Ex Parte Knott et al

Patent Trial and Appeal Board

Nov 28, 2012

10829557 (P.T.A.B. Nov. 28, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/829,557 04/22/2004 Benjamin A. Knott 130332.00073 6361
82744 7590 11/28/2012
AT&T Legal Department - JW
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
PATEL, HEMANT SHANTILAL
ART UNIT PAPER NUMBER
2653
MAIL DATE DELIVERY MODE
11/28/2012 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 BENJAMIN A. KNOTT, JOHN M. MARTIN,
ROBERT R. BUSHEY and MICHAEL D. AHNEMANN
____________

Appeal 2010-007416
Application 10/829,557
Technology Center 2600
____________

Before, KEVIN F. TURNER, MICHAEL R. ZECHER and
BRIAN J. McNAMARA, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007416
Application 10/829,557

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SUMMARY

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of 1-5, 8, 13, 19, and 21-22.1 We have jurisdiction under 35 U.S. C.
§ 6(b). We affirm.

STATEMENT OF THE CASE
Appellant’s invention concerns a method of providing a verbal dialog
interface for a caller to an automated self-service "how to use" call system.
(Abstract).
Based on the arguments on pages 5-11 of the Appellant’s Appeal Brief,
claim 1 is illustrative.
1. A method of providing a verbal dialog interface for a
caller to an automated self-service "how to use" (HTU) call system,
comprising the steps of:
grouping services or products other than the HTU call system
into categories;
associating one or more HTU topics with each service or
product;
storing at least one HTU dialog module for each HTU topic,
such that the dialog module can be played as a voice message of HTU
instructions to the caller, wherein HTU instructions are operating
instructions for the service or product associated with the HTU topic
corresponding to the HTU dialog module;

1 While all pending rejected claims were presumptively on appeal at the time of
filing the Notice of Appeal, the Appellants’ statement in the Brief that claims 1-5,
8, 13, 19, 21, and 22 are on appeal (Br. 2) acts as a withdrawal of the appeal as to
all other pending rejected claims. See Ex Parte Ghuman, 88 USPQ2d 1478, 1480
(BPAI 2008) (“If upon filing an appeal brief, the applicants limit the claims to be
considered on appeal, then it is the practice of the Patent and Trademark Office to
treat the claims not pursued in the appeal brief as having been withdrawn from
appeal.
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wherein some topics have two or more dialog modules to be
played as a set, different topics having different numbers of dialog
modules;
during a call from a caller, prompting the caller to name or
describe a service or product or to ask for a list of services or
products, and receiving a response from the caller;
in response to the prompting step, recognizing the caller's
response such that unsupported services or products are recognized
and an appropriate message is played;
in response to the prompting step, if the caller asks for a list of
services or products, providing a spoken list of categories and
receiving a response from the caller;
in response to either the preceding prompting or providing step,
determining if a response from the caller is to be disambiguated;
disambiguating the response by determining if the response
corresponds to a category having more than one service or product,
and if so, providing a list of services or products within that category,
prompting the caller for a response, and recognizing the caller's
response;
based on one or more of the caller's responses, recognizing the
caller's selected service or product;
providing the caller with a list of topics associated with the
selected service or product and recognizing the caller's selected topic;
and
playing to the caller the HTU instructions in the at least one
HTU dialog module stored for the selected topic, such that if the
selected topic has two or more associated dialog modules to be played
as a set, the caller may request to have the HTU instructions in any
selected HTU dialog module in the set repeated;
wherein each of the above prompting and providing steps are
part of a unique dialog module associated with that step, such that
each dialog module has at least one timeout process and at least one
retry process.

Appeal 2010-007416
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THE REJECTIONS
Claims 1-5, 8, 13, 19, 21, and 22 were rejected under 35 U.S.C. 103(a) as
unpatentable over US Patent Application Publication No. 2005/0089150 A1
(“Birkhead”) in view of US Patent Application No. 2002/0091566 A1 (“Siegel”).

