MOTOROLA SOLUTIONS, INC

Patent Trials and Appeals Board

Jan 25, 2022

2020004967 (P.T.A.B. Jan. 25, 2022)

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. 15/607,791 05/30/2017 BENJAMIN ZASLOW PAT4837 US PRI 4232 22917 7590 01/25/2022 MOTOROLA SOLUTIONS, INC. IP Law Docketing 500 W. Monroe 43rd Floor Chicago, IL 60661 EXAMINER SONIFRANK, RICHA MISHRA ART UNIT PAPER NUMBER 2674 NOTIFICATION DATE DELIVERY MODE 01/25/2022 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): USAdocketing@motorolasolutions.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BENJAMIN ZASLOW, EVGENY MARYASKIN, and CHARLES SPENGLER ____________________ Appeal 2020-004967 Application 15/607,791 Technology Center 2600 ____________________ Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR., and CHRISTA P. ZADO, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-6, 8-11, and 13-22. Claims 7 and 12 have been cancelled. Appeal Br. 19-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Motorola Solutions, Inc. Appeal Br. 3. Appeal 2020-004967 Application 15/607,791 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of the claimed subject matter (emphasis, formatting, and bracketed material added): 1. A method at an electronic digital assistant computing device for detecting a user’s acoustical environment and substantively varying a content of a generated auditory output to the user as a function of the detected acoustical environment, the method comprising: [A.] receiving, at an electronic digital assistant computing device, an indication of an acoustic environment in which an auditory output will be provided by the electronic digital assistant computing device to a user; [B.] generating, at the electronic digital assistant computing device, an auditory output having a choice of word terms in an electronically stored content to be reproduced via the auditory output that is varied as a function of the indication of the acoustic environment, such that: [i.] when the indication of the acoustic environment is a noise level that is determined to be below a first threshold level, selecting shorter word terms in the electronically stored content to be reproduced to decrease a time to playback the auditory output to the user, where selecting shorter word terms includes one of: using acronyms instead of using underlying terms that the acronym represents, using 10-codes instead of underlying text descriptions of such 10-codes, using pronouns to refer to people, places, or things instead of proper names, using contractions instead of underlying terms with which the contractions are short for, and using abbreviations for terms instead of underlying terms with which the abbreviations are short for; and [ii.] when the indication of the acoustic environment is the noise level that is determined to be above a second threshold level, selecting lengthier word terms in the Appeal 2020-004967 Application 15/607,791 3 electronically stored content to be reproduced to increase a time to playback the auditory output to the user, where selecting lengthier word terms includes one of: not using acronyms and instead using underlying terms that the acronym represents, not using 10- codes and instead using text descriptions of such 10- codes, using proper names instead of pronouns to refer to people, places, or things, not using contractions and instead using underlying terms with which the contractions are short for, and not using abbreviations for terms and instead using underlying terms with which the abbreviations are short for; and [C.] providing, by the electronic digital assistant computing device, the auditory output to an electronic output transducer associated with the user for reproduction to the user in the acoustic environment. REFERENCES2 The Examiner relies on the following references: Name Reference Date Eide US 2006/0229873 A1 Oct. 12, 2006 Ranjan US 2011/0184724 A1 July 28, 2011 Tzirkel-Hancock US 2013/0185066 A1 July 18, 2013 Marquis US 2016/0057549 A1 Feb. 25, 2016 Gopalan US 2017/0076720 A1 Mar. 16, 2017 Fan US 2017/0110142 A1 Apr. 20, 2017 Melanson US 2018/0040325 A1 Feb. 8, 2018 2 All citations herein to patent and pre-grant publication references are by reference to the first named inventor only. Appeal 2020-004967 Application 15/607,791 4 MacGillivary The Most Common 10 Codes: What They Mean and Where They Came From; Chicomm Blog July 25, 2017 REJECTIONS A. The Examiner rejects claims 1, 10, 14, and 20, under 35 U.S.C. § 103 as being unpatentable over the combination of Eide and Ranjan. Non-final Act. 5-7. Appellant argues separate patentability for claim 1. Appeal Br. 5-10. We select claim 1 as the representative claim for this rejection. Except for our ultimate decision, we do not address the merits of the § 103 rejection of claims 10, 14, and 20 further herein. B. The Examiner rejects claims 4, 21, and 22 under 35 U.S.C. § 103 as being unpatentable over the combination of Eide, Ranjan, and Melanson. Non-final Act. 7-8. The Examiner rejects claim 2 under 35 U.S.C. § 103 as being unpatentable over the combination of Eide, Ranjan, and Gopalan. Non-final Act. 9. The Examiner