Ex Parte Caspi et alDownload PDFPatent Trial and Appeal BoardNov 20, 201411904649 (P.T.A.B. Nov. 20, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RAMI CASPI and WILLIAM J. BEYDA ____________________ Appeal 2012-0000611 Application 11/904,6492 Technology Center 2600 ____________________ Before CARLA M. KRIVAK, LARRY J. HUME, and ROBERT J. WEINSCHENK, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1–22. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 The record includes a transcript of the oral hearing held Sept. 18, 2014. 2 According to Appellants, the real party in interest is Siemens Enterprise Communications, Inc. App. Br. 1. Appeal 2012-000061 Application 11/904,649 2 STATEMENT OF THE CASE3 The Invention Appellants' invention relates to: An electronic business card . . . with voice data associated with the card owner. In some embodiments, the voice data is a digitized voice sample; in other embodiments, the voice data is a selection of pre-processed voice recognition data associated with a voice sample. In some implementations, the electronic business card can be transferred to other parties using a Bluetooth personal network. A user application can then make use of the voice sample or pre-processed voice recognition data for security or user identification. Abstract. Exemplary Claims Claims 1, 4, 10, and 20 reproduced below, are representative of the subject matter on appeal (emphases added): 1. A method comprising: including voice data in an electronic business card; transmitting said electronic business card from one electronic communications device to another; saving transmitted voice data in association with an address book entry; and using said saved voice data to verify an identity of [a]4 party. 3 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed June 28, 2011); Reply Brief ("Reply Br.," filed Sept. 21, 2011); Oral Hearing (Oral hrg. held Sept. 18, 2014); Examiner's Answer ("Ans.," mailed July 22, 2011,); Final Office Action ("Final Act.," mailed Jan. 13, 2011); and the original Specification ("Spec.," filed Sept. 27, 2007). Appeal 2012-000061 Application 11/904,649 3 4. A method in accordance with claim 1, said including voice data including providing said voice data on a physical business card and reading said voice data into an address book device. 10. A telecommunications device in accordance with claim 7, further including a verification unit configured to identify a caller from an incoming call and from the integrated voice data. 20. A telecommunications system in accordance with claim 18, wherein said first user device comprises a cellular telephone or a computer and said second user device comprises a business card reader. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Angwin et al. ("Angwin") US 2002/0138633 A1 Sept. 26, 2002 Yoshizawa US 6,983,309 B1 Jan. 3, 2006 Fu et al. ("Fu") US 2007/0036289 A1 Feb. 15, 2007 Yu EP 1589730A1 Feb. 23, 2005 Rejection on Appeal Claims 1–22 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Yu, Fu, and either Yoshizawa or Angwin. 4 In the event of further prosecution, we point out an apparent grammatical error in claim 1 which omits the article "a" before the word "party," and which thereby may lack antecedent basis. Appeal 2012-000061 Application 11/904,649 4 GROUPING OF CLAIMS Based on Appellants' arguments (App. Br. 6–20), we decide the appeal of the rejection of claims 1–3, 5–9, 11–16, 18, 19, 21, and 22 on the basis of representative claim 1. We decide the appeal of the rejection of each of claims 4 and 20 separately. We decide the rejection of claims 10 and 17 on the basis of representative claim 10. ISSUES AND ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' contentions the Examiner has erred. Further, we have reviewed the Examiner's response to each of the arguments. We have considered all of Appellants' arguments and any evidence presented. We only consider those arguments actually made by Appellants in reaching this decision, and we do not consider arguments which Appellants could have made but chose not to make in the Briefs so that any such arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii). We agree with Appellants' arguments with respect to claims 4 and 20. We disagree with Appellants' contentions with respect to claims 1–3, 5–19, 21, and 22. With respect to these claims, we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in the Examiner's Answer in response to Appellants' Arguments. We highlight and address specific findings and arguments regarding claims 1, 4, 10, and 20 for emphasis as follows. Appeal 2012-000061 Application 11/904,649 5 1. § 103 Rejection of Claims 1–3, 5–9, 11–16, 18, 19, 21, and 22 Issue 1 Appellants argue (App. Br. 6–13; Reply Br. 1–13) the Examiner's rejection of claims 1–3, 5–9, 11–16, 18, 19, 21, and 22 under 35 U.S.C. § 103(a) as being obvious over the combination of the prior art of record is in error. These contentions present us with the following issues: (a) Did the Examiner err in finding the cited prior art combination teaches or suggests a method that includes, inter alia, the step of "including voice data in an electronic business card," as recited in claim 1? (b) Did the Examiner err in combining the references in the manner suggested because Yu allegedly teaches away from using voice data in an electronic business card, because Appellants argue such use fundamentally