Ex Parte Cao et al

Patent Trials and Appeals Board

Mar 27, 2019

13267738 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/267,738 10/06/2011 Xiang Cao
150004 7590 03/29/2019
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
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.
Pl 0853US 1/77870000120101 3562
EXAMINER
ADESANYA, OLUJIMI A
ART UNIT PAPER NUMBER
2658
NOTIFICATION DATE DELIVERY MODE
03/29/2019 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.us@dentons.com
dentons_PAIR@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIANG CAO, ALAN C. CANNISTRARO,
GREGORY S. ROBBIN, and CASEY M. DOUGHERTY
Appeal2017-007625
Application 13/267,738 1
Technology Center 2600
Before MAHSHID D. SAADAT, ST. JOHN COURTENAY III, and
MICHAEL J. STRAUSS, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-3, 6-18, and 21-30. Claims 4, 5, 19, 20, and 31-34
are cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Invention
Embodiments of Appellants' claimed invention relate to
"automatically creating a mapping between text data and audio data by
1 The real party in interest is Apple Inc. App. Br. 4.
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analyzing the audio data to detect words reflected therein and compare those
words to words in the document." Spec. ,r 4.
Representative Independent Method Claim 1
1. A method comprising:
receiving audio data that corresponds to at least a portion
of a work, wherein at least a portion of a textual version of the
work is displayed
[L 1] performing a speech-to-text analysis of the audio
data to generate text for portions of the audio data, wherein the
speech-to-text analysis employs a sliding window and wherein
a set of words into which the audio data can be translated is
limited to words in the sliding window; and
[L2] based on the text generated for the portions of the
audio data, generating a mapping between a plurality of audio
locations in the audio data and a corresponding plurality of
text locations in the textual version of the work;
wherein the method is performed by one or more
computing devices.
(Emphasis added regarding the contested limitations LI and L2.)
Representative Independent Method Claim 14
14. A method comprising:
receiving a textual version of a work;
performing a text-to-speech analysis of the textual
version to generate first audio data;
based on the first audio data and the textual version,
generating a first mapping record correlating a first plurality of
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audio locations in the first audio data and a corresponding
plurality of text locations in the textual version of the work;
receiving second audio data that reflects an audible
version of the work for which the textual version exists; and
based on [LI] (1) a comparison of the first audio data
with the second audio data and [L2] (2) the first mapping
record, generating a second mapping record correlating a
second plurality of audio locations in the second audio data
and the plurality of text locations in the textual version of the
work;
wherein the method is performed by one or more computing
devices.
(Emphasis added regarding the contested limitations LI and L2.)
Rejections2
A. Claims 1-3, 6, 15-18, 21, and 30 are rejected underpre-AIA
35 U.S.C. § 103(a) as being obvious over the combined teachings and
suggestions of Beattie et al. (US 2007/0055514 Al, pub. Mar. 8,
2007) ("Beattie") in view of Mayer (US 6,282,511 B 1, issued
Aug. 28, 2001) ("Mayer").
B. Claims 14 and 29 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being obvious over the combined teachings and suggestions of
Adams, Jr. et al. (US 6,017,219; issued Jan. 25, 2000) ("Adams") in
view of Heckerman et al. (US 6,260,011 B 1; issued July 10, 2001)
("Heckerman").
2 We note the rejection under 35 U.S.C. § 101 was withdrawn by the
Examiner. See Ans. 2. Therefore, it is not before us on appeal.
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C. Claims 7-13 and 22-28 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and
suggestions of Beattie, Mayer, and Heckerman.
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We have reviewed Appellants' arguments in the Briefs, the
Examiner's obviousness rejections, and the Examiner's responses to
Appellants' arguments. Appellants do not proffer sufficient argument or
evidence to persuade us of error regarding the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness. See Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) ("The panel ... reviews
the obviousness rejection for error based upon the issues identified by
appellant, and in light of the arguments and evidence produced thereon.").
For at least the reasons discussed below, we agree with and adopt the
Examiner's underlying factual findings and ultimate legal conclusion of
obviousness, as set forth in the Final Action and Answer. In our analysis
below, we highlight and address specific findings and arguments for
emphasis.
Grouping of Claims
Based upon Appellants' arguments (App. Br. 11-26), and our
discretion under 37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of the
Rejection A of claims 1, 2, 6, 15-17, 21, and 30 on the basis of
representative claim 1. Because Appellants separately argue dependent
claim 3, we decide the appeal of Rejection A of claim 3, and Rejection A of
claim 18 ( which depends upon claim 3) on the basis of representative
claim 3. See App. Br. 26-29.
