We reverse both stated rejections of the respective claims on appeal.
We reverse the rejection of claims 25 and 32 under the second
paragraph of 35 U.S.C. § 112. Independent claims 23 and 30, the parent
claims to dependent claims 25 and 32, recite a feature of voice recognition
which is more particularly recited in these respective dependent claims as
comprising “speaker independent voice recognition.”
The examiner takes the view at page 3 of the answer that voice
recognition involves recognition of particular characteristics of a person’s
utterances, whereas speaker independent speech recognition does not
recognize particular characteristics of a person’s utterances. The examiner
considers speaker independent voice recognition as being inapplicably
recited in the two rejected claims and intends to interpret the feature of
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claims 25 and 32 as “speaker independent speech recognition.”
The examiner’s responsive arguments at pages 7 and 8 of the answer
make reference to the substance of the comments at page 2 of the
Advisory Action, mailed on April 17, 2003. Here, the examiner
characterizes the term “voice recognition” as denoted by determining who
is doing the speaking, whereas ”speech recognition” denotes identification
of what a speaker is saying.
In reversing the rejection of claims 25 and 32, we agree with
appellants’ views expressed at pages 14-16 of the principal brief on appeal.
Appellants’ characterization of “voice recognition” in independent claims
23 and 30 is consistent with the manner in which the term is used in the
specification as filed. The approach claimed and the principal approach
taught in the specification as filed is to initially identify users based upon
voice recognition software and then to narrow the initial general class of
potential users to a reasonable number which is in turn further modified
with other information to particularize to an individual user. The approach
does not necessarily require the use of content recognition or speech
recognition software as argued by the examiner, but voice recognition
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per se. This is done through the use of prestored voice prints recited in
independent claims 23 and 30 on appeal.
As indicated at the bottom of page 15 of the principal brief on
appeal, appellants have not used the term voice recognition within its
particular recitation of speaker independent voice recognition in dependent
claims 25 and 32 in any manner that is inconsistent with the accepted
meanings in the art as evidenced by the definition attributed to the
questioned term from Newton’s Telecom Dictionary, 2003 Edition, page
640, which was attached to both the brief and reply brief. It appears that
the definition of speaker independent voice recognition that appellants are
using is the recognition of any user’s voice without prior training or
knowledge of the user even though appellants’ ultimate aim in the claims
and in the disclosure is to identify a particular user based on voice
recognition.