changes the operation of Yu's system? Analysis Issue 1(a) Appellants contend, "none of the cited art discloses including voice data in an electronic business card." App. Br. 7. Appellants admit Yu discloses a method for creating and exchanging vCards in a JPEG file format on a mobile terminal (App. Br. 8 (citing Yu Abstract, and ¶ 22)), but allege Yu does not teach or suggest including voice data therein. Id. (citing Yu ¶ 7). Appellants continue their argument by alleging Yu merely provides that a vCard may be of a certain file type, and that file type defines a method for sending voice data or email . . . [and] does not teach or suggest that a vCard includes voice data . . . [so] there is no rationale or reasoning for modifying . . . [Yu] to include voice data in an electronic business card. Appeal 2012-000061 Application 11/904,649 6 See App. Br. 9 (citing Yu ¶ 7 and MPEP § 2143.01). The Examiner finds, and we agree, Yu teaches a vCard that stores multimedia data, which we find teaches or at least suggests including voice data. By Appellants' own background disclosure, vCards may include "URLs [text], graphics, and audio clips." Spec. ¶ 1004 (emphasis added). Therefore, by Appellants' own admission, vCards are known in the art to optionally include "audio clips," which we find teaches or at least suggests the recited "voice data." The suggestion that Yu may only rely upon a particular type of multimedia data in the disclosed vCard, i.e., JPEG image data, does not take away from the fact that audio clips are known in the art as being used in vCards. The Examiner relies upon the disclosure of Fu and either Yoshizawa or Angwin for teaching or suggesting the recited "using said saved voice data to verify an identity of party." The Examiner then finds, as motivation to combine the references in the manner suggested, "[i]t would have been obvious to one skilled in the art at the time of the invention to modify Yu, such that it uses said saved voice data to verify an identity of party, to verify a user via various different credentials (e.g., image, voice, etc.)." Ans. 9–10 and 15–16. We also note, because the Examiner rejects the claims as obvious over the combined teachings of Yu, Fu, and either of Yoshizawa or Angwin, the test for obviousness is not what the references show individually but what the combined teachings, in light of the Specification, would have suggested to one of ordinary skill in the art. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appeal 2012-000061 Application 11/904,649 7 In this context, Appellants argue the references separately. App. Br. 10–13. We specifically note Appellants' challenge to the references individually is not convincing of error in the Examiner's position because all of the features of the secondary reference need not be bodily incorporated into the primary reference. However, consideration should be given to what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Furthermore, the artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Accordingly, we agree with the Examiner finding Yu teaches or suggests "voice data in an electronic business card" and, in combination with Fu and either Yoshizawa or Angwin, teaches or at least suggests, "using said saved voice data to verify an identity of party," as recited in claim 1. (Ans. 9–10 and 14–16). Issue 1(b) Appellants contend Yu teaches away from using voice data in an electronic business card (App. Br. 9) because: The type of functionality required by claim 1 would change the principle of operation of Yu et al. since it would require including voice data in an electronic business card. The principle of operation of Yu et al. is to provide a vCard on a mobile terminal such that the vCard includes an image portion for a picture or photograph and a text portion for user information. Voice data is not data of the type found in on a Appeal 2012-000061 Application 11/904,649 8 picture or photograph and is not text. Modifying this functionality to require including voice data in an electronic business card would be a fundamental change to Yu et al.'s system. Furthermore, it would be a change that is not suggested by Yu et al. or any other cited reference. App. Br. 9–10 (citation omitted). We disagree with Appellants' contentions. "'A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.'" Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted). A reference does not teach away if it merely expresses a general preference for an alternative invention from amongst options available to the ordinarily skilled artisan, and the reference does not discredit or discourage investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Further, "a reference will teach away if it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see also W.L. Gore & Assoc., v. Garlock, Inc., 721 F.2d 1540, 1550–51 (Fed. Cir. 1983). The mere failure of a reference to mention alternatives known in the art does not constitute a teaching away from using the known elements. