Ex Parte Bennett et al

Patent Trial and Appeal Board

Jul 29, 2014

11932250 (P.T.A.B. Jul. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte IAN M. BENNETT, BANDI RAMESH BABU,
KISHOR MORKHANDIKAR, and PALLAKI GURURAJ
____________

Appeal 2011-012063
Application 11/932,2501
Technology Center 2600
____________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 42–59 and 61–67. Claims 1–41

1 Application filed Oct. 31, 2007 claiming benefit of US Patent Application
Nos.: 11/030,919, filed Jan. 7, 2005; 10/684,357, filed Oct. 10, 2003; and
09/439,145, filed Nov. 12, 1999. The real party in interest is Phoenix
Solutions, Inc.
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and 60 have been canceled. (App. Br. 5.)2 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appellants’ Invention
The invention at issue on appeal concerns methods for performing
speech recognition in a distributed client-server system. (Spec. 1:12–20,
9:2–13:17; Abstract.)
Representative Claim
Independent claim 42, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
42. A method of performing recognition of a speech
utterance from a user with a distributed client-server system
comprising the steps of:
(a) receiving user speech data from a client device in
streaming packets through a network interface of a network
server system employing an application layer Internet-based
protocol overlaid on transmission control protocol (TCP) such
that said streaming packets are processed as they are received,
said speech data resulting from a first set of speech recognition
operations being performed on the speech utterance by a client
device;
(b) recognizing the speech utterance as well as a
natural language used in said speech utterance using processing
routines executing at said network server system which
implement a second set of speech recognition operations;
(c) providing a response to the user in a same natural
language as recognized in step (b); and

2 We refer to Appellants’ Specification (“Spec.”), filed October 31, 2007;
Appeal Brief (“App. Br.”), filed March 17, 2011; and Reply Br. (“Reply
Br.”) filed July 5, 2011. We also refer to the Examiner’s Answer (“Ans.”)
mailed May 12, 2011.
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(d) adjusting said second set of speech recognition
operations based on an automated evaluation of resources
available at the network server system and/or the client device.
Rejections on Appeal 3
1. The Examiner rejects claims 42–59 and 61–67 under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the written description
requirement.
2. The Examiner rejects claims 42–59 and 61–67 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the applicant regards as his
invention.
3. The Examiner rejects claims 42, 47, 52, 55, 57, and 62 under 35
U.S.C. § 103(a) as being unpatentable over U.S. Patent No. 6,408,272 B2,
issued Jun. 18, 2002 (filed Apr. 12, 1999) (“White”) and U.S. Patent No.
6,061,646, issued May 9, 2000 (filed Dec. 18, 1997) (“Martino”).
4. The Examiner rejects claims 43, 44, 46, 48, 54, and 58 under 35
U.S.C. § 103(a) as being unpatentable over White, Martino, and U.S. Patent
No. 6,965,864 B1, issued Nov. 15, 2005 (filed Apr. 10, 1995) (“Thrift”).
5. The Examiner rejects claims 49, 51, 59, and 63 under 35 U.S.C.
§ 103(a) as being unpatentable over White, Martino, and U.S. Patent No.
6,434,524 B1, issued Aug. 13, 2002 (filed Oct. 5,1999) (“Weber”).
6. The Examiner rejects claims 50 and 61 under 35 U.S.C.
§ 103(a) as being unpatentable over White, Martino, and U.S. Patent No.
5,500,920, issued Mar. 19, 1996 (“Kupiec”).

3 Appellants mistakenly include canceled claim 60 in ground of rejection 5
and omit claims 66 and 67 from ground of rejection 8. (App. Br. 9.)
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7. The Examiner rejects claims 45, 53, and 56 under 35 U.S.C.
§ 103(a) as being unpatentable over White, Martino, Thrift, and U.S. Patent
No. 6,269,336 B1, issued Jul. 31, 2001 (filed Oct. 2,1998) (“Ladd”).
8. The Examiner rejects claims 64–67 under 35 U.S.C. § 103(a) as
being unpatentable over White, Martino, and U.S. Patent No. 5,960,399,
issued Sep. 28, 1999 (“Barclay”).

