Ex Parte Burns et al

Patent Trials and Appeals BoardOct 23, 2012

09863996 - (R) (P.T.A.B. Oct. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte STEPHEN S. BURNS, MICKEY W. KOWITZ, and MICHAEL F. BELL ____________________ Appeal 2010-008764 Application 09/863,996 Technology Center 2600 ____________________ Before JEAN R. HOMERE, THU A. DANG, and CARL W. WHITEHEAD JR., Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2010-008764 Application 09/863,996 2 I. STATEMENT OF THE CASE Appellants have filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1) (hereinafter “Request”) on September 28, 2012 for reconsideration of our Decision mailed July 31, 2012 (hereinafter “Decision”). The Decision affirmed the Examiner’s rejection under 35 U.S.C. § 102(e) of claims 1, 2, 8, 9, 11, 13, and 29 over Bennett; and under 35 U.S.C. § 103(a) of claims 10 and 12 over Bennett and Kanevsky. We have reconsidered our Decision in light of Appellants’ comments in the Request, and we decline to change our Decision for the reasons discussed infra. II. ISSUE The issue we address in this Request is whether Appellants have shown that the Board has misapprehended the prior art of record by finding that Bennett teaches “exchanging text with said database via said database search engine to verify the accuracy of the text based on data stored in said database” (claim 1). III. ANALYSIS Appellants contend that “the term ‘verify’ as used in the claim[s]… has been misapprehended by the Board” because the term “relates to comparing translated voice data with a database that has nothing to do with verifying the accuracy of the voice to text conversion” (Request 2). In particular, Appellants contend that “it is clear that ‘data representative of a Appeal 2010-008764 Application 09/863,996 3 prescription’ is processed by a speech recognition engine” and that “the data processed by the speech recognition engine is further processed by a database search engine that generates a ‘second data stream’ based upon the prescription data and data stored in a database” (Request 3). Thus, according to Appellants, “the claim expressly states that the ‘verify’ step requires processing of the data beyond the processing by a speech recognition engine” (Request 4). Appellants then contend that “the specification supports a construction in which the data from the speech processing system is compared with data in a database that is not part of the speech processing system” (id.). In our Decision, we gave the claim its broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Contrary to Appellants’ contention that “the claim expressly states that the ‘verify’ step requires processing of the data beyond the processing by a speech recognition engine” (Request 4), claim 1 merely requires exchanging “text” (that is any text) with the database via the database search engine “to verify the accuracy of the text” (that is the exchanged text) based on data stored in said database. Thus, Appellants’ contentions that “the ‘verify’ step requires processing of the data beyond the processing by a speech recognition engine” and “the data from the speech processing system is compared with data in a database that is not part of the speech processing system” (Request 4) are not commensurate in scope with the recited language of claim 1. Accordingly, in our Decision, we gave “exchanging text with said database via said database search engine to verify the accuracy of the text based on data stored in said database” its broadest reasonable interpretation as comparing any data with data in a database to Appeal 2010-008764 Application 09/863,996 4 verify its accuracy, consistent with the verification steps set forth in Appellants’ Specification. As set forth in our Decision, we found “Bennett’s exchanging of text with a database for optimization and conversion/morphological linguistic processing to comprise verifying the accuracy of the text” (Decision 7). That is, we found no error in the Examiner’s finding that “‘verifying the accuracy of the text based on data stored in said database’ reads on Bennett’s ‘matching recognized text to text stored in the database’” (id.). Accordingly, contrary to Appellants’ contention that “the term ‘verify’ as used in the claims… has been misapprehended by the Board” (Request 2), we gave the claims their broadest but reasonable interpretation consistent with Appellants’ Specification, and we found no error in the Examiner’s finding that Bennett discloses “exchanging text with said database… to verify the accuracy of the text” (Decision 7). Thus, we do not agree that we misapplied the relevant law or misapprehended Bennett’s disclosure in our Decision with respect to claim 1, as well as, claims 2, 8, 9, 11, 13, and 29 falling therewith. Accordingly, Appellants’ Request does not persuade us to modify our Decision. Therefore, we find Appellants' arguments unavailing. IV. CONCLUSION We have carefully considered the arguments raised by Appellants in the Request for Rehearing, but the argument is not persuasive that our original Decision was in error. We are still of the view that the invention set forth in claims 1, 2, 8-13, and 29 is unpatentable over the applied prior art based on the record before us in the original appeal. This Decision on Appeal 2010-008764 Application 09/863,996 5 Appellants’ Request for Rehearing is deemed to incorporate our earlier Decision (mailed July 31, 2012) by reference. See 37 C.F.R. § 41.52(a)(1). V. DECISION We have granted Appellants’ request to the extent that we have reconsidered our Decision of July 31, 2012, but we deny the request with respect to making any changes therein. REHEARING DENIED tkl