Ex Parte Rines et al

Board of Patent Appeals and Interferences

Feb 11, 2009

09039176 (B.P.A.I. Feb. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CAROL MARY RINES,
ROBERT H. RINES, and JUSTICE C. RINES
____________

Appeal 2008-5115
Application 09/039,176
Technology Center 2600
____________

Decided:1 February 11, 2009
____________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY,
and THOMAS S. HAHN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 16-20, 23, 25, 27, 28, 30, 31, 33, 35, 36, and 38-46.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Claims 32 and 37 have been withdrawn from consideration.2 We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

STATEMENT OF THE CASE
Appellants invented a system for use in a vehicle that operates various
devices responsive to voice control. Specifically, voice-controlled switching
means are programmed with predesignated separate voice commands for
respectively controlling separate operation of distinct components of a
vehicular entertainment deck (e.g., a tape or disc player components and
dictation recorder/player) as well as a cellular radio telephone.3 Claim 23 is
illustrative:
23. In a driver-operated vehicle provided with a steering wheel region
and a vehicle entertainment deck including each of (1) a pre-recorded
storage medium player and (2) a driver live dictation recorder/player
components, and a vehicle cellular radio telephone for use by a driver in the
vehicle, apparatus for enabling said driver, while seated at the steering wheel
region of the vehicle, to operationally access a predetermined component of
the entertainment deck and also to access the cellular radio telephone, all in
a diversionless manner with full attention to driving, said apparatus
comprising separate control switches for turning each of said entertainment
components (1) and (2) on and off;

a further control switch for enabling the activating and deactivating of
the cellular radio telephone;

2 Although the Examiner rejected claim 37 (Ans. 3), it depends from claim
32 which Appellants previously indicated as cancelled (see Appeal Brief
filed Sept. 15, 2006, at 1 and Appeal Brief filed Mar. 9, 2007, at 2). In the
most recent Brief, however, claim 32 has been indicated as withdrawn (Br.
3). See also Notification of Non-Compliant Appeal Brief mailed June 6,
2007. Accordingly, based on the record before us, we presume that claim 37
was likewise intended to be withdrawn and therefore is not before us.
3 See generally Spec. 4-6, 16-17; Abstract; Figs. 1-3.
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and voice-controlled switching means programmed with a plurality of
predesignated separate voice commands for respectively enabling separate
operation of each of said predetermined entertainment deck components (1)
and (2) and also of the cellular radio telephone, namely, a voice command
for the storage-medium player, a separate voice command for the dictation
recorder, and a separate voice command for the cellular radio telephone;

the voice-controlled switching means being responsive to the driver
selectively speaking such predesignated separate voice commands live at
said steering wheel region for thereupon effecting the individual activating
of the corresponding control switch.

The Examiner relies on the following prior art references to show
unpatentability:
Glotzbach US 4,677,429 Jun. 30, 1987
Ishikawa US 4,698,838 Oct. 6, 1987
Dubus US 4,731,811 Mar. 15, 1988

The Examiner rejected claims 16-20, 23, 25, 27, 28, 30, 31, 33, 35,
36, and 38-46 under 35 U.S.C. § 103(a) as unpatentable over Glotzbach,
Dubus, and Ishikawa (Ans. 3-7).4
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Brief and the Answer5 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments which Appellants could have made but did not make

4 Although the Examiner includes claim 37 in this rejection (Ans. 3), it is
treated as withdrawn. See n.1, supra, of this opinion. Also, the Examiner
withdrew a rejection under § 112 (Ans. 3). Accordingly, only the
Examiner’s rejection under § 103 is before us.
5 Throughout this opinion, we refer to the Appeal Brief filed Jul. 31, 2007
and the Examiner’s Answer mailed Nov. 1, 2007.
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in the Brief have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
In the rejection, the Examiner finds that Glotzbach discloses all of the
claimed subject matter except for:
(1) a vehicle cellular radio telephone used by a driver while seated at
the steering wheel region;
(2) a voice controlled switching arrangement responsive to the driver
selectively speaking predesignated separate voice commands;
(3) transmitting stored or received information over the telephone;
(4) a dictation recorder or tape that is operated with the radio
telephone; and
(5) switching being effected by time or the number of dictation
recordings.
The Examiner, however, relies on Ishikawa and Dubus for teaching
these features and concludes that the claims would have been obvious to
ordinarily skilled artisans in view of the collective teachings of the cited
references (Ans. 3-7).

