Ex Parte Tom

Patent Trial and Appeal Board

Nov 28, 2016

12712130 (P.T.A.B. Nov. 28, 2016)

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.
12/712,130 02/24/2010 Alfred C. Tom P005656-RD-MJL 2051
65798 7590 11/28/2016
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304
EXAMINER
MERKOULOVA, OLGA VLADIMIROVNA
ART UNIT PAPER NUMBER
2692
MAIL DATE DELIVERY MODE
11/28/2016 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 ALFRED C. TOM
Appeal 2015-007808
Application 12/712,130
Technology Center 2600
Before ALLEN R. MacDONALD, NABEEL U. KHAN, and
SHARON FENICK, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-007808
Application 12/712,130
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 1, 7, 9, and 13 under appeal read as follows
(emphasis added):
1. A voice-based menu navigation system comprising:
a speech engine operable to recite a list of choices to a user for
the user to choose from; and
an input device that is operated by the user and is operable to
increase or decrease the speed of the recitation of the list of choices in
response to operation by the user, wherein the recitation of the list of
choices becomes an abbreviated description for faster navigation.
3. The system according to claim 2 wherein the text-to-speech
engine chooses which text to process and recite to the user based on
the user’s manipulation of the input device if there are two or more
text descriptions for each choice in the list of choices.
7. The system according to claim 1 further comprising a
component that is operable to track the manipulation speed of the
input device provided by the user and set a default rate of speed
based on a user’s tracking history.
9. The system according to claim 1 wherein the speech engine
determines the list of choices to be recited based on the content of a
text file with markup tags where the markup tags describe which
content applies to which speed of recitation of the list of choices.
13. The system according to claim 1 wherein the list of choices
includes advertisements.
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Appeal 2015-007808
Application 12/712,130
Rejections
1. The Examiner rejected claims 1—6, 8, and 15—18 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Naimpally et al. (US
2003/0105639 Al, published June 5, 2003), Kurzweil et al. (US 6,033,224,
issued Mar. 7, 2000), and Raffa et al. (US 2010/0169075 Al, published July
1,2010).1
2. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Naimpally, Kurzweil, Raffa, and
Ikehara et al. (US 2007/0168115 Al, published July 19, 2007).
3. The Examiner rejected claims 9—14, 19, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Naimpally,
Kurzweil, Raffa, and Reed et al. (US 2008/0141180 Al, published June 12,
2008).2
1 Claims 1, 2, 4—6, 8, and 15—18 are grouped together. Although Appellant
discusses claim 15 (App. Br. 10) we do not select it as representative of this
group. Rather, we select claim 1 as representative. Further as to claim 15,
the discussion thereof does not comply as separately argued as required by
37 C.F.R. § 41.37(c)(l)(iv) (“Under each heading identifying the ground of
rejection being contested, any claim(s) argued separately or as a subgroup
shall be argued under a separate subheading that identifies the claim(s) by
number.” (emphasis added)). However, we exercise our discretion and we
treat claim 15 as separately argued. We treat claims 16—18 with claim 15.
Claim 3 is grouped separately (App. Br. 10-11). Claims 2, 4—6, and 8, are
not argued separately. Except for our ultimate decision, claims 2, 4—6, and 8
are not discussed further herein.
2 Claims 9-14, 19, and 20 are grouped together. Although Appellant
discusses claims 9 and 19 (App. Br. 13—15) we do not select either as
representative of this group. Rather, we select claim 13 as representative.
Further as to claims 9 and 19, as with claim 15, the discussion thereof
does not comply as separately argued as required by 37 C.F.R. § 41.37
(c)(l)(iv). Although we take note of claims 9 and 19 (below), unlike claim
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Appeal 2015-007808
Application 12/712,130
Appellant’s Contentions
1. A. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Appellant submitted the Second Declaration that includes
additional materials. The Second Declaration includes an
Exhibit C that describes the concept of a recitation of a list of
choices that becomes an abbreviated description. Thus,
Appellant submits that the claim language at issue was clearly
conceived of before the effective date of Raffa. In particular,
with respect to at least the Second Declaration, page 2 of Exhibit
C states that prerecorded audio clips for reciting menu items may
be used, where there are several versions on hand and where the
version used depends on the speed of recitation desired, i.e.,
menu items (lists) are available in various versions where the
faster versions include abbreviated lists for faster recitation.
Page 2 of Exhibit C also states that tactile inputs for going
forward or backward can cut off the current item being spoken,
which essentially abbreviates the portion of the list being
spoken.
App. Br. 8, emphasis added.
Appellant submits that at least Exhibit C of the Second 1.131
Declaration shows that the inventor was in possession of the
claim language at issue because Exhibit C states, inter alia, that
prerecorded audio clips for reciting menu items may be used,
with several versions on hand depending on the speed of
recitation desired.
App. Br. 9.
15, we exercise our discretion and decline to treat claims 9 and 19 as
separately argued. We treat claims 9-12, 14, 19, and 20, with claim 13.
Although not necessary for our decision, if we were to treat claims 9 and 19
as separately argued, we would adopt as our own the Examiner’s reasoning
(Ans. 6—7).
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Appeal 2015-007808
Application 12/712,130
1. B. Appellant also contends that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because:
In the Final Office Action mailed December 12, 2014, the
Examiner stated that, “Examiner takes the position that the
original disclosure supports only abbreviation of each menu
option individually but not a list of options”.
App. Br. 8-9.
2. Appellant contends that the Examiner erred in rejecting claim 15
