Ex Parte Hardwick

Board of Patent Appeals and Interferences

Jun 22, 2009

10046666 (B.P.A.I. Jun. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOHN C. HARDWICK
____________________

Appeal 2009-002399
Application 10/046,6661
Technology Center 2600
____________________

Decided:2 June 22, 2009
____________________

Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and MARC S.
HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1-77. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is Digital Voice Systems, Inc.
2 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).
Appeal 2009-002399
Application 10/046,666

Appellant’s invention relates to synthesis of digital speech samples
corresponding to a selected voicing state. First and second digital filter
coefficients are computed using respective first and second frames of speech
model parameters. First and second signal samples are produced using pulse
locations and first and second digital filters respectively. The sets of first and
second signal samples are combined to produce a set of digital speech
samples corresponding to the selected voicing state (Spec. 8).
Claim 1 is exemplary:
1. A method of synthesizing a set of digital speech samples
corresponding to a selected voicing state from speech model parameters, the
method comprising the steps of:
dividing the speech model parameters into frames, wherein a frame of
speech model parameters includes pitch information, voicing information
determining the voicing state in one or more frequency regions, and spectral
information;
computing a first digital filter using a first frame of speech model
parameters, wherein the frequency response of the first digital filter
corresponds to the spectral information in frequency regions where the
voicing state equals the selected voicing state;
computing a second digital filter using a second frame of speech
model parameters, wherein the frequency response of the second digital
filter corresponds to the spectral information in frequency regions where the
voicing state equals the selected voicing state;
determining a set of pulse locations;
producing a set of first signal samples from the first digital filter and
the pulse locations;
producing a set of second signal samples from the second digital filter
and the pulse locations;
combining the first signal samples with the second signal samples to
produce a set of digital speech samples corresponding to the selected voicing
state.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Griffin US 5,701,390 Dec. 23, 1997
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Thomas P. Barnwell, III et al. (Barnwell), “Speech Coding: A computer
laboratory textbook,” John Wiley & Sons, Inc. (1966).

Claims 1-77 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1-6, 16, 27, 28, 37-41, 43, 44, 59, 60, 62, and 63 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Griffin in view of
Barnwell.
Claims 7, 42, 45, 46, 49, 61, 64, 65, and 68 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Griffin in view of Barnwell and
well known prior art.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed November 27, 2007), the Reply Brief (“Reply Br.,” filed
May 5, 2008) and the Examiner’s Answer (“Ans.,” mailed March 4, 2008)
for their respective details.
ISSUES
With regard to the § 101 rejection, Appellant argues that that the
claims do not recite a mere abstract idea, and produce a useful, concrete, and
tangible result (App. Br. 3-4).
With regard to the pending § 103 rejections, Appellant argues that
Barnwell fails to remedy the deficiencies of Griffin conceded by the
Examiner, and does not produce sets of first and second digital samples
using pulse locations and respective digital filters (App. Br. 8).
The respective contentions of Appellant and the Examiner thus
present us with the following issues:
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1. Has Appellant shown that the Examiner erred in concluding
that the claimed method of synthesizing a set of digital speech samples
constitutes non-statutory subject matter under § 101?
2. Has Appellant shown that the Examiner erred in finding that
Griffin in combination with Barnwell teaches determining a set of pulse
locations, producing a set of first signal samples from the first digital filter
and the pulse locations, and producing a set of second signal samples from
the second digital filter and the pulse locations, as recited in claim 1?3

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellant, the invention concerns synthesis of
digital speech samples corresponding to a selected voicing state. First and
second digital filter coefficients are computed using respective first and
second frames of speech model parameters. First and second signal samples
are produced using pulse locations and first and second digital filters
respectively. The sets of first and second signal samples are combined to
produce a set of digital speech samples corresponding to the selected voicing
state (Spec. 8).
Griffin
2. Griffin teaches regenerating the voiced component phase in
speech synthesis, where the phase is estimated from the spectral envelope of
the voiced component (col. 4, ll. 40-43).

