Ex Parte Habermas

Board of Patent Appeals and Interferences

Aug 17, 2012

10741250 (B.P.A.I. Aug. 17, 2012)

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.
10/741,250 12/19/2003 Stephen C. Habermas GP-303856 2760/122 3586
60770 7590 08/17/2012
General Motors Corporation
c/o REISING ETHINGTON P.C.
P.O. BOX 4390
TROY, MI 48099-4390
EXAMINER
SMITS, TALIVALDIS IVARS
ART UNIT PAPER NUMBER
2626
MAIL DATE DELIVERY MODE
08/17/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEPHEN C. HABERMAS
___________________
Appeal 2010-0046811
Application 10/741,250
Technology Center 2600
____________________

Before JEAN R. HOMERE, CARL W. WHITEHEAD, JR.,
and JAMES R. HUGHES, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is General Motors Corp. (App. Br. 2.)
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s non-
final rejection of claims 1-22 and 24. Claim 23 has been canceled. (App. Br.
2.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
Appellant invented a method and system for controlling a compact
disc (CD) player (134) in a mobile vehicle telematics unit (120).
(Specification 1, ll. 7-9, Fig. 1.) In particular, upon a user of the telematics
unit (120) uttering a desired song in a CD, an advanced speech recognition
software (ASR- 330) processes the user’s analog input to retrieve
corresponding metadata information (disc title, artist name, song title, disc
number, track number) and a corresponding audio file therefor in a
grammars database (360) and an audio file database (370). Then, the ASR
software forwards a dialog command to the vehicle communication platform
(VCP 310), which forwards a control command to the CD player (134) for
execution. (Fig. 3, Specification 10-11.) Alternatively, the VCP (310)
forwards the CD data to a remote telematics call center (170) via a wireless
network (140, 142, 144) for processing, and for subsequently routing the
control command to the CD player (134) for execution. (Specification 8.)

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Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method for controlling a compact disc player in
a telematics equipped mobile vehicle, the method comprising:

receiving CD data and analog input at the telematics unit,
the CD data received from at least one compact disc;

producing a metadata file based on the received CD data;

producing a speech recognition grammar file based on
the metadata file;

producing a dialog command based on the received
analog input; and

controlling the compact disc player in the telematics
equipped mobile vehicle responsive to a control command, the
control command based on the speech recognition grammar file
and the dialog command,

wherein at least one of the producing steps further
comprises establishing a wireless data connection between the
telematics unit and a call center, uploading information to the
call center, and then carrying out the at least one producing step
at the call center.

Prior Art Relied Upon
Gerson US 6,937,977 B2 Aug. 30, 2005
Iyoku US 7,277,852 B2 Oct. 2, 2007
Everhart US 2003/0069734 A1 Apr. 10, 2003

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Wilhelm US 2004/0176959 A1 Sept. 9, 2004
Lundsgaard US 2004/0198332 A1 Oct. 7, 2004

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1-3, 5-7, 12-14, and 16-18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Everhart,
Lundsgaard and Gerson.
2. Claims 4, 8-11, 15, 19-22, and 24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Everhart,
Lundsgaard, Gerson, Iyoku, and Wilhem.

ANALYSIS
We consider Appellant’s arguments seriatim as they are presented in
the principal Brief, pages 7-13.
Representative Claim 1
Dispositive Issue: Has Appellant shown that the Examiner erred in
finding that the disclosures of Everhart, Lundsgaard, and Gerson are
properly combined to teach or suggest a telematics unit that sends CD data
to a remote call center via a wireless connection for processing?
Appellant argues that one of ordinary skill in the art would not have
found sufficient reasoning to combine Everhart’s disclosure of locally
augmenting the speech recognition of voice commands with Lundsgaard’s
telematics unit, and Gerson’s delayed wireless transmission of speech
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recognition data, as recited in independent claim 29. (App. Br. 8-9, Reply
Br. 2.) In particular, Appellant argues that because Lundsgaard’s telematics
unit passively receives forwarded calls from the wireless communication
device, it is not controlled by speech, and would thereby not be compatible
with speech commands from Everhart’s system. (Reply Br. 2-3.)
In response, the Examiner finds that Everhart’s vehicle speech
controlled recognition system would allow Lundsgaard’s in-vehicle
telematics unit to be controlled by voice command, which can be processed
at the more capable remote call center disclosed by Gerson. (Ans. 9-10.)
Based upon our review of the record, we agree with the Examiner’s
underlying factual findings and ultimate legal conclusion of obviousness
regarding claim 1. Everhart discloses an in-vehicle voice recognition
activation system including a CD player whereupon a user issuing a verbal
request for a particular song, the system compares the user’s request with
previously stored voice commands to find a match. If a match does not
ensue, new voice commands pertaining to the CD metadata information are
generated and stored for later retrieval. (¶¶ [0024]-[0026].) Similarly, when
a new device is added to the voice recognition system new voice data
commands are added thereto to subsequently be shared across a network.
(Id.) Next, Lundsgaard discloses an in-vehicle telematics unit including a
CD player and a GPS wherein the telematics unit interfaces with a user to
initiate an emergency call or an information call. The telematics unit is
further interfaced with a wireless phone containing a controller that forwards
an incoming call to the telematics unit upon detecting that the device has
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exceeded a predetermined speed at which time the telematics unit mutes the
CD player during the phone conversation. (¶¶ [0038], [0042], [0043].)
Additionally, Gerson discloses an in-vehicle wireless system having a local
speech recognizer and a client-server speech recognizer for recognizing
voice commands issued by a user. (Col. 4, ll. 21-31, col. 5, ll. 10-14, col. 7,
ll. 11-15.) We find that Everhart teaches an in-vehicle CD player that
enables a user to issue a verbal command to select a particular song.
Further, we find that Lundsgaard complements Everhart’s system by
teaching integrating a CD player in a telematics unit that can wirelessly
interface with a cell phone such that the CD player can be muted during a
phone conversation. Additionally, we find that Gerson complements the
Everhart-Lundsgaard combination by teaching that the voice command can
be processed at a local or a remote voice recognition system.
Next, regarding the lack of logical reason to combine argument, we
note that U.S. Supreme Court has held that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int'l Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007). The Court further instructs that:
[o]ften it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason for combining the known elements in a the fashion
claimed by the patent at issue.