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Also based upon Appellants' arguments (App. Br. 29-41), and our
discretion under 37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of
Rejection B of independent claim 14 and dependent claim 29 on the basis of
representative claim 14. We separately address infra the remaining
dependent claims 7-13 and 22-28, as rejected under obviousness
Rejection C.
Contested Limitations LI and L2 of Independent Claim I under Rejection A
Appellants contest the Examiner's findings regarding the following
limitations (LI and L2), as recited in representative independent claim 1:
[L 1] peiforming a speech-to-text analysis of the audio
data to generate text for portions of the audio data, wherein the
speech-to-text analysis employs a sliding window and wherein
a set of words into which the audio data can be translated is
limited to words in the sliding window; and
[L2] based on the text generated for the portions of the
audio data, generating a mapping between a plurality of audio
locations in the audio data and a corresponding plurality of
text locations in the textual version of the work[.]
Claim 1 ( emphasis added); see App. Br. 11-26. 3
Contested Limitation LI of Claim I under Rejection A
Appellants particularly dispute the Examiner's findings regarding the
wherein clause of limitation L 1 of claim 1: "wherein a set of words into
3 We give the contested claim limitations the broadest reasonable
interpretation ("BRI") consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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which the audio data can be translated is limited to words in the sliding
window." See App. Br. 13-18.
Appellants note that in an exemplary embodiment, "as the system
performs speech-to-text analysis of audio data ( e.g., an audio book), the
system tracks a 'current translation position' relative to corresponding text
data ( e.g., an e-book)." App. Br. 12 ( citing Spec. ,r 44). Appellants explain:
"As the speech-to-text analysis progresses, the system moves a sliding
window across the text data based on the current translation position, and
restricts the candidate words of the speech-to-text analysis to the words in
the sliding window." App. Br. 12 ( emphasis added) ( citing Spec. ,r,r 44--49).
The Examiner finds limitation L 1 of claim 1 is taught or suggested
principally by Mayer, at column 4, lines 47-57, and Figure 7. Final Act. 4.
We reproduce the cited portion of Mayer in context below:
The speech recognition function for the system of the
invention is particularly easy to implement because the speech
recognizer generally needs only be able to recognize a small
vocabulary of words at any given point in time-the vocabulary
ofhyperlinkwords and action words. To aid recognizer
performance, a sliding window of hyperlink words may be used
to define the recognizer vocabulary, so that, at any given point
in time, that vocabulary would include the most recently played
hyperlink word and some number of hyperlink words
enunciated earlier (but, in general, less than the total of all
previously played links).
Mayer, col. 4, 11. 46-65 ( emphasis added).
Appellants contend:
Notably, the above description of Mayer is consistent
with the portions of Mayer cited by the Examiner. For
example, at column 4, lines 49-51, which the Examiner cites
and Appellants reproduce above, Mayer states that "the speech
recognizer generally needs only be able to recognize a small
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vocabulary of words at any given point in time-the vocabulary
ofhyperlink words and action words." That is, the speech
recognizer recognizes hyperlink words of the "sliding window"
as well as the action words.
Appellants emphasize that the plain meaning of the term
"limit" is "to prevent (something) from being larger, longer,
more, etc." In other words, the plain language of the claim
requires that "the set of words into which the audio can be
translated" include no more than words in the sliding window.
Because Mayer describes a recognizer vocabulary that includes
more than words in a sliding window of hyperlink words,
Mayer fails to teach "wherein the speech-to-text analysis
employs a sliding window and wherein a set of words into
which the audio data can be translated is limited to words in the
sliding window" as recited in claim 1.
App. Br. 17 (footnotes and emphasis omitted).
In response to Appellants' argument that "the plain language of the
claim requires that 'the set of words into which the audio can be translated'
include[s] no more than words in the sliding window" (id.), we particularly
note that claim 1 does not define or otherwise limit how the words in the
sliding window are selected for inclusion in the sliding window. Although
claim 1 requires "the speech-to-text analysis employs a sliding window" and
the "set of words into which the audio data can be translated is limited to
words in the sliding window," we find no language that limits or otherwise
restricts how words are selected for inclusion in the set of words in the
sliding window."4 (emphasis added).
