Ex Parte Kennewick et al

Patent Trials and Appeals Board

Apr 19, 2016

12943699 - (D) (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/943,699 11/10/2010
133759 7590 04/21/2016
Sheppard Mullin Richter & Hampton LLP
12275 El Camino Real, Suite 200
San Diego, CA 92130
FIRST NAMED INVENTOR
Mike Kennewick
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.
45HV-218255 4185
EXAMINER
HALE,TIMB
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
04/21/2016 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):
dmipdocketing@sheppardmullin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKE KENNEWICK and LYNN ELISE ARMSTRONG
Appeal2014-004731 1
Application 12/943,6992
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 5-11, and 15-26. An oral hearing was held on April 5,
2016. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
September 5, 2013) and Reply Brief ("Reply Br.," filed February 27, 2014),
and the Examiner's Answer ("Ans.," mailed December 27, 2013) and Final
Office Action ("Final Act.," mailed March 5, 2013). The record includes a
transcript of the oral hearing held April 5, 2016.
2 Appellants identify VoiceBox Technologies Corporation as the real party
in interest. App. Br. 2.
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Application 12/943,699
CLAIMED INVENTION
Appellants' claimed invention
generally relates to providing a natural language content
dedication service in a voice services environment, and in
particular, to detecting multi-modal device interactions that
include requests to dedicate content, identifying the content
requested for dedication from natural language utterances
included in the multi-modal device interactions, processing
transactions for the content requested for dedication, processing
natural language to customize the content for recipients of the
dedications, and delivering the customized content to the
recipients of the dedications.
(Spec. ii 2).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A system for providing a natural language content
dedication service, comprising:
one or more processors; and
one or more non-transitory computer readable mediums
storing executable instructions that when executed by the one or
more processors cause the one or more processors to:
receive a first utterance that includes a natural
language utterance;
determine, based on processing of the first utterance
by a speech recognition engine, one or more words or
phrases of the first utterance;
identify, based on a natural language processing of
the one or more words or phrases of the first utterance,
content to dedicate to a recipient;
initiate, based on the identified content, a dedication
to the recipient;
receive a second utterance to be associated with the
dedication; and
send information to enable the recipient to access
the content and the second utterance.
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REJECTIONS
Claims 1, 7, 9, 10, 11, 17, 19, 20, and 26 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kennewick (US 2004/0193420 Al,
pub. Sept. 30, 2004), Gold (US 2002/0032752 Al, pub. Mar. 14, 2002), and
Brachman (US 6,704,576 Bl, iss. Mar. 9, 2004).
Claims 6 and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kennewick, Gold, Brachman, and Mahajan (US 2008/0140385 Al,
pub. June 12, 2008).
Claims 5, 15, and 23-25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kennewick, Gold, Brachman, and Caine
(US 2010/0036967 Al, pub. Feb. 11, 2010).
Claims 8 and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kennewick, Gold, Brachman, and Ginter (US 5,892,900,
iss. Apr. 6, 1999).
Claims 21and22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kennewick, Gold, Brachman, and Anderson
(US 2009/0276700 Al, pub. Nov. 5, 2009).
ANALYSIS
Independent claims 1 and 11 and dependent claims 7, 9, 10, 17, 19, 20, and
26
Appellants argue claims 1, 7, 9, 10, 11, 17, 19, 20, and 26 as a group
(App. Br. 6-8). We select claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. §41.37(c)(l)(iv).
Appellants maintain that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because none of Kennewick, Gold, and Brachman, alone
or in combination, discloses or suggests "identify[ing], based on a natural
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language processing of the one or more words or phrases of the first
utterance, content to dedicate to a recipient," as recited in claim 1 (App.
Br. 7-8).
By way of background, Kennewick is directed to a system for
capturing and processing natural language utterances so as to allow users to
ask natural language questions or give natural language commands in a wide
range of domains, e.g., in a vehicular telematics system (see, e.g.,
Kennewick i-fi-128-34, 41, Abstract). Kennewick, thus, discloses that for
each user utterance, including a question or query or a set of questions or
queries, the system may perform multiple steps, including, inter alia,
(1) capturing the user's question or query through accurate speech
recognition; (2) parsing and interpreting the question or query;
(3) determining the domain of expertise required and context, invoking the
proper resources, including agents; and (4) formulating one or more queries
to one or more local and/ or network data sources or sending appropriate
commands to local or remote devices or the system itself (id. i128).