ANALYSIS
We begin with claim 1 and address Appellants’ arguments concerning other
claims separately.
Birkhead relates to a method and business model for converting on-line
prescription drug and other medical information into interactive voice responses
and speech transmissions for user interaction (¶[0002]). The Examiner finds that at
least in paragraphs [0044] – [0056] Birkhead discloses a verbal dialog interface for
a caller to an automated “how to use system” addressing multiple topics relating to
drugs, including side effects and adverse reactions. (Ans. 3). The Examiner
further finds that it in view of these topics, it would be obvious for the topics to
include “how to use” the medication. (Id.). Appellants point out that claim 1
defines the claimed “how to use” (HTU) instructions as "operating instructions for
the service or product associated with the HTU topic corresponding to the HTU
dialog model." (Br. 6). Citing a dictionary definition, Appellants argue that
Birkhead does not disclose “how to use” (HTU) instructions, as that term is
defined in claim 1, because Birkhead does not disclose an outline of a manual or
technical procedure. (Br. 5-7).
Factual determinations of obviousness under 35 U.S.C. § 103(a) are based
on inquiries into (1) the scope and content of the prior art; (2) the differences
between the prior art and the claims at issue; and (3) the level of ordinary skill in
the art). Graham v. John Deere Co., 383 U.S. 1, 17 (1966). However, the analysis
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need not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ. KSR Int’l. Co. v. Teleflex,
Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
In this case, Birkhead’s disclosure of providing the user with a brief list of
drugs contraindicated for the requested drug (¶[0054]) constitutes information
about how to use the selected drug, i.e, that the drug should not be used with
certain other drugs. Appellants have not demonstrated that the Examiner erred in
citing Birkhead to support the proposition that a verbal dialog interface for a “how
to use” system would be obvious under 35 U.S.C. §103(a).
Appellants further argue that Birkhead fails to suggest recognizing the
caller's response such that unsupported services or products are recognized. (Br. 7).
In support of this position, Appellants cite to page 7 of the specification which
discloses an example of recognizing unsupported service and responding that no
information is available about the service. (Br. 8-9). Appellants’ arguments,
however, are not persuasive because they seek to import limitations from the
specification into claim 1. (Ans. 15). Claim 1 simply recites “recognizing the
caller's response such that unsupported services or products are recognized and an
appropriate message is played.” (Claim 1). Nothing in this claim language limits
how the caller's responses are recognized or how an unsupported service or product
is recognized.
Birkhead discloses that different system responses can occur depending
upon whether a voice recognition system matches the user’s response to its input
recognition set. (¶[0092]). As the Examiner points out, at paragraph [0093]
Birkhead discloses re-prompting a user if a match is not recognized, i.e., playing an
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appropriate message if there is no match and the product is not supported. (Ans.
15). Thus, Appellants have not demonstrated that the Examiner erred in rejecting
claim 1.
In arguing the patentability of claim 2 and appealed claims 3-5 and 21,
Appellants reference their arguments with respect to claim 1 concerning “operating
instructions.” (Br. 9-10). Since we are not persuaded by these arguments, we are
not persuaded that claim 2, or appealed claims 3-5 and 21 are allowable on this
basis. In separately arguing the patentability of claim 4, Appellants contend
Birkhead’s dialog is for a drug and medical information system and not a telephone
call system. Birkhead discloses a voice enabled interactive (i.e., automatic) drug
and medical information system which transmits dynamically generated interactive
speech and voice recognition responses for delivery to telephone and mobile
devices of a user. (Abstract). Therefore, we affirm the rejection of claim 4.
Appellants separately argue the patentability of claim 8, which depends from
independent claim 2. (Br. 10). Claim 8 recites limitations concerning recognition
of unsupported products or services that were argued with respect to claim 1, but
are not found in independent claim 2. As discussed above with respect to claim 1,
we conclude that Birkhead discloses this feature and we affirm the rejection of
claim 8 for the same reasons.
Appellants separately argue the patentability of independent claim 13 on the
basis that Birkhead does not disclose “how to use” instructions, as they argued
with respect to claim 1. (Br. 11). In the absence of further argument, for the same
reasons we affirm the rejection of claim 1, we affirm the rejection of claim 13.
Because Appellants offer no further arguments concerning claim 22, which
depends from claim 13 (id.), we affirm the rejection of claim 22. Appellants argue
that the patentability of claim 19 on the basis that claim 19 recites an unsupported
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service module configured to recognize whether the caller has requested an
unsupported service and to provide an appropriate verbal message in response.
Although claim 19 does not mention an unsupported product, there is no difference
between an unsupported product and an unsupported service for purposes of
determining obviousness. Therefore, we affirm the rejection of claim 19, for the
reasons discussed above with respect to claim 1.

ORDER
The rejection of claims 1-5, 8, 13, 19, 21, and 22 under 35 U.S.C. 103(a) as
unpatentable over Birkhead in view of Siegel 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

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