4 We note the scope of the claims on appeal, at a minimum, covers the
corresponding supporting embodiment(s) described in the Specification. We
emphasize, however, that under a broad but reasonable interpretation of the
claims in light of the Specification, the scope of the claims is not limited to
the preferred embodiments described in Appellants' Specification. Even
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When we look to the Specification for context, we find paragraphs
4 7--49 merely describe non-limiting, exemplary embodiments of the "sliding
window" recited in claim 1.
One of those embodiments is described as follows:
While a specific example was given above, the window
may span any amount of text within the textual version of the
work. ... For example, the textual version of a work may
comprise a page indicator ( e.g., in the form of an HTML or
XML tag) that indicates, within the content of the textual
version of the work, the beginning of a page or the ending of a
page.
Spec. ,r 48 ( emphasis added).
Because the hyperlink words included in Mayer's sliding window
(column 4, line 60) are also HTML tags, we find the Examiner's reading of
the claim term "sliding window" on Mayer's "sliding window" that includes
hyperlinks (col. 4, 11. 52-53) is fully consistent with Appellants' description
in the Specification (i-f 48). See Mayer col. 4, 11. 52-53 ("a sliding window
of hyperlink words may be used to define the recognizer vocabulary"
( emphasis added)).
Therefore, the premise for Appellants' argument that Mayer describes
a recognizer vocabulary that includes different or additional words in a
sliding window (e.g., the vocabulary ofhyperlink and action words- col. 4,
11. 50-51) is immaterial to our analysis, because Appellants' argument is not
under a narrower Phillips claim construction (as construed in federal court),
our reviewing court guides: "[ A ]lthough the specification often describes
very specific embodiments of the invention, we have repeatedly warned
against confining the claims to those embodiments. [C]laims may embrace
'different subject matter than is illustrated in the specific embodiments in the
specification."' Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir.
2005) ( en bane) (internal citations omitted).
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commensurate with the scope of claim 1 under a broad but reasonable
interpretation. See supra, n.3. Because we find no claim language which
limits or otherwise restricts how the words in the "sliding window" are
selected for inclusion in the set of words in the "sliding window," we find
Appellants' arguments unavailing regarding contested limitation L 1 of claim
1.
Contested Limitation L2 of Claim 1 under Rejection A
Regarding contested limitation L2 of claim 1, Appellants contend:
Neither Beattie nor Mayer discloses or suggests 'based on the
text generated for the portions of the audio data, generating a
mapping between a plurality of audio locations in the audio
data and a corresponding plurality of text locations in the
textual version of the work' as recited in claim 1.
App. Br. 18 (boldface omitted).
The Examiner finds contested limitation L2 of claim 1 is principally
taught by Beattie at paragraphs 46 and 49. Final Act. 3--4. The Examiner
explains the basis for the rejection, as follows:
The sentence-by-sentence tracking provides 84 a visual
indication (e.g., changes the color of the words, italicizes, etc.)
for an entire sentence to be read by the user ...... The user reads
the visually indicated portion and the system receives 86 the
audio input. The system determines 88 if a correct reading of
the indicated portion has been received. The portion remains
visually indicated 90 until the speech recognition obtains an
acceptable recognition from the user .... , para. [0046]; para.
[0049], highlighting/color differentiating text upon
pronunciation as providing mapping between audio and text[.]
Ans. 3--4 ( emphasis omitted).
Appellants note "Beattie is directed to 'tutoring software' that guides
a user through an oral reading of a displayed passage." App. Br. 20 (citing
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Beattie ,r 41 ). Appellants explain: "Beattie' s system can visually indicate a
sentence to be read by the user, perform speech recognition on an audio
input from the user, and, based on the speech recognition analysis, verify
whether the user's oral reading matches the sentence." Id.
Appellants urge:
Beattie' s process at most involves performing speech
recognition on the user's audio input to determine if the user's
reading matches displayed text. However, nothing in Beattie
discloses or suggests that the process involves analyzing the
user's audio input to identify "a plurality of audio locations" in
the user's audio input, let alone discloses the generation of a
mapping "between a plurality of audio locations in the audio
data and a corresponding plurality of text locations in the
textual version of the work" as recited in claim 1.
App. Br. 21 ( emphasis omitted).
As a matter of claim construction for the claim term "mapping," the
Examiner properly looks to Appellants' Specification for context:
Appellant[ s '] original specification describes a
"mapping" as:
"a mapping may be used to identify which displayed text
corresponds to an audio recording of a person reading the text
as the audio recording is being played and cause the identified
text to be highlighted. Thus, while an audio book is being
played, a user of an e-book reader may follow along as the
e-book reader highlights the corresponding text (Original
Specification, pg. 22, para. [0071])
Appellant[s'] original specification also describes a
"mapping" as involving:
an Audio-to-text correlator that associates the text
location with the audio location to create a mapping record in
document-to-audio mapping (Original Specification, pg. 17,
para. [0056])
Ans. 24 ( emphasis omitted).
