Ex Parte Da Palma et al

Patent Trial and Appeal Board

Dec 12, 2012

10734866 (P.T.A.B. Dec. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/734,866 12/12/2003 William V. Da Palma BOC9-2003-0096
(1082-7U)
1522
46322 7590 12/13/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
COLUCCI, MICHAEL C
ART UNIT PAPER NUMBER
2658
MAIL DATE DELIVERY MODE
12/13/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte WILLIAM V. Da PALMA, BRETT J. GAVAGNI,
MATTHEW W. HARTLEY, and BRIEN H. MUSCHETT

________________

Appeal 2010-007927
Application 10/734,866
Technology Center 2600
________________

Before, KALYAN K. DESHPANDE, JOHNNY A. KUMAR and
JOHN G. NEW, Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 8, 15, and 21-37 as unpatentable
under 35 U.S.C. § 103(a) as being obvious over the combination of
Williams et al. (US 2003/0212561 A1, November 13, 2003) (“Williams”)
and Koehler et al. (US 2003/0156706 A1, August 21, 2003) (“Koehler”).
Claims 2-7, 9, 14, and 16-20 are cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention is directed to a method and system for testing
voice applications, such as VoiceXML applications, that provides a run-
time simulation environment for voice applications that simulates and
automates user interaction. Abstract.

GROUPING OF CLAIMS

Because Appellants argue that the Examiner erred for substantially
the same reasons with respect to independent claims 1, 8 and 15, as well as
dependent claims 21-37, we select claim 1 as representative of the claims
on appeal. App. Br. 4. Claim 1 recites:
1. A computer-implemented method for simulating a
run-time user interaction with a voice application, said method
comprising the steps of:

loading a user simulation script programmed to specify
simulated voice interactions with the voice application;

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deriving from the voice application a nominal output of
the voice application; and

processing the user simulation script to generate both a
simulated output for the voice application corresponding to the
nominal output and a simulated input for the voice application
corresponding to a pre-determined user input to the voice
application.

App. Br. 18.

ISSUES

Appellants argue that the Examiner erred in finding that claim 1 is
unpatentable under 35 U.S.C. § 103(a) as being obvious over Williams and
Koehler. App. Br. 9. Specifically, Appellants argue that the Examiner
erred in finding that Williams discloses or suggests the limitation of claim 1
reciting “processing the user simulation script to generate … a simulated
input for the voice application corresponding to a pre-determined user
input.” App. Br. 12. Appellants also allege that the Examiner erred by
mischaracterizing the scope of Koehler, and that Koehler fails to disclose
the limitations of claim 1 reciting “deriving from the voice application a
nominal output of the voice application” and “processing the user
simulation script to generate … a simulated output for the voice
application….” App. Br. 15.
Appellants further contend that the Examiner erred in combining
Koehler with Williams because Koehler is non-analogous prior art. App.
Br. 8. Appellants also contend that the Examiner erred in finding that the
language of the claim reciting “nominal output,” “simulated output,” and
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“simulated input” is ambiguous. App. Br. 10. We therefore address the
following issues in turn:
1. Whether the Examiner erred in finding ambiguous the language of
claim 1 reciting “nominal output,” “simulated output,” and
“simulated input.”
2. Whether the Examiner improperly combined Koehler and Williams
on the basis that Koehler is non-analogous prior art.
3. Whether the Examiner erred in finding that Williams discloses the
limitation of claim 1 reciting “processing the user simulation script to
generate … a simulated input for the voice application corresponding
to a pre-determined user input.”
4. Whether the Examiner erred in finding that Koehler discloses the
limitations of claim 1 reciting “deriving from the voice application a
nominal output of the voice application” and “processing the user
simulation script to generate … a simulated output for the voice
application….”

ANALYSIS
Issue 1: Alleged ambiguity of the terms “nominal output,” “simulated
output,” and “simulated input.”

Appellants argue that the terms “nominal output,” “simulated
output,” and “simulated input,” when viewed in light of the Specification,
are not ambiguous, as asserted by the Examiner in the Final Rejection of
claim 1. App. Br. 10. According to Appellants, the term “nominal” as
employed in the Specification, means “actual” and “simulated” refers to
“text.” Id. (citing Specification, [0021]). Thus, Appellants contend, “the
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actual output (i.e. nominal output) of a voice application would be a voice,
the simulated output is text. Similarly, since the actual input into a voice
application is audio, the simulated input is also text.” App. Br. 10.
The Examiner acknowledges the clarification provided supra,
however the Examiner finds that what is claimed in claim 1 does not reflect
that which is defined in the arguments by Appellants (i.e., nominal
output/input is voice and simulated output/input is text). Ans. 13. The
Examiner also finds that this is understood as “speech to text.” Id.
We are persuaded by Appellants that their definitions of the disputed
terms, in light of their usage in the Specification, are not ambiguous and we
adopt the definition of the terms as provided by Appellants herein with
respect to the remaining issues.