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference does not teach away . . . if it merely expresses a general preference for an alternative invention but does not 'criticize, discredit, or otherwise discourage' investigation into the invention claimed" (citation omitted)). Appeal 2012-000061 Application 11/904,649 9 Thus, Yu's general preference for a vCard having an image portion for a picture or photograph and a text portion for user information does not constitute teaching away as argued, because Yu generally teaches or suggests a data structure in the form of a multimedia vCard which can include different data types, and Appellants' Specification teaches audio clips (voice data) are known to be a type of file used in multimedia vCards. Fu, with either of Yoshizawa or Angwin, are relied upon to modify Yu to include verifying a user identity based upon saved voice data. We disagree with Appellants' contentions because we find Appellants' invention is simply a combination of known teachings that realize a predictable result. The Supreme Court has determined the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). The skilled artisan would "be able to fit the teachings of multiple patents together like pieces of a puzzle" since the skilled artisan is "a person of ordinary creativity, not an automaton." Id. at 420–21. Further, Appellants have provided no evidence that combining such teachings was "uniquely challenging or difficult for one of ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Nor have Appellants provided objective evidence of secondary considerations which our reviewing court guides "operates as a Appeal 2012-000061 Application 11/904,649 10 beneficial check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Systems, 725 F.3d 1341, 1352 (Fed. Cir. 2013).5 Accordingly, on this record, Appellants have not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner's reading of the contested limitations on the cited prior art, or in the resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 1, and claims 2, 3, 5– 9, 11–16, 18, 19, 21, and 22, which fall therewith. 2. § 103 Rejection of Claim 4 Issue 2 Appellants argue (App. Br. 13–14; Reply Br. 14–15) the Examiner's rejection of claim 4 under 35 U.S.C. § 103(a) as being obvious over the combination of the prior art of record is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a method that includes, inter alia, "including voice data including providing said voice data on a physical business card and reading said voice data into an address book device," as recited in claim 4? Analysis Appellants contend dependent claim 4 is separately allowable because none of the cited prior art teaches or suggests the disputed limitation of claim 4. App. Br. 13. We agree with Appellants. 5 See also App. Br. 25 ("Evidence Appendix . . . None"). Appeal 2012-000061 Application 11/904,649 11 We disagree with the Examiner's findings. The Examiner's statement "[i]t would have been obvious. . . to modify the combo . . . [to] read[] said voice data into an address book device, to provide means for either electronically transmitting or using 'card reader' to input the vCard data into another person's computer/address book/contact list," is merely conclusory, and does not reference any teaching or suggestion in the cited prior art in support of the Examiner's findings. Ans. 11 and 19. While the Examiner emphasizes the "address book" portion of the limitation, we find the references, either alone or in combination, do not teach or suggest reading voice data into an address book device from a physical business card. Accordingly, Appellants have provided sufficient evidence or argument to persuade us of at least one reversible error in the Examiner's reading of the contested limitations on the cited prior art. Therefore, on this record, we do not sustain the Examiner's obviousness rejection of dependent claim 4 under 35 U.S.C. § 103(a). 3. § 103 Rejection of Claims 10 and 17 Issue 3 Appellants argue (App. Br. 15 and 17–18; Reply Br. 16–18) the Examiner's rejection of claims 10 and 17 under 35 U.S.C. § 103(a) as being obvious over the combination of the prior art of record is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a method, "further including a verification unit configured to identify a caller from an incoming call and from the integrated voice data," as recited in claim 10? Appeal 2012-000061 Application 11/904,649 12 Analysis Appellants contend the Examiner's taking of Official Notice, i.e., a person with skill in the art can use recorded voice data for comparison and identification of a person, was improper because, in the Final Action, the Examiner provided no evidence to support the taking of such notice. App. Br. 15–16. Appellants further allege the Examiner has not provided an articulated reasoning or a rationale as to why a skilled artisan would have modified the cited prior art to teach or suggest the limitations of claim 10. We disagree with Appellants' contentions for the reasons set forth by the Examiner. Ans. 12 and 20–21. In particular, we agree with the Examiner's findings "the ability to record a voice (from a call) and then compare it to another voiceprint is clearly the same [as the teachings of Fu], and/or well understood . . . [and t]he only slight difference is that Fu does not teach WHERE the original voice print comes from." Ans. 20. We find this to be an articulated rationale sufficient to justify the combination. In reviewing the record, Appellants have not traversed the Examiner's finding by stating that the purported well-known fact is not considered to be common knowledge or well-known in the art. See MPEP § 2144.03(C) ("To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner's action, which would include stating why