Gold is directed to a method and system for sending dedications of
popular songs through a communications medium such as the Internet
(see, e.g., Gold i-fi-131, 32, 36, 43). Gold discloses that, in accordance with
the method, a dedication sender, using a personal computer or another
device for accessing a Web-based dedication provider, enters song search
criteria, e.g., a song title, and, in response, receives, from the provider, a list
of songs matching the search criteria (id. i131 ). The sender selects a song
from the received list, and enters transaction information including the email
address of the recipient (id.). In addition to the list of songs, the sender also
receives a phone number to use to leave a dedication message in the form of
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a voice message, which when combined with the dedicated song will create
a complete dedication; alternatively, a text message may be used as a
dedication message (id.). An email is sent to the recipient's email address
containing a URL link to a dedication Web page (id. at Abstract). Retrieval
of the dedication Web page causes retrieval of a dedication file containing
URLs pointing to the voice dedication and the dedicated song; these URLs
are extracted from the dedication file and used by the recipient to play back
the voice dedication and dedicated song (id.).
Brachman discloses a method and system that allows a user to request
data, e.g., multimedia content, using natural language (see Brachman, col. 4,
11. 22-26). Brachman discloses that the request may be entered by typing in
a natural language search; alternatively, a voice means may be used to enter
the user's natural language request (id.).
The Examiner takes the position in the Final Office Action that
neither Kennewick nor Gold teaches the argued limitation, i.e.,
"identify[ing], based on a natural language processing of the one or more
words or phrases of the first utterance, content to dedicate to a recipient," as
recited in claim 1, and the Examiner cites Brachman to cure the deficiency
of Kennewick and Gold (Final Act. 4-5 (citing Brachman, col. 4, 11. 5-27;
col. 8, 11. 53-67; col. 9, 11. 1-11; claim 7)). However, the Examiner asserts
in the Answer that the rejection of claim 1 is proper based on two separate
rationales, i.e., I (Kennewick in view of Gold) and II (Kennewick in view of
Gold and Brachman) (Ans. 4-8). Describing rationale I, the Examiner
explains that Kennewick discloses the base method, i.e., capturing and
processing a natural language speech utterance (see, e.g., id. at 4-5 (citing
Kennewick i-f 41) ), and that Gold teaches that "the sender reviews the song
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list and selects a song to dedicate to a recipient" (id. at 5 (citing Gold if 3 6) ).
From this, the Examiner concludes that it would have been obvious to a
person of ordinary skill in the art to use Kennewick to process a natural
language utterance and to then route that utterance as input to the Gold
system (id. at 5-6).
Turning to rationale II, the Examiner notes that "Gold teaches: a
sender reviewing a song list and selecting a song to dedicate to a recipient
(See [0036] of Gold)" and that "Brachman teaches: a user may request data
using a natural language search and a voice means may be used to enter the
user's natural language request. (See col. 4[,] l[l.] 22-26 of Brachman)" (id.
at 6). And the Examiner concludes that
[ s ]ince each individual element and its function are shown in the
prior art, albeit shown in separate references, the difference
between the claimed subject matter and the prior art rests not on
any individual element or function but in the very combination
itself that is in the substitution of content dedicated to the
recipient for broadly defined content. Thus, the simple
substitution of one known element for another producing a
predictable result renders the claim obvious.
Id. at 7.
Responding to the Examiner's assertions in their Reply Brief,
Appellants again maintain that Kennewick, Gold, and Brachman, even if
combined, fail to disclose or suggest "identify[ing], based on a natural
language processing of the one or more words or phrases of the first
utterance, content to dedicate to a recipient," as recited in claim 1 - which
Appellants assert requires that "both the content to be dedicated and the
recipient are identified based on a natural language processing of one or
more words or phrases of a first utterance" (Reply Br. 3--4).
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Addressing the combination of Kennewick and Gold (i.e., the
Examiner's rationale I), Appellants note that Gold teaches that a user may
take a number of actions to dedicate content to a recipient, i.e., retrieving a
song list, selecting a song from the song list, and providing a recipient's
email address to send the song to the recipient (id. at 5 (citing Gold i-f 36)).
And Appellants argue that because "Gold's dedication process requires a
user to manually handle each of the foregoing actions," the combination of
Kennewick and Gold fails to disclose or suggest that one or more words or
phrases of a first utterance may be processed to identify content to be
dedicated and a recipient of the content, as called for in claim 1 (id.).
Appellants' argument is not persuasive at least it is not commensurate
with the language of the claim. Appellants assert that claim 1 requires that
both the content to be dedicated and the recipient are identified based on
natural language processing of one or more words or phrases of the first
utterance (Reply Br. 3--4). But claim 1 merely recites that the one or more
words or phrases of the first utterance are processed to identify "content to
dedicate to a recipient," i.e., that the first utterance is processed to identify
the content, e.g., the particular song, that will be the subject of the
dedication.
