Ex Parte Wu

Patent Trial and Appeal Board

Sep 28, 2016

11491209 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111491,209 07/21/2006
25537 7590 09/30/2016
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
FIRST NAMED INVENTOR
JingsongWu
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
VZ06027 4593
EXAMINER
POPE, KHARYE
ART UNIT PAPER NUMBER
2652
NOTIFICATION DATE DELIVERY MODE
09/30/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JINGSONG WU
Appeal2015-005513
Application 11/491,209
Technology Center 2600
Before LINZY T. McCARTNEY, JAMES W. DEJMEK, and
SCOTT E. BAIN, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-9, 13-15, 19, and 24--30. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2015-005513
Application 11/491,209
STATEMENT OF THE CASE
The present patent application concerns "a method and system for
providing a telephone feature menu to a telephone user." Spec. i-f 8. Claim 1
illustrates the claimed subject matter:
1. A method, comprising:
receiving, at a telephone, menu data from a switch,
the menu data including a menu of a plurality of available
star code telephone functions;
receiving, by the telephone, a voice command;
generating, by the telephone and based on receiving the voice
command, a main menu and a plurality of sub-menus,
the plurality of sub-menus being arranged by category, and
each sub-menu including at least one of the plurality of
available star code telephone functions;
displaying, by the telephone, the main menu and the plurality of
sub-menus;
receiving, by the telephone, a selection of a sub-menu of the
plurality of sub-menus;
generating, by the telephone and based on the received selection,
another main menu and another plurality of sub-menus,
the other main menu corresponding to the selected sub-
menu,
the other plurality of sub-menus being associated with the
selected sub-menu,
each sub-menu, of the other plurality of sub-menus,
including at least one of the plurality of available star code
telephone functions,
the other main menu being different than the main menu,
and
the other plurality of sub-menus being different than the
plurality of sub-menus;
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displaying, by the telephone, the other main menu and the other
plurality of sub-menus;
receiving, by the telephone, a selection of at least one of the
plurality of available star code telephone functions included in at
least one of the other plurality of sub-menus;
activating, by the telephone and based on receiving the
selection of the at least one of the plurality of available star code
telephone functions included in the at least one of the other
plurality of sub-menus, the selected at least one of the plurality
of available star code telephone functions included in the at least
one of the other plurality of sub-menus; and
using, by the telephone, the activated at least one of the
plurality of available star code telephone functions included in
the at least one of the other plurality of sub-menus during a call.
REJECTIONS
Claims 1, 2, 7-9, 13, and 25-28 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lam (US 2007/0021145 Al; Jan. 25, 2007)
and Chubb et al. (US 2002/0197983 ii.J; Dec. 26, 2002).
Claims 3---6, 14, 15, 24, 29, and 30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lam, Chubb, and August et al. (US
2002/0094067 Al; July 18, 2002).
Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Lam, Chubb, and Book (US 2003/0223566 Al; Dec. 4, 2003).
ANALYSIS
We have considered the Examiner's rejections in light of Appellant's
arguments, and we disagree with Appellant that the Examiner erred. To the
extent consistent with the analysis below, we adopt the Examiner's findings,
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reasoning, and conclusions as set forth in the appealed action and the
Examiner's answer. We address Appellant's arguments below.
First, Appellant argues the Examiner's combination of Lam and
Chubb fails to teach or suggest "generating, by the telephone and based on
receiving the voice command, a main menu and a plurality of sub-menus,
the plurality of sub-menus being arranged by category" as recited in claim 1.
See App. Br. 10-15; Reply Br. 2--4. In particular, Appellant contends that
although Lam mentions a "speech recognition tool" and "speech recognition
functionality," Lam does not teach or suggest using either the tool or the
functionality to "generat[e], by the telephone and based on receiving the
voice command" the recited main menu and plurality of sub-menus. See
App. Br. 10-15; Reply Br. 2--4.
