Ex Parte Jindal

Patent Trial and Appeal BoardAug 6, 2014

11168135 (P.T.A.B. Aug. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DINESH K. JINDAL ____________ Appeal 2012-003614 Application 11/168,135 Technology Center 2600 ____________ Before STEPHEN C. SIU, BRADLEY W. BAUMEISTER, and DENISE M. POTHIER, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–19.1 App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Invention Appellant’s invention relates to a conversation viewing system and method for providing text during a live voice conversation over a telephone network. See Spec. 1:7-11. Claim 1 is reproduced below with emphasis: 1 Throughout this opinion, we refer to the Appeal Brief (App. Br.) filed July 11, 2011. Appeal 2012-003614 Application 11/168,135 2 1. A conversation viewing system, comprising: a voice conversion system that receives voice traffic from a voice call representing a voice conversation between a first party and a second party over a telephone network, and continually converts the voice traffic into text; and a buffer system that receives the text from the voice conversion system, and continually buffers the text of the voice conversation in a first in first out manner so that the buffered text represents the most recent portion of the voice conversation; at some point during the voice call while continually buffering the text of the voice conversation in the first in first out manner, the buffer system receives a request from the first party to view a portion of the voice conversation that was missed by the first party, and transmits the buffered text that represents the missed portion of the voice conversation to the first party for display on a voice call device responsive to receiving the request.2 The Examiner relies on the following as evidence of unpatentability: Holm US 5,850,629 Dec. 15, 1998 Brown US 2004/0083101 A1 Apr. 29, 2004 Claims 1–19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Brown and Holm. Ans. 5-13. THE CONTENTIONS Regarding independent claim 1, the Examiner finds that Brown teaches all its limitations, except for the buffer being a first-in-first-out (FIFO) buffer. Ans. 5-6. For this missing feature, the Examiner turns to Holm. Ans. 6-7 (citing Holm 12:1-7). Appellant principally argues that an ordinarily skilled artisan would not have used the FIFO buffer in Holm with 2 If prosecution continues, the Examiner should consider whether this claim recites both an apparatus and method steps. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). Appeal 2012-003614 Application 11/168,135 3 Brown, because such a combination would have rendered Brown’s Personal Telephony Recorder (PTR) unsatisfactory for its intended purpose. App. Br. 8-10; Reply Br. 2-4. ISSUE Under § 103, would combining Holm’s FIFO buffer with Brown render Brown unsatisfactory for its intended purpose? ANALYSIS We begin by construing the key disputed limitation of claim 1, which calls for “a buffer system that . . . continually buffers the text of the voice conversation in a first in first out manner so that the buffered text represents the most recent portion of the voice conversation[.]” During examination of a patent application, a claim is given its broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations and quotations omitted). The disclosure does not define the phrase, “a buffer system that . . . buffers . . . in a first in first out manner,” or a FIFO buffer. However, one definition for the phrase “first in first out” includes “[a] method of processing a queue, in which items are removed in the same order in which they were added – the first in is the first out.”3 Thus, an ordinarily skilled artisan would have understood the recited phrase, “a buffer system” that buffers “in a first-in first-out manner” in claim 1 to mean processing queued data (e.g., text), such that data are removed from the buffer in the same order 3 Microsoft® Computer Dictionary 215 (5th ed. 2002). Appeal 2012-003614 Application 11/168,135 4 in which they were added to the buffer. Notably, the above broad, but reasonable interpretation of a buffer that buffers in a first-in first-out manner does not limit the capacity of the buffer or its type of memory as Appellant disputes. App. Br. 9; Reply Br. 3. Appellant asserts that “FIFO buffering implies that not all data will be stored in a buffer, because the first data in will be the first data out.” Reply Br. 3. Yet, Appellant provides insufficient evidence supporting this interpretation or demonstrating that one skilled in the art would have understood a FIFO buffer was one in which all data necessarily could not be stored in the buffer. See App. Br. 9. Without providing a citation, Appellant discusses that “[t]he specification of the pending application states that a FIFO buffer may store 30 seconds, 1 minute, 2 minutes, etc, [sic] of text for a call.” App. Br. 9. The disclosure supports that buffer 214 “has a finite amount of storage space” (Spec. 5:13) and discusses a buffer that is able to buffer thirty seconds, one minute, and two minutes of conversation (Spec. 5:13-15). Yet, these are just examples, for the disclosure also includes “etc[.]” as another example of how much text will