ISSUES
Based upon our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us follow:
1. Did the Examiner err in rejecting claims 42–59 and 61–67
under 35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement?
2. Did the Examiner err in rejecting claims 42–59 and 61–67
under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
applicant regards as the invention?
3. Did the Examiner err in concluding that the combination of
White and Martino collectively would have taught or suggested “receiving
user speech data . . . in streaming packets through a network interface of a
network server system employing an application layer Internet-based
protocol . . . such that said streaming packets are processed as they are
received” and “adjusting said second set of speech recognition operations
based on an automated evaluation of resources available at the network
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server system and/or the client device” within the meaning of Appellants’
claim 1 and the commensurate limitations of claim 52?
4. Did the Examiner err in concluding that the combination of
White, Martino, and Thrift collectively would have taught or suggested
“dynamically switching a grammar at the network server system in response
to the speech utterance” within the meaning of Appellants’ claim 48?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action mailed May 19, 2010, as our own, except as to those findings that we
expressly overturn or set aside in the Analysis that follows.

ANALYSIS
Based on Appellants’ arguments (App. Br. 10–24), we select
independent claim 42 and dependent claim 48 as representative of
Appellants’ arguments and groupings with respect to claims 42–59 and 61–
67. 37 C.F.R. § 41.37(c)(1)(vii) (2004). We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Ans. 5–18), and (2) the reasons set forth by the Examiner in
the Examiner’s Answer (Ans. 18–35) in response to Appellants’ Appeal
Brief. We disagree with the conclusions reached by the Examiner with
respect to the § 112 rejections, but concur with the conclusions reached by
the Examiner with respect to the § 103 rejections, and we provide the
following for emphasis.