Claims 16-20, 23, 25, 28, 30, 31, 33, and 38
Regarding representative claim 23,6 Appellants acknowledge that
Glotzbach pertains to Appellants’ problem of achieving substantially

6 Appellants argue two groups of claims: (1) claims 16-20, 23, 25, 28, 30,
31, 33, 38, and (2) claims 35, 36, and 39-46 (Br. 19-20). Accordingly, we
select claim 23 as representative of the first group. See 37 C.F.R.
§ 41.37(c)(1)(vii). However, since Appellants argue claims 40-43 and 45
separately in the second group (Br. 20), we therefore treat these claims
separately.
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diversionless driver operation of an entertainment deck while driving.
Appellants, however, note that, unlike the claimed invention, Glotzbach
requires the operator to push buttons in response to voice-synthesized
announcements prior to the microcomputer providing control signals to
appropriate devices. Appellants contrast this functionality with the claimed
invention where each separate device has its own control switch that is
responsive to a separate voice command. As such, Appellants contend, the
claimed invention merely requires the driver to speak predesignated
commands live at the steering wheel to individually activate a corresponding
control switch (Br. 17).
Appellants add that Dubus merely uses voice words for testing the
radio telephone’s integration routine and fails to disclose using the driver’s
live spoken words for switching the radio on and off (Br. 18-19).

Claims 35, 36, and 39-46
Regarding the second claim grouping, Appellants argue that the cited
prior art does not teach or suggest relaying (1) dictation recorder playback;
(2) disc player content; or (3) received radio transmissions over the cell
phone as claimed in claims 40, 43, and 45, respectively (Br. 20; emphasis
added). The Examiner cites Dubus as teaching these limitations (Ans. 5, 9-
10).

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The issues before us, then, are as follows:

ISSUES
Under § 103, have Appellants shown that the Examiner erred in
combining the teachings of Glotzbach, Dubus, and Ishikawa to arrive at the
claimed invention? This main issue turns on the following related issues:
(1) Do the collective teachings of cited prior art teach or suggest a
vehicle with a voice-controlled switching means responsive to predesignated
separate voice commands to separately enable (a) a storage-medium player;
(b) a dictation recorder; and (c) a cellular radio telephone, respectively, as
claimed in representative claim 23?
(2) Does Dubus in conjunction with the other cited prior art teach or
suggest the relaying functionality recited in claims 40, 43, and 45?
(3) Is the Examiner’s reason to combine the teachings of Glotzbach,
Dubus, and Ishikawa supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
Glotzbach
1. Glotzbach discusses a Japanese published patent application No.
JP57146317 (“Nojiri”) that is said to disclose a method and apparatus of
controlling a vehicle that includes (1) a radio control unit; (2) stereo control
unit; and (3) an air conditioner control unit coupled to a microcomputer
(Glotzbach, col. 2, ll. 57-61).
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2. Glotzbach notes that a single push-button switch is mounted in the
center of the steering wheel in Nojiri and is used to manipulate the radio,
stereo unit, or air conditioner (Glotzbach, col. 2, ll. 65-67).
3. According to Glotzbach, Nojiri provides a microphone and a sound
recognition circuit for inputting voice commands to the microcomputer.
This sound recognition system may be used in place of, or together with, the
switch to enable the microcomputer to detect a command and respond to
instructions from the driver of the vehicle (Glotzbach, col. 2, ll. 63-65; col.
2, l. 67−col. 3, l. 5).

Ishikawa
4. Ishikawa discloses a steering wheel with a telephone 2 which
includes a speaker 2b, microphone 2a, and talk lever 38. Depressing the talk
lever enables conversation to be made (Ishikawa, col. 5, ll. 45-55; col. 8, ll.
6-10; col. 9, ll. 34−col. 10, l. 11; Figs. 1, 2(b), 7).