The Examiner cites Kennewick as disclosing a system and method for
capturing and processing natural language speech utterances, and finds that
it would have been obvious to a person of ordinary skill in the art to use
Kennewick to process a natural language utterance and to route the utterance
as input, e.g., to identify content to be dedicated, to the Gold system.
Appellants have presented no persuasive argument or technical reasoning to
explain why one of ordinary skill in the art, using no more than ordinary
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creativity, would not have combined the teachings of Gold and Kennewick,
as the Examiner proposes.
Addressing the Examiner's assertion in the Answer that Gold and
Brachman, in combination, disclose identifying content to be dedicated to a
recipient based on natural language processing of words or phrases of a first
utterance, Appellants assert that Brachman, at best, teaches natural language
search queries as opposed to natural language processing that identifies a
particular content and/or a recipient to whom the content is to be dedicated
(Reply Br. 5). Appellants, thus, argue that although Brachman's natural
language search may produce a set of content results, "the natural language
search does not identify either (i) the content to dedicate or (ii) the recipient
to whom the content is to be dedicated" because a user would need to
manually look through the set of content results to identify a particular
content item of interest (id. at 6 (emphasis omitted)).
Appellants' argument is not persuasive at least because the Examiner
relies on the combination of Gold and Brachman as disclosing the argued
limitation, and not on Brachman alone. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references."). We also fail to see why, and
Appellants do not explain why, Brachman's natural language search query
could not be used to identify a single content item, rather than a set of
content results, which single content item is the particular content item of
interest.
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In view of the foregoing, we sustain the Examiner's rejection of
claim 1 under 35 U.S.C. § 103(a). We also sustain the Examiner's rejection
of claims 7, 9, 10, 11, 17, 19, 20, and 26, which fall with claim 1.
Dependent claims 6 and 16
Appellants argue claims 6 and 16 together (App. Br. 8-9). We select
claim 6 as representative. Claim 16 stands or falls with claim 6.
See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 6 depends from claim 1, and recites that "the executable
instructions, when executed by the one or more processors, cause the one or
more processors to annotate the content with the second utterance."
We are not persuaded by Appellants' argument that the Examiner
erred in rejecting claim 6 because "the relied-upon portion of Mahajan
(i.e., i-f 40)" fails to disclose or suggest the claimed annotation feature (App.
Br. 9). Appellants acknowledge that the cited portion of Mahajan teaches
that a written transcript of audio/visual content may be presented on a user
interface as the audio/visual content is being played (id.). But Appellants
argue that presentation of a transcription of content on a user interface as the
content is being played is not "annotation of content (that is to be dedicated
to a recipient) with an utterance ... much less annotation of content with a
second utterance that is to be associated with a dedication to a recipient" (id.
(emphasis omitted); see also Reply Br. 7-8).
Appellants' argument is not persuasive at least because claim 6 is
rejected as unpatentable over the combination of Kennewick, Gold,
Brachman, and Mahajan, and not over any one of them alone. As described
above, non-obviousness cannot be established by attacking references
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individually where, as here, the rejection is based on the teachings of a
combination of references. Merck, 800 F .2d at 1097.
Appellants' argument also is not persuasive to the extent that
Appellants argue that a written transcript associated with the content, as
disclosed in Mahajan, is not an annotation. The term "annotate" is generally
understood to mean "to supply (a text) with critical or explanatory notes;
comment upon in notes." See RANDOM HOUSE KERNERMAN WEBSTER'S
COLLEGE DICTIONARY, Random House, Inc. (2010), accessed at
http://www.thefreedictionary.com/annotate (last visited on April 1, 2016).
And we find no indication in the Specification that Appellants have given
the term a meaning different from its ordinary and customary meaning.
We agree with the Examiner that, under a broadest reasonable
interpretation standard, "annotate the content with the second utterance" can
properly be construed as a written transcript associated with the content, as
disclosed in Mahajan (Ans. 9). To the extent that Appellants argue that
presenting a "written transcription of content with the same content is not
annotation of content," as called for in claim 6 (Reply Br. 7), we note, as the
Examiner observes, that Gold discloses combining a voice message with the
dedicated song, and, thus, discloses "annotat[ing] the content with the
second utterance" under a broadest reasonable interpretation standard
(Ans. 9 (citing Gold iTiT 31, 32)).
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 103(a) of claim 6, and claim 16, which falls with claim 6.
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Dependent claims 5, 15, and 23-25
Appellants argue claims 5, I5, and 23-25 as a group (App. Br. 9-I I).
We find that these claims are substantially different in scope; therefore, we
address the claims separately.