rejects claims 3 and 9 under 35 U.S.C. § 103 as being unpatentable over the combination of Eide, Ranjan, and Marquis. Non-final Act. 9-10. The Examiner rejects claims 5, 6, and 11 under 35 U.S.C. § 103 as being unpatentable over the combination of Eide, Ranjan, Melanson, and MacGillivary. Non-final Act. 10-13. Appeal 2020-004967 Application 15/607,791 5 The Examiner rejects claims 8 and 13 under 35 U.S.C. § 103 as being unpatentable over the combination of Eide, Ranjan, Melanson, and Gopalan. Non-final Act. 13-14. The Examiner rejects claims 15 and 16 under 35 U.S.C. § 103 as being unpatentable over the combination of Eide, Ranjan, and Tzirkel- Hancock. Non-final Act. 14-15. The Examiner rejects claims 17-19 under 35 U.S.C. § 103 as being unpatentable over the combination of Eide, Ranjan, and Fan. Non-final Act. 15-16. To the extent that Appellant discusses these rejections of claims 2-6, 8, 9, 11, 13, 14-19, 21, and 22, Appellant does not present proper arguments for “separate patentability.” Appellant’s assertions as to these dependent claims do not comply with the appeal brief requirements. 37 C.F.R. § 41.37(c)(1)(iv) (“ Each ground of rejection contested by appellant must be argued under a separate heading, and each heading shall reasonably identify the ground of rejection being contested (e.g., by claim number, statutory basis, and applied reference, if any)”). Thus, the rejections of these claims turn on our decision as to claim 1.3 Except for our ultimate decision, we do not address the merits of the § 103 rejections of claims 2-6, 8, 9, 11, 13, 14-19, 21, and 22 further herein. 3 Even if Appellant’s arguments were properly presented, we would find them unpersuasive as they (a) merely assert a reference is “not equivalent” in a situation where equivalence is not required (these are § 103 rejections), (b) duplicate arguments addressed infra as to claim 1, or (c) essentially assert that mere replication of the steps of claim 1 for plural users is unobvious (in the communication arts where duplication of processes for multiple users is routine in the art). Appeal 2020-004967 Application 15/607,791 6 OPINION We have reviewed the Examiner’s rejections in light of Appellant’s Appeal Brief and Reply Brief arguments. A. Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. While Eide may disclose detecting a noise level above a threshold and responsively replacing the term “no” with a more “intelligible” term “negative,” Eide fails to disclose any step of detecting a sufficiently quiet noise level below a determined second threshold and responsively replacing a lengthier term with a shorter term in order to speed playback in the detected sufficiently quiet environment in the manner set forth in the amended pending amended claims. More specifically, while Eide may disclose replacing the term “no” with the term “negative” (result1) when a sufficiently loud noise level is detected (trigger1), Eide fails to disclose any trigger or result regarding the reverse, e.g., detecting a sufficiently quiet environment (trigger2) and replacing a lengthier term with a shorter term to speed the playback time (result2). Only Applicant’s specification discloses the problem (a delay in delivering an important message to a first responder, which is entirely different than the sole problem arguably addressed in Eide - noise), advantages of detecting such an opportunity and processing messages differently (faster delivery of an important message in moments that matter), a technical ability to detect when such a solution may be implemented (noise is below a first threshold), and a particular technical solution to implement the shortening (acronyms, 10- codes, contractions, etc.). Appeal Br. 8-9. We are unpersuaded by Appellant’s argument. First, we conclude Eide’s replacing the term “no” with the term “negative” (result1) when a sufficiently loud noise level is detected (trigger1), is sufficiently suggestive Appeal 2020-004967 Application 15/607,791 7 of the reverse, i.e., detecting a sufficiently quiet environment (trigger2) and replacing a lengthier term with a shorter term to speed the playback time (result2). Second, even if we agree with Appellant that more was required to show the advantage of replacing a lengthier term with a shorter term, Appellant is mistaken that only Applicant’s Specification discloses the problem (message delay) and solution (faster delivery). The cited MacGillivary reference discloses that the 10-codes were developed in the 1930’s to help radio users communicate quickly and concisely under tough conditions. Such a “brevity code” uses shorter sequences that translate into a longer meaning thus reducing use of channel bandwidth (i.e., preventing message delay).4 B. Also, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. [T]he Eide reference fails to disclose or teach “when the indication of the acoustic environment is the noise level that is determined to be above a second threshold level, selecting lengthier word terms in the electronically stored content to be reproduced to increase a time to playback the auditory output to the user, where selecting lengthier