Dubus
5. Dubus discloses a voice-controlled vehicular radiotelephone
system with speech recognition capabilities (Dubus, Abstract; col. 1, ll. 42-
46).
6. As shown in Figure 3, upon initialization, either the manual or
automatic mode is tested (Step 101). The automatic mode is tested by
recognizing a particular word (i.e., “TELEPHONE,” “READING,”
“SCRATCHPAD,” or “HELP”) (Step 102) and executing the corresponding
routine responsive to the recognized word (Steps 103-106) (Dubus, col. 4, l.
48−col. 5, l. 15; Fig. 3).
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7. The scratchpad function enables the driver to create messages in
the scratchpad via recordings (Dubus, col. 7, l. 48−col. 8, l. 51; Figs. 8, 9).
8. The telephone function enables the driver to dial a telephone
number by pronouncing the appropriate digits or keyword to establish
telephone communication (Dubus, col. 7, ll. 29-47; col. 8, l. 52−col. 9, l. 12;
Figs. 7, 10).
9. If a standby position is detected, the radio telephone is used in an
“answerer” function with either confidential or public access. If the
confidential mode is entered, confidential operation is permitted such as
allowing the hearing of certain scratchpad messages or recording messages
on the scratchpad. In the public mode, however, messages can be recorded
using a tape recorder which can be used to create scratchpad messages
(Dubus, col. 9, ll. 39-52; col. 9, l. 62 − col. 10, l. 12; Fig. 11).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
Discussing the question of obviousness of claimed subject matter
involving a combination of known elements, KSR Int’l v. Teleflex, Inc., 127
S. Ct. 1727 (2007), explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
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likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740. If the claimed subject matter cannot be fairly
characterized as involving the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
ready for the improvement, a holding of obviousness can be based on a
showing that “there was an apparent reason to combine the known elements
in the fashion claimed.” Id. at 1740-41. Such a showing requires
“‘some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness’ . . . [H]owever,
the analysis 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.”

Id. at 1741 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

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ANALYSIS
Claims 16-20, 23, 25, 28, 30, 31, 33, and 38
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting representative claim 23 over the collective teachings of
Glotzbach, Ishikawa, and Dubus. First, we acknowledge that Glotzbach
indicates that a single push-button switch can be used to manipulate the
radio, stereo, or air conditioner in Nojiri (FF 2). But Glotzbach also
indicates that a sound recognition system (i.e., for inputting voice
commands) may be used in place of, or together with, this switch to enable
the microcomputer to detect a command and respond to instructions from the
driver of the vehicle (FF 3; emphasis added). Thus, Glotzbach teaches that a
sound recognition system for controlling distinct vehicular components (i.e.,
the radio, stereo, or air conditioner) can be used in lieu of a push-button.
We see no error in combining this fundamental teaching with Dubus
and Ishikawa to arrive at the claimed invention. First, Dubus’ voice-
controlled vehicular radiotelephone system recognizes various spoken words
to execute a corresponding function (FF 5-6). Despite the fact that this
recognition is performed in conjunction with a test procedure (FF 6) as
Appellants indicate (Br. 18-19), ordinarily skilled artisans would nonetheless
understand from Dubus that distinct vehicular functions can be separately
controlled via corresponding voice commands. Moreover, we find no error
in the Examiner’s position (Ans. 8) that two of these controlled functions in
Dubus, namely the scratchpad and telephone functions (FF 7-8), teach or
suggest the recited dictation recorder and cellular telephone components,
respectively. Nor do we find error in the Examiner’s position (Ans. 9) that
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Glotzbach at least suggests a vehicle entertainment deck with a pre-recorded
storage medium player and radio. See FF 1-2.
As such, we find no error in the Examiner’s position based on these
collective teachings, particularly since Glotzbach likewise teaches sound
recognition to control distinct vehicular functions otherwise controlled via a
switch on the steering wheel (FF 1-3). Moreover, we find no error in
combining these teachings with Ishikawa which teaches controlling a
telephone associated with a vehicle’s steering wheel (FF 4). In short, the
Examiner’s combining this teaching along with the teachings of the other
cited references to arrive at the claimed invention is supported by articulated
reasoning with some rational underpinning to justify the Examiner’s
obviousness conclusion.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s obviousness rejection of representative claim 23 based on
the collective teachings of Glotzbach, Dubus, and Ishikawa. Therefore, we
will sustain the Examiner’s rejection of that claim, and claims 16-20,7 25,
28, 30, 31, 33, and 38 which fall with claim 23.