We find Appellant's arguments unpersuasive. As found by the
Examiner, Lam teaches or suggests a mobile phone that, in response to
receiving a voice command, displays a main menu and a plurality of sub-
menus. See, e.g., Final Act. 2-7, 14--15; Ans. 2-3. For example, Lam's
Figures 1 OA-1 OJ "illustrate the possibilities of the MENU options and its
sub-menus, and various exemplary user interfaces consistent with user-
selectable menu options" that a mobile phone may display. Lam i-f 99; see
also id. Figs. 4, 6A-6D (depicting a hierarchical series of menus that a
mobile phone can display). Lam discloses a "user may trigger the MENU
function for other options and setting configurations by pressing the
assigned button." Id. i-f 77; see also id. i-f 100 ("Otherwise, the user can also
access the menus and sub-menus by pressing a numeric keys(s) .... "). Lam
also teaches that, instead of using the assigned button to trigger the MENU
function, "the designated buttons could be any keys or any type of user input
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device," where a "user input device may be ... speech recognition
functionality." Id. i-fi-1 68, 77 (emphasis added); see also id. i-f 159 ("[T]he
speech recognition tool is a technology that enables an apparatus to
understand the spoken word; hence, apparatus interprets audible input from a
user and coverts this data into a usable form and command."). Although
Appellant argues Lam's speech recognition tool only injects sounds clips
into a parties' phone conversation, see App. Br. 13, we agree with the
Examiner that the disclosures noted above suggest Lam's speech recognition
tool and functionality may be used to trigger and navigate the display of
menus and sub-menus. 1
Second, Appellant contends Lam does not teach or suggest "each sub-
menu including at least one of the plurality of available star code telephone
functions." App. Br. 15-17; Reply Br. 4---6. Appellant argues the Examiner
adopted an overly broad construction of "star code telephone functions."
Reply Br. 5. According to Appellant, the recited "star code telephone
functions" perform "telephone functions," whereas Lam merely discloses
1 Although we find Appellant's arguments unpersuasive for the reasons
discussed above, even if Appellant were correct that Lam's speech
recognition tool and functionality are limited to playing sound clips during a
telephone conversation, we would not agree the Examiner erred. Appellant
has not shown it would have been "uniquely challenging or difficult for one
of ordinary skill in the art" to use Lam's speech recognition tool or
functionality to trigger and navigate Lam's MENU function (or any of the
other menus and sub-menus suggested by Lam). Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Given that
"[a]person of ordinary skill is also a person of ordinary creativity, not an
automaton," KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), it
would have been obvious to modify Lam's speech tool and functionality to
trigger and traverse Lam's menus to allow hands-free use of the mobile
phone.
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menus of sound categories used to insert sound clips into telephone
conversations. See id. at 4--5. Moreover, Appellant contends neither their
admission that star codes were well known nor Lam's disclosure of a
"STAR(*) button" teaches or suggests this limitation. See App. Br. 16-17;
Reply Br. 4--5. Finally, Appellant argues the Examiner's conclusion that it
would have been obvious to incorporate these well-known star codes into
Lam's invention relies on impermissible hindsight. App. Br. 17-18; Reply
Br. 5. According to Appellant, the Examiner's obviousness conclusion lacks
rationale underpinning. App. Br. 17-18; Reply Br. 5.
We find Appellant's arguments unpersuasive. We give claims terms
their broadest reasonable interpretation in light of the specification. See In
re Morris, 127 F.3d 1048, 1053-54 (Fed. Cir. 1997). Here, neither the
claims nor the specification explicitly defines the term "star code telephone
functions." (Indeed, the term "star code telephone functions" does not
appear in the specification or the originally filed claims.) However, as found
by the Examiner, the "Background" section of the specification discloses
"[k ]nown system features include the type commonly known as star codes.
Users may activate a large variety of features, for example, by entering [the]
number code after pressing the 'star' key on the numerical keypad." Spec.
i-f 1; see also Final Act. 15. The specification goes on to disclose
"[a ]vailable star codes provide a wide range of functionality including
automatically dialing the last phone number that placed a call to the user,
deactivating call waiting, and activating or deactivating call forwarding for
their phone line." Spec. i-f 1.