Issue 2: Non-analogous prior art.
Appellants argue that Koehler is non-analogous prior art with respect
to the inventions disclosed by Williams and Appellants’ claim 1. App. Br.
8. According to Appellants, Koehler is directed to a training tool for
training call center agents based on interactions with simulated customers.
Id. Consequently, Appellants contend, Koehler is not within the same field
of endeavor as either the claimed invention or Williams; since Koehler
discloses human trainees that are not part of the field of endeavor (i.e.,
automated device for test voice applications), Koehler does not solve any
known need or problem in the field of endeavor. Id.
The Examiner responds that Koehler teaches predetermined
responses in a voice application such, wherein voice files may be
referenced, prerecorded and stored or produced on-line by the developer,
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for each of the desired customer lines in a dialog segment. Ans. 10. The
Examiner also finds that Koehler demonstrates examples of both simulated
and actual outputs in a voice application, wherein the use of a “nominal”
output is addressed in an example, wherein Koehler teaches regional
database may also include customer data, which likewise populates the
software emulation, so that the trainee receives “pop-up” caller data during
simulated calls, as would be the case in an actual call center interaction.
Ans. 11. The Examiner concludes that it would have been obvious to one
of ordinary skill in the contemporaneous art to modify the system of
Williams to incorporate deriving from the voice application additional
nominal output of the voice application as taught by Koehler to allow for
voice files that may be referenced, prerecorded and stored as voice or text,
having both text lines displayed and converted to speech. Ans. 12 (citing
Koehler, [0049]).
We are not persuaded by Appellants’ argument that Koehler is non-
analogous prior art. A reference qualifies as prior art for an obviousness
determination under 35 U.S.C. § 103 only when it is analogous to the
claimed invention. Innovention Toys, LLC, v. MGA Entertainment, Inc.,
637 F.3d 1314, 1321 (Fed. Cir. 2011). “Two separate tests define the scope
of analogous prior art: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed and, (2) if the reference is
not within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Furthermore, “[a] reference is reasonably pertinent if, even though it may
be in a different field from that of the inventor’s endeavor, it is one which,
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because of the matter with which it deals, logically would have commended
itself to an inventor’s attention in considering his problem.” In re Clay, 966
F.2d 656, 659 (Fed. Cir. 1992).
Koehler, together with Williams and Appellants’ claim 1, all
contemplate simulations of interactions between telephonic and computer-
based voice-recognition and response systems. We find Appellants’
attempt to exclude Koehler from the field of art including Williams and
Appellants’ claimed invention, on the basis of live humans being employed
in Koehler’s claimed invention, to be unduly restrictive. We further find
that Koehler also qualifies as reasonably pertinent because the matter with
which it deals (viz., simulation of computer-telephone system interactions in
a training situation) would likely commend itself to an inventor’s attention
in considering his problem. We therefore find that the Examiner did not err
by improperly combining Koehler with Williams in the rejection of claim 1.

Issue 3: The limitation of claim 1 reciting “processing the user simulation
script to generate … a simulated input for the voice application
corresponding to a pre-determined user input.”

Appellants next argue that the Examiner erred in finding that
Williams teaches the limitation of claim 1 reciting “processing the user
simulation script to generate ... a simulated input for the voice application
corresponding to a pre-determined user input.” App. Br. 12. According to
Appellants, Williams does not teach generating a simulated input for the
voice application; instead, argue Appellants, Williams teaches generating
an actual input for the voice application. Id.
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The Examiner responds that Williams teaches voice applications
wherein one or more test scripts are generated in VXML software language.
Ans. 14 (citing Williams, Fig. 3). The Examiner quotes from Williams to
support this finding:
The one or more test scripts are coupled to the test VXML
server 108, and are thereby executed within the test VXML
server 108. When a step of the one or more test scripts is
executed by the test VXML server 108, the execution causes a
VXML test page to be called from the test VXML server 108.
The VXML test page is coupled to the VXML browser 110.
The VXML browser 110 generates a simulated audio telephone
signal in response to the VXML test page and couples the
simulated audio telephone signal to the telephony interface 112.
As described above, the audio telephone signal can be either the
signaling portion or the RT portion of a telephone call. The
audio telephone signal is coupled to the PSTN, whereby it is
further coupled to the contact center 64. The contact center
processes the audio telephone signal in the same way that the
audio telephone signal of FIG. 2 is processed, thereby
generating the IVR audio response onto the PSTN 62. The IVR
audio response is received by the telephony interface 112,
whereupon it is converted to a response text and coupled to the
VXML browser 110.

