Ex Parte Caspi et al

Patent Trial and Appeal Board

Nov 20, 2014

11904649 (P.T.A.B. Nov. 20, 2014)

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