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Rejection Under 35 U.S.C. § 112, First Paragraph
Appellants contend that the disputed limitation —“employing an
application layer Internet-based protocol overlaid on transmission control
protocol (TCP)” (App. Br, 10) — was properly supported in their original
Specification and that “Appellants have ‘convey[ed] with reasonable clarity
to those skilled in the art that, as of the filing date sought, [they were] in
possession of the invention” (App. Br. 11). (App. Br. 10–17; Reply Br. 2–
3.) We agree for the reasons set forth by Appellants (App. Br. 10–17; Reply
Br. 2–3) and reverse the Examiner’s written description rejection of claims
42–59 and 61–67.
Rejection Under 35 U.S.C. § 112, Second Paragraph
Appellants contend that the disputed limitation —“an application
layer Internet-based protocol overlaid on transmission control protocol”
(App. Br, 17) — is sufficiently clear and that “the claim apprises one of
ordinary skill in the art of its scope” (App. Br. 17). (App. Br. 17–19; Reply
Br. 2–3.) We agree for the reasons set forth by Appellants (App. Br. 17–19;
Reply Br. 2–3) and reverse the Examiner’s indefiniteness rejection of claims
42–59 and 61–67.
Rejection of Claims 42, 47, 52, 55, 57, and 62 Under 35 U.S.C. § 103
Appellants contend that White and Martino do not teach or suggest
the disputed features of claim 42. (App. Br. 19–22; Reply Br. 3–5.)
Specifically, Appellants contend that the combination of White and Martino
fails to disclose or suggest at least two features of claim 42: (1)
“receiving user speech data . . . in streaming packets through a
network interface of a network server system employing an
application layer Internet-based protocol . . . such that said
streaming packets are processed as they are received”; and (2)
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“adjusting said second set of speech recognition operations
based on an automated evaluation of resources available at the
network server system and/or the client device.
(App. Br. 19 (quoting claim 42).) Appellants also assert White “is utterly
silent as to exactly how speech data is transmitted from client to server”
(App. Br. 20) and “never teaches or suggests that communication of speech
data is by streaming packets using HTTP or any other specific protocol”
(App. Br. 21). Appellants further contend that “the Examiner [vitiates] the
‘adjusting’ feature of claim 42 and interpret[s] it in a manner inconsistent
with the specification” (App. Br. 21).
With respect to the first argued limitation — “receiving user speech
data . . . in streaming packets through a network interface of a network
server system employing an application layer Internet-based protocol” (the
“receiving limitation”) — Appellants’ receiving limitation does not
affirmatively recite “streaming packets using HTTP or any other specific
protocol” (App. Br. 21) or “an application layer Internet-based protocol”
(claim 42). Rather, Appellants ancillarily recite that the protocol is
employed in the network — “streaming packets through a network interface
of a network server system employing an application layer Internet-based
protocol” (claim 42 (emphasis added)). Appellants do not affirmatively
“claim” the disputed functionality — e.g., transferring “user speech data”
utilizing “an application layer Internet-based protocol.” The argued
limitation fails to distinguish the claimed invention from the prior art either
structurally or functionally because it consists of statements of intended use
or purpose, which in this instance, do not further limit the scope of the claim
structurally or functionally. See Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (a statement
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of intended use “usually will not limit the scope of the claim because such
statements usually do no more than define a context in which the invention
operates”).
Further, Appellants assert the recitation of “streaming packets” has a
particular meaning (App. Br. 20–21; Reply Br. 3) and that White does not
describe streaming packets (id.). Appellants attempt to distinguish the
limitation from the prior art based on the type of transmitted data. It is well-
settled that Appellants cannot distinguish the present limitation by the
content of the data (streaming packets) — i.e., what the data conveys, or
how it might be encoded to “stream” the data. The content of the data does
not change the structure of the network on which it is transmitted, nor the
process by which it is encoded and transmitted. Appellants do not explicitly
recite the encoding or transmitting processes in claim 42, they instead recite
receiving the data (user speech data in streaming packets). Thus, the
network structure and/or functionality remain the same regardless of what
the data constitutes, how the data may be described or the relationship
among the data and do not further limit the claimed invention either
functionally or structurally. The informational content of the data thus
represents non-functional descriptive material, which “does not lend
patentability to an otherwise unpatentable computer-implemented product or
process.” Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008)
(precedential). See Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005)
(informative) (Fed. Cir. Appeal No. 2006–1003), aff’d, (Rule 36) (June 12,
2006) (“wellness-related” data in databases and communicated on
distributed network did not functionally change either the data storage
system or the communication system used in the claimed method). See also
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In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Nehls, 88 USPQ2d at
1887–90 (discussing non-functional descriptive material).
Even if we arguendo ascribe some patentable weight to the
limitations, as pointed out by the Examiner (Ans. 8, 25–30), White teaches
transferring and receiving speech data through a network utilizing the
Internet, Transmission Control Protocol (TCP), and hypertext transport
protocol (HTTP) (which is “an application layer Internet-based protocol”).
(White, col. 8, ll. 39–53; col. 9, ll. 13–19, 58–63; col. 10, ll. 16–27; col. 13,
ll. 47–49; col. 16, l. 66 – col. 7, l. 10; Fig. 1 (elements 12, 14, 16, 14).) In
particular, White describes encoding and/or transforming speech data using
linear predictive coding (LPC) and adaptive Differential Pulse Coded
Modulation (ADPCM) (Ans. 25–26; White, col. 13, ll. 16–26; col. 14, ll.
40–51; col. 15, ll. 53–63) and the data then being transferred over the
Internet or network (White, col. 7, ll. 1016, 3340; col. 8, ll. 39–54; col. 9, ll.
58–63; col. 10, ll. 16–27; col. 13, ll. 39–49; col. 16, l. 66 – col. 7, l. 10). We
find the disclosures of White would have at least suggested “receiving user
speech data . . . in streaming packets through a network interface of a
network server system employing an application layer Internet-based
protocol” (claim 42) to one of ordinary skill in the art.
With respect to the second argued limitation, (see App. Br. 20–22) —
“adjusting said second set of speech recognition operations based on an
automated evaluation of resources available at the network server system
and/or the client device,” (the “adjusting limitation”) — Appellants’
adjusting limitation requires adjusting (changing) operations on a server (the
second set of speech recognition operations) based on an evaluation of
resources (see App. Br. 20). As pointed out by the Examiner (Ans. 9, 30–
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33), White describes speech recognition operations on a server, accessing
other resources, and evaluating resources to determine how speech
recognition functionality should be divided. (Ans. 9, 30–31; White, col. 5,
ll. 23–37; col. 10, ll. 27–30.) Appellants do not address or rebut in their
Reply Brief the findings, responsive arguments, and conclusions made by
the Examiner in the Answer. For all these reasons, we find Appellants’
arguments unpersuasive of Examiner error with respect to the adjusting
limitation. We further find that the disclosures of White would have at least
suggested “adjusting said second set of speech recognition operations based
on an automated evaluation of resources available at the network server
system and/or the client device” (claim 42) to one of ordinary skill in the art.
With respect to claim 52 (see App. Br. 22–23), we find Appellants’
arguments unavailing of Examiner error for the same reasons as claim 42
(supra). White describes dividing speech recognition operations between
client and server (local device and remote system) based on available
resources. (Ans. 30–31; White, col. 5, ll. 23–37.) Appellants do not address
or rebut in their Reply Brief the findings, responsive arguments, and
conclusions made by the Examiner in the Answer. We further find that the
disclosures of White would have at least suggested “automatically adjusting
said second set of speech recognition operations based on an automated
evaluation of resources available at the network server system and/or the
client device” and “automatically adjusting said first set of speech
recognition operations based on an automated evaluation of resources
available at the client device” (claim 52) to one of ordinary skill in the art.
Appellants do not present separate patentability arguments with
respect to dependent claims 47, 55, 57, and 62. (App. Br. 19–23.)
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Therefore, for all the reasons supra, Appellants do not persuade us of error
in the Examiner’s obviousness rejection of representative independent claim
42, independent claim 52, or dependent claims 47, 55, 57, and 62.
Rejection of Claims 43, 44, 46, 48, 54, and 58 Under 35 U.S.C. § 103
Appellants contend that White, Martino, and Thrift do not teach or
suggest the disputed features of claim 48. (App. Br. 23–24.) Specifically,
Appellant contends that claim 48 recites “dynamic grammar switching”
(App. Br. 23) and Thrift does not teach this feature but instead describes
“means of building grammars by parsing Web pages” and that “all of the . . .
grammar switching occurs on the client side (id.). We find Appellants’
arguments unpersuasive of Examiner error, and instead agree with the
Examiner’s findings and reasoning.
The Examiner explains that Thrift’s client and server (speech user
agent and World Wide Web) work together to perform processing and the
servers on the World Wide Web receive grammar requests and send back
grammar HTML. (Ans. 14, 33 (citing Thrift, col. 2, ll. 32–37; col. 3, ll. 36–
38, 60–63; Fig. 2).) We agree. Thrift describes a server on the World Wide
Web sending a new/different grammar (i.e., switching grammar) responsive
to speech and activating a link (URL) (i.e., a user clicking or speaking a
URL). Thus, we find Thrift would have at least suggested “dynamically
switching a grammar at the network server system in response to the speech
utterance” (claim 48) to one of ordinary skill in the art.
Appellants do not address or rebut in their Reply Brief the findings,
responsive arguments, and conclusions made by the Examiner in the
Answer. Appellants also do not present separate patentability arguments
with respect to claims 43, 44, 46, 54, and 58. (App. Br. 23–24.) Therefore,
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for all the reasons supra, Appellants do not persuade us of error in the
Examiner’s obviousness rejection of representative independent claim 48 or
claims 43, 44, 46, 54, and 58.
With respect to the remaining rejections and claims on appeal,
Appellants do not address grounds of rejection 5–8 (supra) or claims 45, 49–
51, 53, 56, 59, 61, and 63–67. (App. Br. 24.) Therefore, for all the reasons
supra, Appellants do not persuade us of error in the Examiner’s obviousness
rejections of dependent claims 49–51, 53, 56, 59, 61, and 63–67.

CONCLUSIONS
Appellants have shown that the Examiner erred in rejecting claims
42–59 and 61–67 under 35 U.S.C. § 112, first paragraph.
Appellants have shown that the Examiner erred in rejecting claims
42–59 and 61–67 under 35 U.S.C. § 112, second paragraph.
Appellants have not shown that the Examiner erred in rejecting claims
42–59 and 61–67 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 42–59 and 61–67.

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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