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Given Appellants' descriptions in the Specification (id.), we are not
persuaded the Examiner's claim interpretation and reading of the claim term
"mapping" on the cited features found in Beattie is overly broad,
unreasonable, or inconsistent with the Specification, for the reasons
explained by the Examiner in the Answer:
Beattie discloses that as the student reads the passage (i.e.
provide audio input), the tutor software of the system guides the
student through the passage on a sentence-by-sentence basis
using sentence-by-sentence tracking that provides a visual
indication/highlighting for the entire sentence to be read by the
user, where portions of the sentence are visually indicated until
the speech recognition obtains an acceptable recognition i.e.
audio input from the user, after which the visual indication
progresses to a subsequent sentence or clause (Beattie, para.
[0046]). Therefore, since Beattie discloses a plurality of text
locations within a sentence and visually indicat[ es] the words
(i.e. text location) when audio corresponding to the words (i.e.
multiple audio locations) [is] provided, Beattie discloses "based
on the text generated for the portions of the audio data,
generating a mapping between a plurality of audio locations in
the audio data and a corresponding plurality of text locations in
the textual version of the work" consistent with appellant[s']
description of a "mapping."
Also, Mayer discloses providing a correlation of
hypertext (i.e. text locations) and phoneme (i.e. audio locations)
sequences, measured in, for time seconds or words, where the
sequence ofhyperlink words/phrases occurring within the
duration of a given window are stored in a [ d]atabase along
with phoneme models of such speech ( col. 6, ln 66 - col. 7, ln
15), also corresponding to "based on the text generated for the
portions of the audio data, generating a mapping between a
plurality of audio locations in the audio data and a
corresponding plurality of text locations in the textual version
of the work" also consistent with appellant[s'] description of a
"mapping."
Ans. 25 ( emphasis omitted).
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Regarding contested limitation L2 of claim 1, under Rejection A, on
this record, and given the Examiner's broad but reasonable claim
interpretation of the claim term "mapping," we find a preponderance of the
evidence supports the Examiner's underlying factual findings and ultimate
legal conclusion of obviousness. Id.
The Combinability of Beattie and Mayer under 35 US. C. § 103 (a)
Appellants urge the Examiner has improperly combined Beattie with
Mayer:
Notwithstanding the Examiner's deficient rejection,
combining Mayer's sliding window with the system of Beattie
would render the system of Beattie unsatisfactory for its
intended purpose. As discussed above, Beattie is intended to
perform speech recognition on an audio input from a user, and,
based on the speech recognition analysis, verify whether the
user's oral reading matches the sentence. Importantly, Mayer's
sliding window is designed to include only previously played
hyperlink words. As such, to the extent that Mayer's design of
the sliding window can be generalized, Mayer at most describes
keeping track of a current playback position in the HTML page
and constructing a sliding window containing only words
occurring prior to the currently tracked position. As a result,
incorporating this feature of Mayer into Beattie would render
Beattie' s system inoperable. In Beattie, the system tracks a
position between text that has been read by the user and text
that has not been read by the user. Incorporating Mayer's
teaching into Beattie would result in a sliding window
containing only words that have been correctly read by the user
(i.e., words occurring prior to the currently tracked position in
Beattie). Such a sliding window of words would be essentially
useless for recognizing subsequent audio inputs, which
correspond to text that has not been read by the user.
App. Br. 24 (footnotes and emphasis omitted).
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In response, the Examiner further explains the basis for the rejection:
In this case, the Office Action (12/30/15, pg.16) clearly
provides a motivation for combining the references and for
utilizing the sliding window from knowledge found in the
reference Mayer, and as required in Mayer, the motivation
includes providing an easier way to implement speech
recognition as a result of the small vocabulary of words that the
speech can be recognized/translated into, as provided by Mayer
(col. 4, ln 47-57; fig. 7).
Ans. 27 ( emphasis omitted).
The Examiner finds Appellants are bodily incorporating the teachings
Mayer into Beattie. Id. We agree with the Examiner that Appellants'
argument (App. Br. 24) appears to be premised on a "physical" or "bodily"
incorporation of Mayer into Beattie. This is not the standard. See In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review."); In re Keller, 642 F.2d 413,425 (CCPA 1981)
("The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; ... Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.").