under 35 U.S.C. § 103(a) because:
While paragraph [0029] of Raffa discloses transmitting
audible items at a speed that matches traversal of input items,
Appellant respectfully submits that nothing in paragraph [0029]
of Raffa discloses setting a default rate of speed that is based on
a user’s tracking history.
App. Br. 10.
3. Appellant contends that the Examiner erred in rejecting claim 3
under 35 U.S.C. § 103(a) because:
Appellant submits that the Examiner has not shown that
dependent claim 3 is obvious in view of Naimpally because a
specific request from a user to download files (Naimpally) does
not teach or suggest choosing which text to process and recite as
claimed by Appellant in claim 3.
App. Br. 11.
4. Appellant contends that the Examiner erred in rejecting claim 7
under 35 U.S.C. § 103(a) because:
Ikehara does not teach or suggest a component that, inter
alia, tracks the manipulation speed of an input device provided
by the user and that sets a default rate of speed based on a user’s
tracking history.
App. Br. 12—13, emphasis added.
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Appeal 2015-007808
Application 12/712,130
5. Appellant contends that the Examiner erred in rejecting claim 13
under 35 U.S.C. § 103(a) because:
With respect to Appellant’s claim[ 13], Appellant submits
that, for at least the reasons set forth supra with respect to Raffa
being removed as a prior art reference, th[is] claim[ is] not
obvious in view of the cited prior art.
App. Br. 13.
Issues on Appeal
Did the Examiner err in rejecting claims 1,3,7, 13, and 15 as being
obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief arguments that the Examiner has erred.
As to Appellant’s above contentions 2 and 4, covering claims 15 and
7 respectively, we agree.
As to Appellant’s above contention 1A, covering claim 1, Appellant
asserts “page 2 of Exhibit C states that prerecorded audio clips for reciting
menu items may be used, where there are several versions on hand and
where the version used depends on the speed of recitation desired, i.e., menu
items (lists) are available in various versions where the faster versions
include abbreviated lists for faster recitation.” App. Br. 8. We disagree.
Appellant is correct that the exhibit states “[t]he text-to-speech engine may
use prerecorded audio dips for reciting menu items, and have several
versions on hand depending on the speed recitation desired.” Exhibit C,
p. 2. However, we find no support in Exhibit C for the remainder of
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Appeal 2015-007808
Application 12/712,130
Appellant’s assertion (the “i.e.” clause). Although Appellant also argues
“[p]age 2 of Exhibit C also states that tactile inputs for going forward or
backward can cut off the current item being spoken, which essentially
abbreviates the portion of the list being spoken” (App. Br. 8), this does not
align with Appellant’s Specification which uses the terms “cut off’ (Spec. 6
and 19) and “abbreviated description” (Spec. 19) as distinct descriptions of
inventive features.
Further, as to contention IB, covering claim 1, we are unpersuaded by
this argument. Appellant bases the argument on Examiner’s concluding
sentence to the paragraph bridging pages 2-4 of the response section of the
Final Action. That concluding sentence states “the original disclosure
supports only abbreviation of each menu option individually but not a list
of options.” Final Act. 4, emphases added. Based on our reading of the
entire response to argument paragraph, we conclude that an objective
observer viewing the entire response would conclude that the concluding
sentence referenced by Appellant contains a typographical error in that the
clauses “each menu option individually” and “a list of options” are reversed.
The body of the paragraph states:
By amendment of October 14, 2014, the Applicant identifies
locations in the second declaration which support abbreviation
concept. Specifically, the Applicant points to page 5 of Exhibit
B (Second Declaration under 37 CFR 1.131, filed December 2,
2013) wherein according to the Applicant the options may be
skipped. On page 7 of Remarks of the amendment of October
14, 2014, the Applicant concludes “ . options may be skipped,
i.e., abbreviated”. Examiner respectfully disagrees since
skipping the options abbreviates the list of the options but not
an option itself
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Appeal 2015-007808
Application 12/712,130
Final Act. 3, emphasis added. Based on a proper reading, the concluding
sentence would be understood to state “the original disclosure supports only
abbreviation of [a list of options] but not [each menu option individually].”
As to Appellant’s above contention 3, covering claim 3, we disagree.
In response to Appellant’s arguments, the Examiner provides additional
analysis and points to “paragraph [0026] of Raffa et al. wherein the selection
of the appropriate version of the abbreviation is made by a user based on
comprehension.” Ans. 5. Appellant’s Reply Brief does not dispute this new
analysis. Although not necessary for our decision, we note that claim 13 is
not limited to abbreviations. Rather, it merely requires choosing text to
process if there are two or more text descriptions. We find that such is
taught at paragraph 41 of Naimpally as a language having been selected by
the user by manipulation of the input device (Naimpally paragraph 38, “user
to select from a list of different languages”).
As to Appellant’s above contention 5, covering claim 13, we disagree
for the reasons discussed above regarding contention 1.
CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 7 and 15—18 as being unpatentable under 35 U.S.C. § 103(a).
(2) The Examiner has not erred in rejecting claims 1—6, 8—14, 19, and
20 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 7 and 15—18 have not been shown to be unpatentable.
(4) Claims 1—6, 8—14, 19, and 20 are not patentable.
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Appeal 2015-007808
Application 12/712,130
DECISION
The Examiner’s rejections of claims 1—6, 8—14, 19, and 20 are
affirmed.
The Examiner’s rejections of claims 7 and 15—18 as being
unpatentable 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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