be stored in the buffer. Spec. 5:15. Other buffer capacities thus are contemplated by the disclosure. Appellant even further argues that “the FIFO buffer only stores the most recent text of the call.” App. Br. 7. Claim 1 recites “so that the buffered text represents the most recent portion of the voice conversation.” Given the claim’s breadth, claim 1 requires that the buffered text represents the most recent portion of the voice conversation, but does not limit the buffered text to represent only the most recent portion of the voice conversation. Additionally, given the disclosure as discussed above, the phrase, “the most recent portion of the voice conversation” is a broad Appeal 2012-003614 Application 11/168,135 5 recitation and contemplates an extensive time range (see Spec. 5:13-15), including in some instances, as discussed by the Examiner (Ans. 15), the length of an entire call. Even assuming, without agreeing, that claim 1’s recited buffer may store a limited amount of time of text for a call, the Examiner describes a scenario where the combined Brown/Holm system would perform adequately. Ans. 15. That is, when the FIFO buffer can store four minutes of call data and a call only lasts less than four minutes (e.g., three minutes), the system will be able to store the entire call as Brown contemplates and would not render Brown unsatisfactory for its intended purpose. See id. Appellant acknowledges this position, but asserts that the combined system would not “be able to provide access to call data for an entire call for most telephone conferences. The Appellants do not believe that the PTR would be considered satisfactory if it were not able to offer its services for most telephone conferences.” Reply Br. 4. We disagree. First, as stated above, the amount of voice conversation that the FIFO buffer in claim 1 stores contemplates a large range of times. Thus, whether or not the combined system would be able to store data for the entire call of most telephone conferences has not been demonstrated by Appellant. Second, as discussed above, Appellant has not demonstrated a FIFO buffer, including Holm’s, has a capacity that would not be able to store the entire call. Thus, unlike In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984), adding Holm’s FIFO buffer to Brown does not demonstrate that Brown would be rendered inoperable or unsatisfactory for its intended purpose. Third, Brown also discusses the feature of storing only a portion of the call. See Brown ¶¶ 159, 212. This feature would not be rendered Appeal 2012-003614 Application 11/168,135 6 unsatisfactory for its intended purpose. Fourth, the prior art need not demonstrate that the combination of Brown and Holm is preferred or the most desirable combination. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). Accordingly, Appellant has not demonstrated that adding Holm’s FIFO buffer to Brown would render Brown unsatisfactory for its intended purpose. Lastly, Appellant asserts that the Examiner has used the claims “as a template to piece together two unrelated references.” App. Br. 10. Again, we disagree. Both references address converting between voice and text and how to buffer such data (Brown ¶¶ 14, 220; Holm Abstract, 12:1-7) and thus are reasonably pertinent to the problem with which Appellant was concerned. Also, taking account of that which is within the level of ordinary skill in the art at the time of the claimed invention, the Examiner indicates that the features in Brown and Holm are no more than a combination of familiar elements and that combining Holm with Brown yields a predictable and desirable result of buffering in a FIFO manner. See Ans. 7; see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, the Examiner is not using the claims as a template to piece the references together or using impermissible hindsight when combining the references. Although independent claims 7 and 12 differ in scope from claim 1, Appellant does not present separate arguments. See App. Br. 11. Both independent claims 7 and 12, notably, contain a limitation that buffers data “in a first in first out manner” so that the data “represents the most recent portion of the voice conversation.” As stated above, we are not persuaded that Brown and Holm fail to teach or suggest this recitation and refer to our above discussion. Appeal 2012-003614 Application 11/168,135 7 For the foregoing reasons, Appellant has not persuaded us of error in the rejection of independent claim 1 or claims 2–19, not separately argued with particularity. CONCLUSION The Examiner did not err in rejecting claims 1–19 under § 103. DECISION The Examiner’s decision rejecting claims 1–19 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)(iv). AFFIRMED rwk Notice of References Cited Application/Control No. 11/168,135 Applicant(s)/Patent Examiner Art Unit Page 1 of 1 U.S. PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Name Classification A US- B US- C US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Country Name Classification N O P Q R S T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) U Microsoft® Computer Dictionary 215 (5th ed. 2002). V W X *A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.