Ans. 14-15 (emphasis omitted) (quoting Williams, ¶¶ [0052]-[0053]).
Consequently, finds the Examiner, Williams explicitly teaches a simulated
output for the voice application corresponding to the nominal output and a
simulated input for the voice application corresponding to a pre-determined
user input to the voice application. Ans. 15.
Appellants reply that the Examiner’s reliance upon the teachings
associated with the process of Fig. 4 (i.e., paragraphs [0064]-[0077]) is
misplaced and that the method discussed in these passages describe how the
test script of Williams is compiled. Reply Br. 7. Appellants argue that, on
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the contrary, the limitations of claim 1 at issue refer to processing an
already-created user simulation script to generate the simulated input and
output. Reply Br. 7-8.
We are persuaded by the Examiner’s reasoning and adopt it as our
own. Williams teaches both simulated inputs and outputs that are generated
from text scripts. Ans. 14-15; see also Williams, ¶¶ [0052]-[0053].
Furthermore, Williams also teaches the limitation of claim 1 reciting
“deriving from the voice application a nominal output of the voice
application.” In Fig. 3, Williams illustrates audio input arriving via the
telephony interface and being converted via the VXML browser and Test
VXML Server to a simulated input. Ans. 14; Williams [0053] (“The IVR
audio response is received by the telephony interface 112, whereupon it is
converted to a response text and coupled to the VXML browser 110.”). We
therefore conclude that the Examiner did not err in finding that Williams
discloses or suggests the limitations of claim 1 reciting “processing the user
simulation script to generate ... a simulated input for the voice application
corresponding to a pre-determined user input.”

Issue 4: The limitations of claim 1 reciting “deriving from the voice
application a nominal output of the voice application” and “processing the
user simulation script to generate … a simulated output for the voice
application.”

Appellants argue that the Examiner also erred in finding that Koehler
discloses or suggests the limitation of claim 1 reciting “deriving a nominal
output from the voice application” and “processing the user simulation
script to generate a simulated output for the voice application.” App. Br.
15. According to Appellants, Koehler teaches that only a single type of
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output is obtained from the script execution engine, viz., the audio
telephone signal. Id. Appellants also contend that Koehler teaches that the
input into the script execution engine is from the human trainee and not
based upon the text scripts. Id. As a result, argue Appellants, Koehler fails
to teach the limitations for which Koehler is being relied upon to teach. Id.
The Examiner responds by clarifying his position to direct the
majority of the claim language to be taught by Williams, as originally
intended by Examiner, wherein Koehler now has been clarified to teach
“deriving from the voice application a nominal output of the voice
application.” Ans. 13. The Examiner finds that Williams explicitly teaches
both a simulated output for the voice application corresponding to the
nominal output and a simulated input for the voice application
corresponding to a pre-determined user input to the voice application. Ans.
17. The Examiner further responds by finding that Koehler improves
Williams by teaching that when a new entry is identified, the voice
simulator sends the phrase to a text-to-speech application to transform the
text data into audio files. Ans. 16 (citing Koehler, ¶ [0058]). The Examiner
further finds that the recorded customer lines are converted to speech
(unless they are already recorded speech) and also stored in the database as
text and as audio files. Ans. 17 (citing Koehler, ¶ [0087]).
Appellants argue that the Examiner fails to provide a rational
underpinning for combining Koehler and Williams. Reply Br. 8.
Appellants contend that Koehler describes an interactive dialog-based
training method that is used to train a human to which the display of text is
relevant, whereas Williams teaches a system that generates test scripts for
testing a voice application. Id. Consequently, Appellants maintain, no real
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benefit would accrue, to one practicing the teachings of Williams based
upon the Examiner’s proposed modification. Id.
We are not persuaded by Appellants’ arguments. We have already
addressed supra whether the Examiner improperly combined Williams and
Koehler and have concluded that the Examiner did not so err. Moreover,
we agree with the Examiner’s finding that Williams discloses or suggests
the majority of the claim language, which is improved upon by Koehler.
Ans. 15. We further agree with the Examiner that it would have been
obvious to one of ordinary skill in the contemporaneous art to modify the
system of Williams to incorporate deriving from the voice application a
nominal output of the voice application as taught by Koehler to allow for
voice files that may be referenced, prerecorded and stored as voice or text,
having both text lines displayed and converted to speech. Ans. 6 (citing
Koehler, ¶ [0049]). Consequently, we conclude that the Examiner did not
err in concluding that claim 1 would have been obvious to an artisan of
ordinary skill in the contemporaneous art over the combination of Williams
and Koehler.

DECISION
The Examiner’s rejection of claims 1, 8, 15, and 21-37 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED

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