word terms includes one of: not using acronyms and instead using underlying terms that the acronym represents, not using 10-codes and instead using 4 “[The Asociation of Public-Safety Communication Officials-International (APCO)] first proposed Morse code brevity codes in the June 1935 issue of The APCO Bulletin, which were adapted from the procedure symbols of the U.S. Navy. The development of the APCO Ten Signals began in 1937 to reduce use of speech on the radio at a time when police radio channels were limited.”; https//en.wikipedia.org/wiki/Ten-code; last modified on 10 December 2016; retrieved from Wayback Machine Jan. 16, 2022. Appeal 2020-004967 Application 15/607,791 8 text descriptions of such 10-codes, using proper names instead of pronouns to refer to people, places, or things, not using contractions and instead using underlying terms with which the contractions are short for, and not using abbreviations for terms and instead using underlying terms with which the abbreviations are short for” (emphasis added) as set forth in independent Claim 1. Appeal Br. 9. We are unpersuaded by Appellant’s argument. First, as to the extent that Appellant is arguing claim 1 requires “selecting” the two results based on “different” first and second threshold levels, such an argument is not commensurate with the scope of claim 1. We do not find “different” threshold levels set forth in claim 1. Even if we were to deem claim 1 to require two different threshold levels for the selecting of the results, it is conventional to use a deadband with two different thresholds to trigger distinct results so as to avoid oscillation based on using a single threshold with the two results (e.g., on/off).5 Second, we are unpersuaded by Appellant’s argument that the Eide reference fails to disclose or teach the claimed particular lengthier word terms. Appellant is arguing a difference where that difference is the particular claimed content of the word terms. As the particular claimed content does not change the function or structure of the electronic device, the particular content Appellant has claimed does not serve to distinguish over 5 “A deadband (sometimes called a neutral zone or dead zone) is an interval of a signal domain or band where no action occurs (the system is ‘dead’ - i.e. the output is zero). Deadband regions can be used in voltage regulators and other controllers to prevent oscillation or repeated activation-deactivation cycles (called ‘hunting’ in proportional control systems)”; https//en.wikipedia.org/wiki/deadband; last modified on 30 December 2016; retrieved from Wayback Machine Jan. 16, 2022. Appeal 2020-004967 Application 15/607,791 9 the prior art electronic device. That is, Appellant is arguing that the subject matter presented in claim 1 on appeal relates to features that differ from the prior art solely on the basis of “non-functional descriptive material,” which is generally not given patentable weight when determining patentability of an invention over the prior art. In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983). The PTO may not disregard claim limitations comprised of printed matter. See Gulack, 703 F.2d at 1384; see also Diamond v. Diehr, 450 U.S. 175, 191 (1981). However, the Examiner need not give patentable weight to descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84 (Fed Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). “Claim limitations directed to the content of information and lacking a requisite functional relationship are not entitled to patentable weight because such information is not patent eligible subject matter under 35 U.S.C. § 101.” Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd., 890 F.3d 1024, 1032 (2018). C. Further, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. Ranjan is directed to a speech recognizer that uses more or less restrictive grammar sets based on a detected noise level. However, a speech recognizer (e.g., translating detected/captured speech into commands recognizable by a computing device) as set forth in Ranjan is not equivalent to, and is entirely different from, a speech synthesizer (e.g., generating speech for playback) as set forth in the pending claims and as described and relied upon by the Examiner in the primary Eide reference. Appeal 2020-004967 Application 15/607,791 10 Accordingly, there is no selection of grammar sets to affect speech generation (e.g., contraction vs. no contraction as set forth in the pending claims) taught in Ranjan, but rather, Ranjan teaches an applied more restrictive speech recognition term set for speech recognition in a high noise environment (e.g., match against only the term "channel up" in a high noise to provide lower functionality but higher reliability) versus a larger set of terms matched in a low noise environment (e.g., match against "channel up", "volume up", and "send help" and others in a low noise environment to provide higher functionality but lower reliability). Appeal Br. 11. Essentially Appellant argues that one would not look to combine Ranjan with Eide, i.e., the references are not analogous art. However, prior art is analogous if either (1) “the art is from the same field of endeavor, regardless of the problem addressed” or (2) regardless of field of endeavor, the reference is “reasonably pertinent to the particular problem with which the inventor is involved.