the noticed fact is not considered to be common knowledge or well- known in the art. See 37 CFR 1.111(b)." (Emphasis added)). An adequate rebuttal of the Examiner's taking of Official Notice must contain sufficient information or argument to create on its face a reasonable doubt regarding the circumstances justifying the Examiner's notice of what is well known to Appeal 2012-000061 Application 11/904,649 13 one of ordinary skill in the art. In re Boon, 439 F.2d 724, 728 (CCPA 1971). We find Appellants have not met their shifted burden of persuasion in this regard. In light of the Examiner's rationale and justification for the taking of Official Notice (Ans. 20), we find Appellants have failed to persuasively rebut the Examiner's reliance upon such notice. Reply Br. 16–18. Accordingly, on this record, Appellants have not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner's reading of the contested limitations on the cited prior art. Therefore, we sustain the Examiner's obviousness rejection under 35 U.S.C. § 103(a) of dependent claim 10 and dependent claim 17, which recites the disputed limitation in commensurate form. 4. § 103 Rejection of Claim 20 Issue 4 Appellants argue (App. Br. 19–20; Reply Br. 19–20) the Examiner's rejection of claim 20 under 35 U.S.C. § 103(a) as being obvious over the combination of the prior art of record is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a telecommunications system "wherein said . . . second user device comprises a business card reader," as recited in claim 20? Analysis Appellants contend the cited prior art does not teach or suggest "a second user device that comprises a business card reader . . . [because] the Appeal 2012-000061 Application 11/904,649 14 cited art does not even mention a business card reader" (App. Br. 19), and, further, "[t]he Examiner has not presented any reference teaching such limitations." Id. We agree with Appellants. The Examiner asserts: [T]he claim merely puts forth having voice data on a vCARD (see above) but was "silent" on reading voice data into an address book. Yu teaches receving data and storing it (in perhaps an address book since he teaches storing contact information, Para #19). Hence the vCARD data (or smart card data) can be transmitted in various forms (wireless, swiping as per Fu, other manners per Yoshizawa/Angwin) and "read into" (eg. stored) in memory. Ans. 21. We have searched the cited prior art, the Final Action, and the Examiner's Answer, and are unable to locate any teaching or suggestion in the references of record, nor any relevant findings by the Examiner which support the Examiner's position that the combination of Yu, Fu, and either Yoshizawa or Angwin teaches, or reasonably suggests a card reader as disclosed, for example, in Appellants' Specification. See Spec. ¶ 1038, and Figs. 1, 2, 4, and 8b. While the phrase "card reader" may be broadly construed, it must also be reasonable to support a rejection under § 103. We find the Examiner has effectively and improperly read the "card reader" limitation out of the system claim. Accordingly, Appellants have provided sufficient evidence or argument to persuade us of at least one reversible error in the Examiner's reading of the contested limitations on the cited prior art and the resulting Appeal 2012-000061 Application 11/904,649 15 legal conclusion of obviousness. Therefore, on this record, we do not sustain the Examiner's obviousness rejection of dependent claim 20.6 REPLY BRIEF To the extent Appellants advance new arguments in the Reply Brief (Reply Br. 1–20) not in response to a shift in the Examiner's position in the Answer, we note that "[a]ny bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived." Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech., Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue not raised by an appellant in its opening brief . . . is waived."). CONCLUSIONS (1) The Examiner did not err with respect to the obviousness rejection of claims 1–3, 5–19, 21, and 22 under 35 U.S.C. § 103(a) over the combination of Yu, Fu, and either Yoshizawa or Angwin, and we sustain the rejection. 6 We note dependent system claim 20 depends from independent system claim 18, for which we find Appellants did not sufficiently and separately argue any potential structural differences from method claim 1. In particular, Appellants argue "[a]s discussed above [with respect to claim 1], none of the cited art discloses or suggests all of the limitations of claim 18 such as electronic business card data that includes integrated voice data . . . [and] the cited art teaches away from electronic business card data that includes integrated voice data." App. Br. 18. Thus, we find the argument for claim 18 is substantially the same as for claim 1, i.e., the type of data included on the electronic business card, and not any potential structural differences. Appeal 2012-000061 Application 11/904,649 16 (2) The Examiner erred with respect to the obviousness rejection of claims 4 and 20 under 35 U.S.C. § 103(a) over the combination of Yu, Fu, and either Yoshizawa or Angwin, and we do not sustain the rejection. DECISION We affirm the Examiner's decision rejecting claims 1–3, 5–19, 21, and 22, and we reverse the Examiner's rejection of claims 4 and 20. 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-IN-PART msc Copy with citationCopy as parenthetical citation