Moreover, "[a] reference must be considered for everything it teaches by
way of technology and is not limited to the particular invention it is
describing and attempting to protect." EWP Corp. v. Reliance Universal
Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis omitted). See also KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,419 (2007) ("[N]either the particular
motivation nor the avowed purpose of the [Appellants] controls" in an
obviousness analysis.).
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The Examiner provides an additional detailed explanation on page 28
of the Answer. We agree with and adopt the Examiner's detailed responses
(id.), particularly:
(1) that Mayer "would be an added benefit to Beattie's speech
recognition system by restricting the recognition of the audio spoken by
Beattie's user to only a small collection of words present in a highlighted
passage of the entire book/work described in Beattie, thereby enabling
easier/faster recognition," (2) that Appellants' analysis make no sense as to
why it would be unsatisfactory to combine the teachings of Beattie with
Mayer "since both references seek to limit/constrain/restrict the amount of
words that recognition utilizes at any given point in time, where using the
sliding window would be an added benefit" ( emphasis omitted), and (3) that
Beattie (Abstract) and Mayer (Abstract) are analogous art within the same
field of endeavor. Ans. 28.
On this record, we find the Examiner provided sufficient articulated
reasoning with some rational underpinning to establish why an artisan would
have been motivated to modify Beattie with the teachings and suggestions of
Mayer. Final Act. 5-6. 5
Moreover, Appellants do not provide evidence sufficient to
demonstrate that combining the teachings of Beattie and Mayer, as proffered
by the Examiner (id.), would have been "uniquely challenging or difficult
for one of ordinary skill in the art," Leapfrog Enters., Inc. v. Fisher-Price,
5 The Supreme Court guides: "rejections on obviousness grounds cannot be
sustained by rnere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to suppmi the legal
conclusion of obviousness." KSR, 550 U.S. at 418 (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)).
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Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007), nor have Appellants provided
any objective evidence of secondary considerations, which our reviewing
court guides "operates as a beneficial check on hindsight," Cheese Systems,
Inc. v. Tetra Pak Cheese and Powder Systems, Inc., 725 F.3d 1341, 1352
(Fed. Cir. 2013).
For at least the aforementioned reasons, on this record, we find a
preponderance of the evidence supports the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness regarding contested
limitations LI and L2 of claim 1 as rejected under Rejection A. Claims 2, 6,
15-17, 21, and 30 (not argued separately) fall with representative claim 1.
See supra "Grouping of Claims." Accordingly, we sustain the Examiner's
Rejection A of claims 1, 2, 6, 15-17, 21, and 30. We address separately
argued claims 3 and 18, infra.
Dependent Claims 3 and 18 under Rejection A
Dependent claim 3 recites: "The method of Claim 2, wherein
generating text for portions of the audio data based, at least in part, on
textual context of the work includes generating text based, at least in part, on
one or more rules of grammar used in the textual version of the work"
( emphasis added).
At the outset, we note that the argued "one or more rules of grammar"
limitation that is recited in claim 3 ( and in claim 18 by virtue of its
dependency upon claim 3), is not recited in claims 2, 6, 15, 16, 17, 21, and
30, which Appellants have improperly grouped together based upon claim 3
being purportedly representative of all claims in this group. See App. Br. 26.
However, claims 2, 6, 15, 16, 17, 21, and 30 do not directly or indirectly
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depend from claim 3. Therefore, arguments not made are waived for claims
2, 6, 15, 16, 17, 21, and 30, as rejected by the Examiner under Rejection A.
See 37 C.F.R. § 4I.37(c)(l)(iv).
Because Appellants do not separately argue claim 18 ( which depends
from claim 3), we decide the appeal of Rejection A of dependent claims 3
and 18 on the basis of representative claim 3. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
Regarding dependent claim 3, Appellants focus on the recited "one or
more rules of grammar:"
[D]ependent claim 3 recites, inter alia, "wherein generating text
for portions of the audio data based, at least in part, on textual
context of the work includes generating text based, at least in
part, on one or more rules of grammar used in the textual
version of the work." The Examiner relied on Beattie at
paragraphs [0043] and [0045] and FIG. 3 for disclosing claim 3.
However, Beattie' s disclosure does not support the
Examiner's argument. In fact, these cited portions of Beattie do
not even mention "rules of grammar".
App. Br. 26 (footnote and emphasis omitted).