Claim 23
Claim 23 depends from claim I, and recites that
the executable instructions, when executed by the one or more
processors, cause the one or more processors to: determine ...
one or more words or phrases of the second utterance; and
provide the one or more words or phrases of the second utterance
as textual annotations within metadata of the content.
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claim 23 under 35 U.S.C. § I03(a) because the combination of
Kennewick, Gold, Brachman, and Caine fails to disclose or suggest
"provid[ing] the one or more words or phrases of the second utterance as
textual annotations within metadata of the content," as recited in claim 23
(App. Br. 9-I I; see also Reply Br. 8-9).
The Examiner relies on the combination of Gold and Caine as
disclosing the argued feature, and asserts in the Answer that Gold discloses
adding a text message to the content (Ans. I I (citing Gold i-f 3 I) and that
Caine discloses changes to image information including tags, which are the
part of the metadata (id. (citing Caine i-fi-179, 80)). However, we fail to see
how, and the Examiner does not explain how, adding the text messages in
Gold, which are not words or phrases of an utterance, to metadata of an
image, as disclosed in Caine, discloses or suggests "provid[ing] the one or
more words or phrases of the second utterance as textual annotations within
metadata of the content," as recited in claim 23.
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Therefore, we do not sustain the Examiner's rejection of claim 23
under 35 U.S.C. § 103(a).
Claims 5, 15, 24, and 25
As described above, we find that claims 5, 15, 24, and 25 are
substantially different in scope from claim 23. Because Appellants do not
provide any argument in support of the patentability of claims 5, 15, 24, and
25, apart from the argument with respect to claim 23, we summarily sustain
the Examiner's rejection of claims 5, 15, 24, and 25 under 35 U.S.C.
§ 103(a).
Dependent claims 8 and 18
Claims 8 and 18 ultimately depend from independent claims 1 and 11,
respectively. Appellants do not present any argument in support of the
patentability of claims 8 and 18 except to assert that the claims are allowable
based on their dependence from claims 1 and 11 (App. Br. 11 ).
\Ve are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claims 1 and 11 under 35 U.S.C. § 103(a).
Therefore, we sustain the Examiner's rejection under 35 U.S.C. § 103(a) of
claims 8 and 18.
Dependent claims 21and22
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claim 22 under 35 U.S.C. § 103(a) because the combination of
Kennewick, Gold, Brachman, and Anderson fails to disclose or suggest
identifying the content to be dedicated to a recipient based on a
determination that a user provided a first utterance during the playing of the
media item, i.e., "identify[ing], based ... the determination that the user
provided the first utterance during the playing of the media item, the media
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item as the content to dedicate to the recipient," as recited in claim 22 (App.
Br. 11-13; see also Reply Br. 10-11).
The Examiner cites Kennewick as disclosing natural language
processing (Ans. 13-14 (citing Kennewick i-f 41)), Gold as disclosing the
selection of a song to dedicate to a recipient from a song list (id. (citing Gold
i-f 36)), and Anderson as disclosing that the context of a mobile terminal may
be based on the applications currently being performed by the mobile
terminal, e.g., whether a user is playing a games, interacting with a media
item (id. (citing Anderson i-fi-148, 67)). The Examiner, thus, concludes that
applying the technique of Gold, Brachman and Anderson to the teachings of
Kennewick would have yielded predictable results because it would have
been within the skill of those in the art to use Kennewick to process a natural
language utterance and to route the utterance from Kennewick together with
the context (music being played) of Anderson to the system of Gold (id.
at 14--15).
The difficulty with the Examiner's rejection is that the Examiner does
not explain why, and we fail to see why, a person of ordinary skill in the art
would have been led by the cited references to identify the content to be
dedicated to a recipient based on the context of the user's computer terminal.
It is not enough to identify individual features of a claimed invention in the
prior art; the Examiner must also provide some articulated reasoning with
some rational underpinning to explain why a person of ordinary skill in the
art would have combined the cited references to arrive at the claimed
invention. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
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We are not persuaded that the Examiner has established a prima facie
case of obviousness with respect to claim 22. Therefore, we do not sustain
the Examiner's rejection of claim 22 under 35 U.S.C. § 103(a).
Claim 21 is substantially similar to claim 22 (i.e., claim 21 recites that
the content to be dedicated is identified based on the natural language
processing and the interaction of the user with the media item) and was
rejected based on the same rationale applied with respect to claim 22.
Therefore, we do not sustain the Examiner's rejection of claim 21 under
35 U.S.C. § 103(a) for substantially the same reasons set forth above with
respect to claim 22.
DECISION
The Examiner's rejections of claims 1, 5-11, 15-20, and 24--26 under
35 U.S.C. § 103(a) are affirmed.
The Examiner's rejections of claims 21-23 under 35 U.S.C. § 103(a)
are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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