7 Although Appellants nominally argue claims 16-20 separately (Br. 20),
Appellants merely indicate what these claims recite without particularly
pointing out the alleged errors in the Examiner’s rejection pertaining to these
recited limitations. Accordingly, we do not consider Appellants’ remarks
concerning claims 16-20 sufficient to qualify as separate arguments for
patentability of these claims. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”). In any event, these
comments do not persuasively rebut the Examiner’s prima facie case of
obviousness for these claims for the reasons indicated by the Examiner (Ans.
9).
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Claims 35, 36, and 39-46
We will not, however, sustain the Examiner’s rejection of claims 40-
43 and 45 which call for, in pertinent part, means operable simultaneously
with the operation of the cellular radio telephone for relaying (a) dictation
recorder playback; (b) disc player content; or (c) received radio
transmissions over the cellular radio telephone as claimed in claims 40, 43,
and 45, respectively.
At the outset, we note that the key limitations in dispute constitute
means-plus-function limitations. As such, these limitations must be
construed in accordance with 35 U.S.C. § 112, ¶ 6 by “look[ing] to the
specification and interpret[ing] that language in light of the corresponding
structure, material, or acts described therein, and equivalents thereof, to the
extent that the specification provides such disclosure.” In re Donaldson
Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc).
Appellants refer to pages 11 and 14 of the Specification as
corresponding to these means-plus-function limitations (Br. 10). Turning to
page 11 of the Specification, the discussion makes clear that dictation or
some other message can “be transmitted automatically to a remote station to
which the cellular radio telephone is dialed” (Spec. 11:9-12). See also Spec.
12:2–13:7(describing how to transmit dictation to a remote station via the
cellular radio telephone system). Pages 14 and 15 of the Specification
provide similar support with respect to received radio messages or programs.
See Spec. 14:14-15:10 (noting that messages or programs received by the
vehicle AM/FM radio receiver can be transmitted to a remote station via the
cellular radio telephone system).
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In light of the Specification, we therefore construe the means-plus-
function limitations of claims 40, 43 and 45 as requiring relaying the
information to a remote station or user via the cellular radio telephone. See
Donaldson, 16 F.3d at 1193.
With this construction, we find that the Examiner erred in relying on
the functionality of Dubus as suggesting these limitations. The Examiner
has not pointed to—nor can we find—anything in Dubus or any of the other
cited prior art that would reasonably teach or suggest the recited relaying
functionality or its equivalents when the limitations are construed in light of
the Specification. Although Dubus uses a radiotelephone system to
ultimately communicate the contents of information stored in recordings and
the scratchpad to the user (see FF 5-9), the radiotelephone system would, at
best, merely pass along or “relay” that information “over” the radiotelephone
to the driver.
As such, we find no error in the Examiner’s obviousness rejection of
claims 35 and 36 as the scope of these claims simply does not preclude this
broader interpretation. But there is simply nothing on this record to suggest
any relaying of information to a remote station or user using the telephone
system as required by the means-plus-function limitations of claims 40, 43,
and 45.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s obviousness rejection of claims 35, 36 and 39 which were
not separately argued with particularity. Appellants have, however,
persuaded us of error with respect to the rejection of claims 40, 43, and 45.
We will also not sustain the Examiner’s rejection of dependent claims 41,
42, 44, and 46 for similar reasons.
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CONCLUSIONS
Under § 103, Appellants have not shown that the Examiner erred in
rejecting claims 16-20, 23, 25, 27, 28, 30, 31, 33, 35, 36, 38, and 39.
Appellants, however, have shown that the Examiner erred in rejecting
claims 40-46 under § 103.

ORDER
The Examiner’s decision rejecting claims 16-20, 23, 25, 27, 28, 30,
31, 33, 35, 36, and 38-46 is affirmed-in-part.
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-IN-PART

KIS

RINES & RINES
24 Warren St.
CONCORD, NH 03301