Ex Parte Ruwisch

Patent Trial and Appeal Board

May 19, 2014

11674424 (P.T.A.B. May. 19, 2014)

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.
11/674,424 02/13/2007 Dietmar RUWISCH 2222.5040001 4496
26111 7590 05/20/2014
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
ROBERTS, SHAUN A
ART UNIT PAPER NUMBER
2657
MAIL DATE DELIVERY MODE
05/20/2014 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 DIETMAR RUWISCH
___________

Appeal 2011-008898
Application 11/674,424
Technology Center 2600
____________

Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and
JOHNNY A. KUMAR, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-008898
Application 11/674,424
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STATEMENT OF THE CASE
Appellant is appealing the final rejection of claims 1-37 under 35
U.S.C. § 134(a). Appeal Brief 5. We have jurisdiction under 35 U.S.C.
§ 6(b) (2012).
We reverse and enter new grounds of rejection in accordance with 37
C.F.R. § 41.50 (b).

Introduction
The invention is directed to “[t]echniques for performing speech
recognition in a communication device with a voice dialing function.”
Abstract.

Representative Claim (Emphasis Added)
1. A method comprising:
upon receipt of a voice input, generating, using a
communication device, input feature vectors from voice input;
calculating, using the communication device, a likelihood
vector sequence from the input feature vectors indicating a
likelihood in time of an utterance of phonetic units, the
likelihood vectors having a dimensionality corresponding to the
phonetic units;
warping, using the communication device, the likelihood
vector sequence to phonetic word models;
calculating, using the communication device, word
model match likelihoods from the phonetic word models; and
determining, using the communication device, a best
matching one of the word model match as recognition result.

Appeal 2011-008898
Application 11/674,424
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Rejections on Appeal
Claims 1-5, 13, 14, 22-28, 36 and 37 stand rejected under 35 U.S.C.
§102 (b) as being anticipated by Garner (U.S. Patent Number 6,801,891 B2;
issued October 5, 2004). Answer 4-8.
Claims 6, 12, 16, 19, 20, 29 and 35 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Garner and Majaniemi (U.S. Patent
Number 6,393,403 B1; issued May 21, 2002). Answer 8-10.
Claims 7, 15 and 30 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Garner and Rose (U.S. Patent Number 7,457,750 B2;
issued November 25, 2008). Answer 10-11.
Claims 8-11 and 31-34 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Garner, Rose and Majaniemi. Answer 11-13.
Claims 17 and 18 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Garner, Majaniemi and Rose. Answer 14-15.
Claim 21 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Garner, Majaniemi and Ruwisch (U.S. Patent Number
6,683,961 B2; issued January 27, 2004). Answer 15-16.

ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed December 16, 2010), the Answer (mailed
February 8, 2011), and the Reply Brief (filed April 7, 2011) for the
respective details. We have considered in this decision only those
arguments Appellant actually raised in the Briefs. Any other arguments
which Appellant could have made but chose not to make in the Briefs are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant contends:
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Application 11/674,424
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Garner does not anticipate at least the feature of “the likelihood
vectors having a dimensionality corresponding to the phonetic
units,” as recited in claim 1, and analogous features using
respective language in claims 14, 22, 23, 24, and 37 because (a)
“likelihood vectors having a dimensionality corresponding to
the phonetic units” is not necessarily present in Garner; (b) the
Examiner improperly applies “common and well known” to an
anticipation rejection; and (c) Garner fails to disclose vectors
(both feature and likelihood).

Appeal Brief 13.
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations omitted) (internal quotation marks omitted). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations
omitted) (internal quotation marks omitted).
The Examiner finds from employing extensive calculations that
Garner anticipates the claimed likelihood vectors because it is inherently
known in order to determine the input sequences each phonetic unit must
correspond to a likelihood vector. Answer 4-5.
Appellant further contends:
Garner nowhere discloses (or teaches or suggests) at least
the recited feature vectors or likelihood vectors, even using the
legally permissible “broadest reasonable interpretation” of the
term “vector” in light of the specification and one of ordinary
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Application 11/674,424
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skill in the art. Notably, the term “vector” does not appear
anywhere in Garner.

The “broadest reasonable interpretation” of a “vector”
must be consistent with the recited “likelihood vectors having a
dimensionality corresponding to the phonetic units.” No
concept exists anywhere in Garner that has any number of
dimensions (such as, by way of non-limiting example, an x-
axis, a y-axis, a z-axis, etc.), let alone “a dimensionality
corresponding to the phonetic units,” as recited in claims 1, 14,
22, 23, 24, and 37.

Appeal Brief 17.

We find Appellant’s arguments to be persuasive because Garner does
not remotely indicate the employment of likelihood vectors and therefore we
disagree with the Examiner’s finding of inherency for the reasons articulated
above. Subsequently, we do not sustain the Examiner’s anticipation
rejection of claims 1-5, 13, 14, 22-28, 36 and 37.
We also do not sustain the Examiner’s obviousness rejections of
claims 6-12, 15-21, and 29-35 because neither Majaniemi, Rose and
Ruwisch cure the noted deficiencies of Garner.

NEW GROUNDS OF REJECTION
Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. 41.50(b), we emphasize that our decision does not
mean the remaining claims are patentable. Rather, we merely leave the
patentability determination of these claims to the Examiner. See MPEP §
1213.02.
We reject claims 22 to 36 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
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Independent claims 22, 23 and 24 recite “[a] tangible computer-
readable medium having instructions stored thereon” or variations thereof.
The broadest reasonable interpretation of the “computer-readable medium”
language of independent claims 22, 23 and 24, when read in light of
Appellant’s Specification, is inclusive of transitory propagating signals. See
Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential).
“A transitory, propagating signal [however] . . . is not a ‘process,
machine, manufacture, or composition of matter.’ [These] four categories
define the explicit scope and reach of subject matter patentable under
35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.” In
re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Specifically, signals are
unpatentable “as failing a tangibility requirement to be ‘manufactures’”
because they are not tangible media. Nuijten 500 F.3d at 1366 (emphasis
added).
DECISION
The Examiner’s 35 U.S.C. §102 rejection of claims 1-5, 13, 14, 22-28,
36 and 37 is reversed.
The Examiner’s 35 U.S.C. §103 rejections of claims 6-12, 15-21, and
29-35 are reversed.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection.., shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
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Application 11/674,424
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(1) Reopen prosecution. Submit an
appropriate amendment of the claims
so rejected or new evidence relating
to the claims so rejected, or both, and
have the matter reconsidered by the
examiner, in which event the
proceeding will be remanded to the
examiner ....
(2) Request rehearing. Request that
the proceeding be reheard under §
41.52 by the Board upon the same
record ....

REVERSED
37 C.F.R. § 41.50(b)

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