In light of this disclosure, the broadest reasonable interpretation of
"star code telephone functions" includes functions activated by pressing the
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"star" key on a telephone's numerical keypad and then entering a number
code on the keypad. As found by the Examiner, Lam teaches or suggests
that each sub-menu includes such a function. See, e.g., Final Act. 5; Ans. 3-
6. Lam's Figure 4 shows a plurality of sub-menus 420a--420c, each
including an option labeled "[*y] Sound File Y." Lam Fig. 4. Lam
discloses that other options proceeded by the "*" symbol can be selected by
pressing the"*" button followed by a numeric code. See, e.g., id. i-fi-181
("[I]f sound clips ... are pre-assigned to Sound Category #6, the user can
press ST AR (*) follow[ ed] by the numeric key six to choose the sound
category of MOVIE."), 90 (explaining the "user simply presses the STAR
(*) key follow[ ed] by the corresponding number that is assigned with a
particular sound category (grouping) to select the desired item" (reference
numbers omitted)); Figs. 4--6A, 6D, 7 A, 8. This would suggest to one of
ordinary skill in the art that each sub-menu includes an option that can be
selected by pressing the "*" key followed by a numeric code, as the "y" in
the "[*y] Sound File Y" generally corresponds to a number on a telephone's
keypad. See Ans. 6; Lam Fig. 1, item 130.
Although Appellant contends "star codes telephone functions"
encompass "telephone functions" and exclude playing a sound file, see, e.g.,
Reply Br. 4--5, Appellant has not provided any persuasive evidence or
reasoning to support this argument. And other than arguing "telephone
functions" does not include playing a sound file, Appellant has not explained
what "telephone functions" means. To the extent Appellant contends
"telephone functions" include only the functions discussed in the
Background of the specification, we note this section of the specification
provides examples of known star codes. See Spec. i-fi-f l-2. This section
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does not explicitly define "star codes telephone functions," and we cannot
read limitations from the specification---especially limitations the
specification does not clearly express-into the claims. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) ("We have cautioned
against reading limitations into a claim from the preferred embodiment
described in the specification, even if it is the only embodiment described,
absent clear disclaimer in the specification."). The plain and ordinary
meaning of "telephone functions" includes functions performed by, using, or
through a telephone. Lam's method of using a mobile phone to insert sound
clips into a telephone conversation satisfies this construction of "telephone
functions." See Lam Abstract, Figs. 4--6D.
Moreover, the Examiner found that Appellant's "specification
concedes that the use of star codes is well known" and concluded "it would
[have been] obvious to utilize them in an Interact Menu for Telephone
System Features." Final Act. 15. Appellant asserts this conclusion relies on
impermissible hindsight and lacks rational underpinning. We disagree.
Both Lam and Appellant's specification indicate that "star code telephone
functions" were well known to those of ordinary skill in the art, and Lam
teaches placing star code telephone functions in menus. See, e.g., Lam
i-fi-170, 81, 90; Figs. 4--6A, 6D, 7A, 8. Thus, even ifLam did not suggest that
each sub-menu includes at least one star code telephone functions-and, as
discussed above, Lam does-it would have been obvious to modify Lam's
sub-menus to do so. This would be no more than a combination of familiar
elements according to known methods that achieved a predictable result.
See KSR, 550 U.S. at 416.
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Third, Appellant argues Lam fails to teach or suggest "each sub-menu,
of the other plurality of sub-menus, including at least one of the plurality of
available star code telephone functions." App. Br. 18-21; Reply Br. 6-8. In
particular, Appellant contends that cited portions of Lam do not teach or
suggests another plurality of sub-menus that include "at least one of the
plurality of available star code telephone functions." App. Br. 18-19; Reply
Br. 6-7.