We note there is no requirement in an obviousness analysis for the
prior art to "contain a description of the subject matter of the appealed claim
in ipsissimis verbis." In re May, 574 F.2d 1082, 1090 (CCPA 1978).
Moreover, "the question under 35 USC 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made." Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (emphasis added)
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); see also MPEP
§ 2123.
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Additionally, the skilled artisan is "[a] person of ordinary creativity,
not an automaton." KSR, 550 U.S. at 421. "Every patent application and
reference relies to some extent upon knowledge of persons skilled in the art
to complement that [ which is] disclosed .... " In re Bode, 550 F .2d 656,
660 (CCPA 1977) (quoting In re Wiggins, 488 F.2d 538,543 (CCPA 1973)).
Those persons "must be presumed to know something" about the art "apart
from what the references disclose." In re Jacoby, 309 F.2d 513, 516 (CCPA
1962).
As a matter of claim construction, we tum to the Specification for
context:
Different works may have significantly different textual
contexts. For example, the grammar used in a classic English
novel may be very different that the grammar of modem poetry.
Thus, while a certain word order may follow the rules of one
grammar, that same word order may violate the rules of another
grammar. Similarly, the grammar used in both a classic
English novel and modem poetry may differ from the grammar
( or lack thereof) employed in a text message sent from one
teenager to another.
Spec. ,r 38.
In response, the Examiner further explains the basis for the rejection:
As provided in the Office Action rejection of Claim 3,
correctly pronounced English story text including English
words are based on rules of English grammar ( Office Action,
12/30/15, pg. 16-17). Appellant[s'] arguments do not
mention/include any statements as to why a speech recognition
system that recognizes English text from received English
audio fail to utilize English rules of grammar. In fact,
[ A Jppellant' s arguments fail to mention/refer to the word
"English" other than the careful reproduction of the text of the
original rejection that includes the phrase "English language".
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Nevertheless, Beattie discloses a speech recognition
engine used to generate speech recognition result (i.e. text) for
the audio received by utilizing acoustic models, language
models and a pronunciation dictionary (para. [0043]) that are
based on the English language (para. [0044]-[0045]; para.
[0092]). Beattie further discloses that the text in the
pronunciation dictionary comes directly from the story
texts/passages of the English story texts (fig. 3; para. [0045]).
Beattie, for claim 2 from which claim 3 depends, also discloses
the use of the language model based on where the user is
reading in the text and the use of the context of the user's
reading (Beattie, para. [0066] and rejection of claim 2).
Therefore Beattie discloses performing speech recognition to
generate recognition results/text for portions of the received
user speech/ audio data that is based on textual context of the
story book/work, where the generating includes generating text
based on the English language story text (fig. 3). The English
language story text as provided in figure 3 show an
arrangement of words and phrases to create well-formed
sentences in English language (i.e. one more rules of grammar),
and hence, the claim limitation.
Furthermore, Beattie discloses analyzing received audio
to determine if such audio correspond to text within a syntactic
boundary of the text/textual version (para. [0091]) i.e. a context
syntactic analysis. Since determination of syntactic boundaries
involve a syntactic/syntax (universally defined as "rules of
grammar") analysis of the English text, and "syntax" is further
defined as the arrangement of words and phrases to create well-
formed sentences in a language ( story text in fig. 3 of Beattie
clearly shows arrangement of words and phrases to create well-
formed sentences in English language), the examiner maintains
that Beattie discloses "wherein generating text for portions of
the audio data based, at least in part, on textual context of the
work includes generating text based, at least in part, on one or
more rules of grammar used in the textual version of the work".
Ans. 30-31 ( emphasis omitted).
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Although Appellants contend in the Reply Brief (15-17) that the
Examiner has failed to set forth a prima facie case, we disagree. Based upon
our review of the record, we find the Examiner has met the burden of
establishing the notice requirement of 35 U.S.C. § I32(a) for Rejection A of
dependent claim 3. 6
On this record, we find a preponderance of the evidence supports the
Examiner's underlying factual findings and ultimate legal conclusion of
obviousness regarding the contested "one or more rules of grammar"
limitation recited in dependent claim 3, as rejected under Rejection A.
Claim 18 (not argued separately) falls with representative claim 3, from
which it depends. Accordingly, we sustain the Examiner's Rejection A of
dependent claims 3 and 18.