We know of no reason why the appellants should be prohibited from
using the technology of speaker independent voice recognition as part of
their process. This approach is also used by the Schalk patent mentioned
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as part of the prior art beginning at specification page 2. From an artisan’s
perspective and from the public’s perspective, we do not see that
dependent claims 25 and 32 are either indefinite or otherwise deceptive in
the state of the art, nor do we see that the appellants are not particularly
pointing out and distinctly claiming in these claims what they regard as
their invention. Therefore, the rejection of claims 25 and 32 under the
second paragraph of 35 U.S.C. § 112, is reversed.
We also reverse the rejection of claims 23, 25, 30, 32 and 37 under
35 U.S.C. § 103 as being unpatentable over Schier in view of well-known
prior art for essentially two reasons. Initially, we note that the examiner
recognizes that Schier does not teach the feature recited in each of the
independent claims 23, 30 and 37 “responsive to the voice recognition
technique, selecting from the first plurality of users a second plurality of
users, smaller than the first plurality of users by a factor of at least 10.”
The examiner then utilizes Official Notice of well-known voice recognition
systems which reduce recognized persons from an initial list of persons at
least by a factor of ten. From this recognition, we conclude the examiner
has failed to establish a prima facie case of obviousness.
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We are constrained to reverse the outstanding rejections because
initially there is no evidence before us of this feature in the reference relied
upon by the examiner in formulating the rejection. We reach this
conclusion based upon the reasoning provided by recent cases from our
reviewing court. "[T]he Board cannot simply reach conclusions based on
its own understanding or experience - or on its assessment of what would
be basic knowledge or common sense. Rather, the Board must point to
some concrete evidence in the record in support of these findings." In re
Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). See
also In re Lee, 277 F.3d 1338, 1344-45, 61 USPQ2d 1430, 1434-35 (Fed.
Cir. 2002). The court in Lee requires evidence for the determination of
unpatentability by clarifying that "common knowledge and common sense,"
as mentioned in In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549
(CCPA 1969), may only be applied to analysis of the evidence, rather than
be a substitute for evidence. Lee, 277 F.3d at 1345, 61 USPQ2d at 1435.
See Smiths Indus. Med. Sys., Inc., v. Vital Signs, Inc., 183 F.3d 1347,
1356, 51 USPQ2d 1415, 1421 (Fed. Cir. 1999)(Bozek's reference to
common knowledge "does not in and of itself make it so" absent evidence
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of such knowledge).
Although we do not have before us an assertion of common
knowledge and common sense in the art as in In re Lee, the examiner has
made an analogous assertion that the noted feature was well-known to be
used in the art. Correspondingly, the examiner's assertion appears to us to
be a substitute for actual evidence to prove the examiner's assertion. More
recently, the court expanded its reasoning in In re Thrift, 298 F.3d 1357,
1363-64, 63 USPQ2d 2002, 2007-08 (Fed. Cir. 2002).
The second reason we reverse this rejection is because part of the
examiner’s analysis in rejecting the claims under 35 U.S.C. § 103 has
improperly utilized a reference not formally part of the rejection. The
discussion at pages 9 and 10 of the responsive arguments portion of the
answer indicates that the examiner had originally cited the Kanevsky
reference in Paper No. 4, mailed on March 14, 2001, which was well before
the rejection was made in the final rejection, Paper No. 16, mailed on
December 2, 2002. In one of appellants’ succeeding attempted
amendments, Paper No. 20, filed on March 11, 2003, the examiner states
in the paragraph bridging pages 9-10 of the answer that appellants asked
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to see the reference urged by the examiner that was not identified as part
of the Official Notices assertions. This was revealed in the Advisory Office
action mailed on April 17, 2003 as Paper No. 22 as a part of the discussion
at page 2.
This file history makes it clear to us that the examiner has not utilized
the Kanevsky reference in the formal statement of the rejection of the
claims on appeal within 35 U.S.C. § 103 in the final rejection. It is the final
rejection from which appellants appeal and not the Advisory Office action.
The Kanevsky et al. reference mentioned in the arguments, but not recited
in the statement of a rejection, will not be considered. “Where a reference
is relied on to support a rejection, whether or not in a minor capacity, that
reference should be positively included in the statement of the rejection.”
MPEP § 706.02(j) (quoting In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ
406, 407 n.3 (CCPA 1970). Accord Ex parte Movva, 31 USPQ2d 1027, 1028
n.1 (Bd. Pat. App. & Int. 1993) ; Ex parte Raske, 28 USPQ2d 1304, 1304-
05 (Bd. Pat. App. & Int. 1993) ; Ex parte Hiyamizu, 10 USPQ2d 1393, 1394
(Bd. Pat. App. & Int. 1988).
From our perspective, the examiner is free to reinstitute any desired
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rejection under 35 U.S.C. § 103 including one relying upon Schier and
Kanevsky in a formally stated rejection. The examiner should also consider
the utilization of any other prior art including the Schalk patent mentioned
as part of the prior art at specification pages 2 and 3 and the prior art
inferences at specification pages 13 and 14.
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In view of the foregoing, the decision of the examiner rejecting
claims 25 and 32 under the second paragraph of 35 U.S.C. § 112 is
reversed. Likewise, the rejection of claims 23, 25, 30, 32 and 37 under
35 U.S.C. § 103 is also reversed. Therefore, the decision of the examiner
rejecting various claims on appeal is reversed.
REVERSED

James D. Thomas )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Joseph F. Ruggiero ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Anita Pellman Gross )
Administrative Patent Judge )

JDT/cam
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