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (citation omitted). “A reference is reasonably pertinent if it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Id. (citation omitted). “If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection.” Id. (citation omitted). However, “[t]he pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement.” Sci. Plastic Prod., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014). Appeal 2020-004967 Application 15/607,791 11 In Innovention, the patentee argued the references “describ[ed] computer-based, chess-like strategy games” and were “non-analogous art because the [asserted] patent’s inventors were concerned with making a non-virtual, three-dimensional, laser-based board game, a project that involves mechanical engineering and optics, not computer programming.” 637 F.3d at 1316, 1321. The Federal Circuit found “an electronic, laser- based strategy game, even if not in the same field of endeavor, would nonetheless have been reasonably pertinent to the problem facing an inventor of a new, physical, laser-based strategy game” because both “relate to the same goal: designing a winnable yet entertaining strategy game.” Id. at 1322. Given the record before us, we are not persuaded by Appellant’s argument. First, Appellant too narrowly interprets the field of endeavor of the prior art to limit the field of endeavor to be “a speech synthesizer (e.g., generating speech for playback) as set forth in the pending claims.” Appeal Br. 11. Yet, Appellant points out that his invention is also concerned with “convey[ing] information to the user more quickly and clearly.” Spec. ¶ 75 (emphasis added). That is, although one is human and the other automated, the claimed invention is concerned with “speech recognition” as is Ranjan. We conclude that both Eide and Ranjan are within the field of endeavor of the invention. Second, we also determine that Ranjan is “reasonably pertinent to the particular problem with which the inventor is involved” because Ranjan’s grammar selection based on environmental noise level would logically have commended itself to an inventor’s attention in considering the inventor’s human speech recognition in a noisy environment problem. Appeal 2020-004967 Application 15/607,791 12 D. Furthermore, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. Ranjan does not set forth different implemented thresholds of noise associated with different results. Rather, and as clearly set forth in paragraphs 0009-0010, only a single user-defined threshold noise level is implemented in Ranjan, which determines whether the more or less restrictive speech recognition sets are used for recognizing speech commands. For at least this reason as well, Applicants submit that the Examiner failed to establish a prima facie case that each and every element as set forth in the pending claims is described in the cited art of record (in this case, only Ranjan), and that the Examiner’s failure to do so amounts to clear error. Appeal Br. 12 (emphasis added). We are unpersuaded by Appellant’s argument for the reasons already discussed supra. E. Also further, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. [E]ven if the voice generation system of Eide were modified to include the speech recognition system of Ranjan, a reasonable and logical modification of Eide to include the mechanisms of Ranjan would still not read on the pending claims. On page 6, lines 21-22 of the OA, the Examiner has not provided any reasoning or motivation to modify Eide in view of Ranjan except for citing paragraph 0024 of Ranjan for the stated benefit of “improving speech intelligibility.” Appeal Br. 12. We are unpersuaded by Appellant’s argument. Essentially, Appellant’s argument is premised on a “bodily” incorporation of the speech Appeal 2020-004967 Application 15/607,791 13 recognition process of Ranjan into the voice generation process of Eide. This is not the standard. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”). The Examiner did not suggest the “recognition process” should be bodily incorporated. We are unpersuaded by this form of argument. CONCLUSION The Examiner has not erred in rejecting claims 1-6, 8-11, and 13-22 as being unpatentable under 35 U.S.C. § 103. The Examiner’s rejections of claims 1-6, 8-11, and 13-22 as being unpatentable under 35 U.S.C. § 103 are affirmed. Appeal 2020-004967 Application 15/607,791 14 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 10, 14, 20 103 Eide, Ranjan 1, 10, 14, 20 4, 21, 22 103 Eide, Ranjan, Melanson 4, 21, 22 2 103 Eide, Ranjan, Gopalan 2 3, 9 103 Eide, Ranjan, McKenna 3, 9 5, 6, 11 103 Eide, Ranjan, Melanson, MacGillivary 5, 6, 11 8, 13 103 Eide, Ranjan, Melanson, Gopalan 8, 13 15, 16 103 Eide, Ranjan, Tzirkel-Hancock 15, 16 17-19 103 Eide, Ranjan, Fan 17-19 Overall Outcome 1-6, 8-11, 13-22 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED