Ex Parte Borodin et al

Patent Trial and Appeal Board

Jul 16, 2018

13458961 (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/458,961 04/27/2012
79999 7590
Keohane & D'Alessandro
1881 Western Avenue
Suite 180
Albany, NY 12203
07/18/2018
FIRST NAMED INVENTOR
Y evgen Borodin
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CTL-0001 5370
EXAMINER
HAN,QI
ART UNIT PAPER NUMBER
2659
NOTIFICATION DATE DELIVERY MODE
07/18/2018 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):
Docket@kdiplaw.com
drubbone@kdiplaw.com
lcronk@kdiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YEVGEN BORODIN, ALEXANDER DIMITRIY ADI,
YURY PUZIS, FAISAL AHMED, and VALENTYN MELNYK
Appeal 2018-001211
Application 13/458,961
Technology Center 2600
Before ALLEN R. MACDONALD, KARA L. SZPONDOWSKI, and
MICHAEL M. BARRY, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2018-001211
Application 13/458,961
STATEMENT OF THE CASE
Appellants' invention is directed to combining web browser and audio
player functionality so "users can compile a play list of web documents and
then listen to them with the functionality and convenience of an audio
player." Spec. ,r 4. Claim 1, reproduced below, is representative of the
claimed subject matter:
1. A method for combining web browser and audio player
functionality for organization and consumption of web documents, the
method comprising the computer implemented steps of:
identifying a set of textual web documents from a webpage
rendered via a web document player application that displays textual
content of a webpage, wherein the web document player application
comprises a web browser for rendering the webpage and an audio
player having a component configured to narrate a collection of
textual documents via speech synthesis;
saving the textual content of at least one document of the set of
web documents to a playlist as a text track in the web document
player, the playlist having a plurality of text tracks, each text track of
the plurality of text tracks having a title and the textual content;
in the case that a user selects to view the textual content,
displaying the textual content of the text track in the web document
player; and
in the case that a user selects to hear audio of the textual
content, outputting dynamically synthesized speech audio by the
audio player of the web document player application from the textual
content of the text track in the play list by synthesizing speech in real-
time from the textual content without transcribing the textual content
to an audio multimedia file.
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Application 13/458,961
REJECTIONS
Claims 1-20 stand rejected under 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written description requirement.
Claims 1-7, 9-15, and 17-20 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as obvious over the combination of New et al. (US 2006/0195521
Al; published Aug. 31, 2006) ("New") and Bodin et al. (US 2008/0313308
Al; published Dec. 18, 2008) ("Bodin").
Claims 8 and 16 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of New, Bodin, and Jannink et al. (US
2008/0120501 Al; published May 22, 2008) ("Jannink").
ANALYSIS
35 US. C. § 112 Rejections
The Examiner finds "outputting dynamically synthesized speech
audio by the audio player of the web document player application from the
textual content of the text track in the play list by synthesizing speech in
real-time from the textual content without transcribing the textual
content to an audio multimedia file," as recited in claim 1, lacks written
description. Final Act. 3; see also Ans. 2-3.
Appellants assert paragraphs 18 and 33 of the Specification expressly,
implicitly, and/or inherently disclose the limitations. App. Br. 10.
According to Appellants, "an embodiment of the present invention
comprises outputting an audio rendition of text using speech synthesis to
read the textual content ... [which] may be accomplished by generating
speech in response to a command by a user to narrate (i.e., read in real-time)
a textual passage." App. Br. 10; see also Reply Br. 2.
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Application 13/458,961
To comply with the written description requirement, an applicant's
specification must "convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the
invention." Carnegie Mellon Univ. v. Hoffman-LaRoche Inc., 541 F.3d
1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F. 2d
1555, 1563-64 (Fed. Cir. 1991)). Paragraph 18 provides:
Speech Synthesis refers to the conversion of textual content
into speech. A speech synthesizer is a system for speech
synthesis that can be realized through software, hardware, or a
combination of hardware/software. An application capable
of narrating a collection of textual documents via speech
synthesis may comprise an audio player, while the collection of
textual web documents in that application can be perceived
as a playlist that can be played with the audio player via
speech synthesis.
Spec. ,r 18 ( emphasis added). Paragraph 33 provides, in part:
FIG. 6 shows a non-limiting exemplary implementation of
audio player component 160 . . . . In one embodiment,
selecting the "playlist" button 206 (FIG. 4) opens playlist 154
on mobile device 102 of the user. During use, audio player
component 160 processes web documents 120, and adds them
to playlist 154, which is operable with speech synthesizer 153
and audio output device 161. Selection of a web document
120 in playlist 154 causes audio player component 160 to
play an audio rendition (e.g., synthesized speech) of the web
document 120.
Spec. ,r 33 ( emphasis added). We agree with the Examiner that the
foregoing disclosure does not convey possession of "outputting
dynamically synthesized speech audio by the audio player of the web
document player application from the textual content of the text track
in the playlist by synthesizing speech in real-time from the textual
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Appeal 2018-001211
Application 13/458,961
content without transcribing the textual content to an audio
multimedia file."
Accordingly, we are not persuaded the Examiner erred, and we,
therefore, sustain the Examiner's 35 U.S.C. § 112, first paragraph,
rejection of claims 1-20.
35 US.C. § 103(a) Rejections
Dispositive Issue: Did the Examiner err in finding the combination of
New and Bodin teaches or suggests "an audio player having a component
configured to narrate a collection of textual documents via speech
synthesis," and "outputting dynamically synthesized speech audio by the
audio player of the web document player application from the textual
content of the text track in the playlist by synthesizing speech in real-time
from the textual content without transcribing the textual content to an audio
multimedia file," as recited in independent claim 1 and commensurately
recited in independent claims 9 and 1 7?
The Examiner relies on Bodin to teach or suggest the disputed
limitations. Final Act. 6-7, Ans. 5-7. Appellants argue "Bodin shows
converting displayed or selected text and images from a webpage into a
plurality of multimedia files, such as a plurality of mp3 files, by converting
selected and display[ ed] text from that webpage to synthesized speech, and
then recording that synthesized speech in a multimedia file." App. Br. 8.
According to Appellants, "Bodin shows, at best, making a plurality of
multimedia recordings of synthesized speech that are then played at a later
time by a media player." App. Br. 8. Appellants further argue, "to the
extent, if any, that Bodin teaches outputting audio, Bodin only creates these
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Application 13/458,961
multimedia files for a target portable media player or a target digital media
player application, which, separate from the creation of the multimedia files,
can output these multimedia files as audio." App. Br. 9.
We are persuaded by Appellants' arguments. Bodin describes
"selecting display text of the web page; converting the selected display text
to synthesized speech using the text-to-speech engine (194); recording the
synthesized speech in a multimedia file." Bodin ,r 37; see also Bodin ,r,r 5,
43, 53-55, 62. A playlist is then created that includes the multimedia files.
Bodin ,r 56. The Examiner has not sufficiently explained how Bodin teaches
or suggests "outputting dynamically synthesized speech audio by the audio
player of the web document player application from the textual content of
the text track in the playlist by synthesizing speech in real-time from the
textual content without transcribing the textual content to an audio
multimedia file." To the contrary, Bodin explicitly teaches synthesizing
speech and recording it into a multimedia file, not "outputting dynamically
synthesized speech audio ... by synthesizing speech in real-time from the
textual content without transcribing the textual content to an audio
multimedia file."
Accordingly, we are persuaded the Examiner erred. Because we agree
with at least one of the arguments set forth by Appellants, we need not reach
Appellants' other arguments. We, therefore, do not sustain the Examiner's
35 U.S.C. § 103(a) rejection of independent claims 1, 9, and 17, and, for the
same reasons, dependent claims 2-8, 10-16, and 18-20.
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Application 13/458,961
DECISION
The Examiner's 35 U.S.C. § 112, first paragraph, rejection of claims
1-20 is affirmed.
The Examiner's 35 U.S.C. § 103(a) rejection of claims 1-20 is
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) (2009).
AFFIRMED
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