Id. at 418. Additionally, the Court instructs that:
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‘rejections on obviousness grounds cannot be sustained by mere
conclusory statements. Instead, there must be some articulated
reasoning with some rational underpinning to support the legal
conclusion of obviousness’… however, 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. (citation omitted).
First, we find that the ordinarily skilled artisan, being a creative
individual would have been able to fit the teachings of the cited references
together like pieces of a puzzle to predictably result in the disputed
limitations. That is, the proffered combination of the cited references would
predictably result in an in-vehicle telematics unit including a CD player
wherein meta data pertaining to a song requested by a user via a verbal
command can be processed locally at a voice recognition system in the
vehicle or wirelessly at a remote voice recognition system.
Further, as prescribed by the controlling case law, while it is often
necessary for an Examiner to identify a reason for combining the familiar
elements obtained from the prior art in establishing a prima facie case of
obviousness, the identification of such a reason is not a sine qua non
requirement. So long as the Examiner provides an articulated reasoning
with some rational underpinning to substantiate the obviousness rejection,
such a conclusion is proper. In this case, the Examiner provides more than
just a mere conclusory statement. The Examiner notes that at the time of the
claimed invention, an ordinarily skilled artisan would have been motivated
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to combine the cited disclosures because Gerson’s teaching of processing a
voice command at a remote speech recognizer would minimize the amount
of memory needed by the Everhart-Lundsgaard’s telematics unit so as not to
overload the vehicle call center. (Ans. 5, 10.) In our view, such a statement
suffices as an articulated reason with a rational underpinning to support the
cited combination. As noted above, the case law allows the Examiner to
look to the state of the prior art, including the knowledge of the ordinarily
skilled artisan to arrive at such a reason for combining the known elements
of the prior art. Consequently, the Examiner’s reliance upon the cited
references in order to arrive at an articulated reason with a rational
underpinning to support the proffered combination is proper. For these same
reasons, Appellant’s argument that the combination is achieved through
impermissible hindsight is not persuasive.
In considering the general form of Appellant’s arguments in the
principal Brief, Appellant’s arguments appear to have attacked the
individual teachings of Everhart, Lundsgaard and Gerson separately, as
opposed to the combined disclosures proffered by the Examiner. We note
that one cannot show nonobviousness by attacking the references
individually where the rejections are based on combinations of references.
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the
respective references relied on by the Examiner must be read, not in
isolation, but for what the combination teaches or suggests when considered
as a whole. We find nonetheless that the cumulative weight and the totality
of the evidence on this record favor the Examiner’s position that the
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combined disclosures of Everhart, Lundsgaard and Gerson would have
taught or suggested the disputed limitations. It follows that Appellant has
not shown error in the Examiner’s conclusion that the proffered combination
renders claim 1 unpatentable.
Claims 2, 3, 5-7, 12-14 and 16-18 (not argued separately) fall
therewith. See 37 C.F.R. § 41.37(c)(1)(vii).
Regarding claims 4, 8-11, 15, 19-22, and 24, Appellant alleges that
Iyoku and Wilhelm do not cure the noted deficiencies of the Everhart,
Lundsgaard, and Gerson combination. (App. Br. 10.) As discussed above,
we find no such deficiencies in the proffered combination for the cited
secondary references to remedy. Further, we find unavailing Appellant’s
argument that the disclosed audio data uploaded for processing is different
from the claimed CD data. (Id. 10-12.) As discussed above, the ordinarily
skilled artisan would readily appreciate that only routine skill would be
required to upload for processing Everhart’s CD data as opposed to Gerson’s
audio data. We also note that because such attempt to distinguish audio data
from CD data is directed non-functional descriptive material, we find
distinction unpersuasive.
DECISION
We affirm the Examiner’s rejection of claims 1-22 and 24.

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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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