We find Appellant's arguments unpersuasive. As discussed above,
Lam teaches or suggests generating "a main menu and a plurality of sub-
menus," where each sub-menu "includ[ es] at least one of the plurality of
available star code telephone functions." In light of this and Lam's
hierarchical series of menus, the Examiner found Liam teaches or suggests
"each sub-menu, of the other plurality of sub-menus, including at least one
of the plurality of available star code telephone functions." See, e.g., Final
Act. 6. The Examiner also concluded "[t]he repeating of an act (selecting a
command from a [main] menu to navigate to a sub-menu and repeating the
process again to navigate from the sub-menu to a second sub-menu (a sub-
sub-menus) is an obvious variant." Ans. 7. Put differently, the Examiner
concluded it would have been obvious to navigate from a selected sub-menu
associated with a first main menu to (and thereby generate on the mobile
device's display) a second main menu and a plurality of other sub-menus
related to the selected sub-menu.
Lam provides sufficient evidence to support the Examiner's rejection.
Lam discloses that when complex media types are involved "[t]he
hierarchical order of interface levels continues .... For example, a more
complex audio such as song and audio books may have deeper levels of
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interface." Lam if 69 (emphasis added). Similarly, Lam discloses "for
music listening or other media asset playback functionality ... a user may
need to interact with more order interfaces. The procedure of navigating to
sub-order interface is continued until a particular media asset or track ... is
selected." Id. if 84 (emphasis added). Given these disclosures and the fact
that Lam suggests generating "a main menu and a plurality of sub-menus,"
Lam would suggest navigating through layers of associated menus and sub-
menus, thereby generating on a mobile device's screen "the other plurality
of sub-menus, including at least one of the plurality of available star code
telephone functions."
Moreover, an obviousness analysis "may include recourse to logic,
judgment, and common sense available to the person of ordinary skill that do
not necessarily require explication in any reference or expert opinion."
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir.
2009). Indeed, logic, judgment, and common sense may supply a limitation
missing from the cited art. See id. at 1328-33 (affirming a district court's
use of common sense to supply a limitation missing from the prior art).
Here, we agree with the Examiner that, even if Lam did not teach or suggest
this limitation (which Lam does), the disputed limitation would have been an
obvious, commonsense variant of the Lam's hierarchical menu system. See
Ans. 7. As noted above, Lam suggests providing as many menus and sub-
menus as needed for the media assets of interest, and Lam suggests each
sub-menu includes at least one star code telephone function.
Fourth, Appellant contends Lam does not teach or suggest "using, by
the telephone, the activated at least one of the plurality of available star code
telephone functions included in the at least one of the other plurality of sub-
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menus during a call." App. Br. 21-22; Reply Br. 8-9. According to
Appellant, Lam mentions a "conversation" but does not disclose that any
"star code telephone function" is associated with the conversation. App. Br.
21; Reply Br. 8. Appellant contends "the mere disclosure of a
'conversation' does not teach or suggest" this limitation. App. Br. 21; Reply
Br. 8.
We find Appellant's arguments unpersuasive. For the reasons
discussed above, we agree with the Examiner that Lam teaches or suggests
that each one of the other plurality of sub-menus includes at least one "star
code telephone function." As also found by the Examiner, Lam discloses
selecting a sound clip from a sub-menu to play during a telephone call. See,
e.g., Lam Abstract; i-fi-160-64, 72; Figs. 4--7 A, 8; see also Final Act. 7; Ans.
8. In light of these findings, among others, we agree with the Examiner that
Lam teaches or suggests "using, by the telephone, the activated at least one
of the plurality of available star code telephone functions included in the at
least one of the other plurality of sub-menus during a call."
For the above reasons, we sustain the Examiner's rejection of claim 1.
Because Appellant has not presented separate, persuasive patentability
arguments for claims 2-9, 13-15, 19, and 24--30, we also sustain the
Examiner's rejections of these claims.
DECISION
We affirm the Examiner's rejections of claims 1-9, 13-15, 19, and
24--30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
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AFFIRMED
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