Contested Limitations LI and L2 of Independent Claim 14 under Rejection B
Appellants contest the Examiner's findings regarding the following
limitations (LI and L2), as recited in representative independent claim 14:
based on [LI] (1) a comparison of the first audio data
with the second audio data and [L2] (2) the first mapping
record, generating a second mapping record correlating a
second plurality of audio locations in the second audio data
6 The Federal Circuit guides "the prima facie case is merely a procedural
device that enables an appropriate shift of the burden of production." Hyatt
v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007). This burden is met by
"adequately explain[ing] the shortcomings it perceives so that the applicant
is properly notified and able to respond." Id. at 1370. It is only "when a
rejection is so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection" that the prima facie burden
has not been met and the rejection violates the minimal requirements of
35 U.S.C. § I32(a). Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir.
1990).
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and the plurality of text locations in the textual version of the
work[.]
Claim 14 ( emphasis added); see App. Br. 29.
Appellants contend:
Adams and Heckerman, alone or in combination, do not
disclose or suggest "based on (1) a comparison of the first audio
data with the second audio data and (2) the first mapping
record, generating a second mapping record correlating a
second plurality of audio locations in the second audio data and
the plurality of text locations in the textual version of the work"
as recited in claim 14.
App. Br. 29--30 (boldface omitted).
Appellants note the Examiner relies on "Adams, at column 3, line 57
to column 5, line 4; column 7, lines 9-19; and column 7, lines 20-44, to
disclose the above-recited features of claim 14." App. Br. 30. Appellants
explain that, in a given lesson, Adam's "computer and the user read different
text segments, and the user's reading and the computer's reading are not
compared with each other. Such a comparison would be counterintuitive at
best as it could not be used to verify the user's reading." App. Br. 37
( emphasis omitted). 7
We disagree. Regarding the contested first and second mapping
records recited in independent claim 14, we begin our analysis by turning to
the Specification for context:
According to one approach, a mapping (whether created
manually or automatically) is used to identify the locations
within an audio version of a digital work (e.g., an audio book)
7 Appellants also note: "Heckerman does not cure the deficiencies of
Adams. The Examiner does not rely on Heckerman for disclosing 'a
comparison of the first audio data with the second audio data' as recited in
claim 14." Id.
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that correspond to locations within a textual version of the
digital work ( e.g., an e-book). For example, a mapping may be
used to identify a location within an e-book based on a
"bookmark" established in an audio book. As another
example, a mapping may be used to identify which
displayed text corresponds to an audio recording of a
person reading the text as the audio recording is being
played and cause the identified text to be highlighted.
Spec. ,r 71 ( emphasis added).
The operation of Adams is explained in pertinent part at column 7,
lines 20-41:
The positional pacer 17, with input from the local text
position management databases 22, may be implemented to
continuously prompt the student along the text, identifying
(e.g., "follow the bouncing ball") the word that is being read by
the computer instructor or is to be pronounced by the student.
In addition, the executive program may highlight or color
differentiate the text to be read by the computer and that to be
read by the student. At each juncture of the lesson at which the
student is to utter one or more text segments, the user's input is
provided to the speech recognition interface 2 as described
above. Correct input may be passively acknowledged, simply
by the progress of the lesson to the next text segment, or
actively acknowledged by audio output generated via access to
the feedback message database 21. Rapid progress, as sensed
by the positional pacer, will cause the positional pacer to
increase the tempo of the lesson. If the user correctly
pronounces the "current" ( e.g, highlighted) word before the
pacer reaches the boundary between that word and the next
word (the right boundary for standard left-to-right English
reading), the pacer will accelerate slightly. Similarly, if the
pacer reaches the boundary before the user pronounces the
word, the pacer will slow its overall rate slightly.
Adams col. 7, 11. 20-41 ( emphasis added).
In the Answer, the Examiner provides a detailed explanation in
support of the rejection:
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Adams is directed to simultaneously providing displayed text
and audio corresponding to the displayed text while receiving a
second audio from a student user, wherein an executive
program in used in generating synthetic audio (i.e. a text-to
speech analysis) corresponding to displayed text (Col. 7, ln 9-
19), where the generated synthetic and simultaneously provided
audio corresponds to appellant[s'] "a first audio". Adams
further discloses the system prompting a student user to utter
one or more of the displayed text words, and determining if the
student user's presented speech/audio (i.e. a second audio) is a
correct pronunciation of the words displayed, and providing an
indication if the words were correctly pronounced ( col. 7, ln 20-
44 ). , corresponding to "a comparison of the first audio data
with the second audio data". Therefore Adams discloses
providing "a first audio" and "a second audio", and since
Adams already discloses the "first mapping" by way of the
synchronized audio and text locations as provided above ( which
appellant does not dispute), and also discloses (col. 7, ln 20-44)
determining whether a correct pronunciation is received by the
student user, where correct pronunciation/audio gamers an
indication (i.e. color highlighting or non-highlighting of the text
and the positional pacer moving to the next text location),
Adams discloses "a second mapping" correlating locations of
displayed text with provided audio and dependent on the
already synchronized. [ (blank line inserted).]
Since Adams discloses the color highlighting or non-
highlighting of displayed text and the positional pacer moving
to the next text locations upon the user providing the "correct"
pronunciation/ audio for the previous text locations, Adams
discloses linking/ correlating portions/locations of the student
provided audio with the locations of the displayed text via the
color highlighting or non-highlighting, and as a result, discloses
"based on ( 1) a comparison of the first audio data with the
second audio data and (2) the first mapping record generating a
second mapping record correlating a second plurality of audio
locations in the second audio data and the plurality of text
locations in the textual version of the work."
Ans. 34--35 ( emphasis omitted).
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In the Reply Brief, Appellants contend: "Adams describes that the
user's reading is checked via speech recognition, not a comparison with the
reading by the computer instructor. In other words, Adams' ability to check
whether the user's pronunciations are correct does not disclose or suggest 'a
comparison of the first audio data with the second audio data."' Reply Br.
21.
However, the Examiner explains an additional way that Adams
teaches or suggests the contested LI and L2 limitations of claim 14:
Adams discloses the use of a session database that provides a
replay of the joint reading of the text by the companion (i.e. the
executive program) and the student that includes the portions
read correctly by the student, and the portions read by the
computer instructor/ companion while allowing the student to
resume/replay the session at a later time, and enabling storage
of the session (col. 4, ln 17-28; col. 9. ln 51-65).
Ans. 35 (see continued detailed explanation on pages 36 and 37).
As a matter of claim interpretation, the Examiner notes that the
Specification describes a "mapping record" as follows:
"Therefore, each mapping record in the mapping may
include "highlighting data" that indicates how the text
identified by the corresponding text location is to be
highlighted. Thus, for each mapping record in the mapping that
the media player identifies and that includes highlighting data,
the media player uses the highlighting data to determine how to
highlight the text" (pg. 35, para. [0124]).
Ans. 39 ( emphasis omitted).
For example, the Examiner further finds:
Adams discloses the system determining if a user's presented
audio (i.e. a second audio) is a correct pronunciation of the
words displayed, and providing an indication/highlighting if the
words were correctly displayed (col. 7, ln 20-44) where the
indication/highlighting corresponds to the "second mapping
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record" consistent with appellant[s'] reproduced disclosure
provided above, and also consistent with the claim language
since the first mapping/synchronization links visual text
segments with audio text segments in the audio clip database,
and the highlighting/non highlighting of text (i.e. second
mapping record) based on the subsequently provided student
user's audio would be based on the already synchronized visual
text segments with audio text segments aka the first mapping
record.
Ans. 39 ( emphasis omitted).
In reviewing the record, we agree that Adams is directed to a different
purpose than Appellants' invention. However, as previously noted, the
Supreme Court guides that "neither the particular motivation nor the avowed
purpose of the [Appellants] controls" in an obviousness analysis. KSR, 550
U.S. at 419. Even though Adams is directed to a different purpose than
Appellants' invention, the Supreme Court provides further guidance that we
find is dispositive here: "[A] combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results." Id. at 416.
Therefore, on this record, we find a preponderance of the evidence
supports the Examiner's detailed explanations, underlying factual findings,
and ultimate legal conclusion of obviousness for independent claim 14. Ans.
31--41. Accordingly, we sustain the Examiner's Rejection B of independent
claim 14, and dependent claim 29 (not argued separately) that falls
therewith. See 37 C.F.R. § 4I.37(c)(l)(iv).
Rejection C under§ 103(a) of Claims 7-13 and 22-28
Appellants have not substantively and separately contested the
remaining claims rejected under Rejection C. Arguments not made are
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waived. See 37 C.F.R. § 41.37(c)(l)(iv). Accordingly, we sustain the
Examiner's Rejection C under 35 U.S.C. § 103(a) of dependent claims 7-13
and 22-28.
CONCLUSION
The Examiner did not err in rejecting claims 1-3, 6-18, and 21-30
under pre-AIA 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's decision rejecting claims 1-3, 6-18, and
21-30 under pre-AIA 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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