3 Independent claim 38 recites similar (though not identical) limitations.
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Barnwell
3. Barnwell teaches linear predictive coding in the context of
pitch-excited vocoders (p. 85).
PRINCIPLES OF LAW
The Supreme Court . . . has enunciated a definitive test to
determine whether a process claim is tailored narrowly enough
to encompass only a particular application of a fundamental
principle rather than to pre-empt the principle itself. A claimed
process is surely patent-eligible under § 101 if: (1) it is tied to a
particular machine or apparatus, or (2) it transforms a particular
article into a different state or thing. See Gottschalk v. Benson,
409 U.S. 63, 70 , 93 S.Ct. 253, 34 L.Ed. 2d 273 (1972)
("Transformation and reduction of an article 'to a different state
or thing' is the clue to the patentability of a process claim that
does not include particular machines."); Diehr, 450 U.S. 175,
192, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981) (holding that use of
mathematical formula in process "transforming or reducing an
article to a different state or thing" constitutes patent-eligible
subject matter); see also Parker v. Flook, 437 U.S. 584, 589
n.9, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978) ("An argument can
be made [that the Supreme] Court has only recognized a
process as within the statutory definition when it either was tied
to a particular apparatus or operated to change materials to a
'different state or thing'"); Cochrane v. Deener, 94 U.S. 780,
788 (1876) ("A process is . . . an act, or a series of acts,
performed upon the subject-matter to be transformed and
reduced to a different state or thing.").
In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (footnote omitted).
The machine-or-transformation test is a two-branched inquiry;
an applicant may show that a process claim satisfies § 101
either by showing that his claim is tied to a particular machine,
or by showing that his claim transforms an article. See Benson,
409 U.S. at 70, 93 S.Ct. 253. Certain considerations are
applicable to analysis under either branch. First, as illustrated
by Benson and discussed below, the use of a specific machine
or transformation of an article must impose meaningful limits
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on the claim's scope to impart patent-eligibility. See Benson,
409 U.S. at 71-72, 93 S.Ct. 253. Second, the involvement of the
machine or transformation in the claimed process must not
merely be insignificant extra-solution activity. See Flook, 437
U.S. at 590.
Id., 545 F.3d at 961-62.

On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.
ANALYSIS
§ 101 REJECTION
We select claim 1 as representative of this group, pursuant to our
authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues that the claimed invention defines patent-eligible
subject matter because the claims are directed to the practical application of
the processing of digital speech, rather than a mere abstract idea, and
because the claimed result (a set of digital speech samples) is useful,
concrete, and tangible (App. Br. 3-4).
As an initial matter, the Federal Circuit recently held that inquiry into
whether a process produces a useful, concrete and tangible result is
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insufficient to determine whether a claim is patent-eligible under § 101, and
reaffirms the Supreme Court’s machine-or-transformation test. Bilski, 545
F.3d at 561-62. Appellant’s contention that the claimed invention produces a
useful, concrete, and tangible result is thus rendered moot.
As articulated by the Bilski court, the test for subject-matter eligibility
of a process is a two-branched inquiry. An applicant may show that a
process claim satisfies § 101 either by showing that his claim is tied to a
particular machine, or by showing that his claim transforms an article. Bilski,
545 F.3d at 961-62. With regard to the claims at issue in this appeal, it is
clear that the invention contemplated by claim 1 is not tied to a particular
machine. Claim 1 contains no limitations directed to any particular
machine.4 Claim 1 does recite “computing a first [and second] digital filter.”
Appellant’s clear intent, however, is the computation of coefficients of a
digital filter to be implemented as a software process. Further, claim 1 does
not call for the transformation of a physical article: the claim contains no
limitations directed to any operation on any physical article. Appellant
argues that the invention is limited to the processing of digital speech. Claim
1, however, requires only “synthesizing a set of digital speech samples”
(emphasis added) (i.e., data representing speech parameters), and the several
steps of the claim are directed to various ways in which those data are

4 Appellant argues on page 4 of the Brief, that the claimed method is
tangible, and reasons that the speech samples may be used on a phone but
limiting the method to such a device would be absurd as it would preclude
patent protection if the method were performed on a device such as a server.
This argument in effect is an admission by Appellant that the claims are not
directed to the method being performed on any particular machine.
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manipulated in order to come up with further data (“a set of digital speech
samples corresponding to the selected voicing state”).
This determination does not end the inquiry, however. The Bilski
court allowed for the possibility that the manipulation of electronic signals
or data could be considered “transformation of an article.” With reference to
the claimed invention at issue in In re Abele, the Bilski court indicated that a
broad independent claim reciting a process of graphically displaying
variances of data from average values was held unpatentable because the
claim did not specify any particular type or nature of data, nor did it specify
how or from where the data was obtained or what the data represented. See
Bilski, 545 F.3d at 962. In contrast, a dependent claim specifying that the
data to be displayed “is X-ray attenuation data produced in a two
dimensional field by a computed tomography scanner”5 was held to be
drawn to patent-eligible subject matter because the data clearly represented
physical and tangible objects; the transformation of that raw data into a
particular visual depiction of a physical object on a display was sufficient to
render that more narrowly-claimed process patent-eligible. Bilski, 545 F.3d
at 962-63. Bilski held that there is no danger of pre-emption of fundamental
principles “[s]o long as the claimed process is limited to a practical
application of a fundamental principle to transform specific data, and the
claim is limited to a visual depiction that represents physical objects or
substances.” Bilski, 545 F.3d at 963.
Applying this “exception” to the rule requiring transformation of an
article to Appellant’s claim 1, we find that claim 1 does specify synthesizing
digital speech samples from speech model parameters. Claim 1 does not,

5 Abele, 684 F.2d 902, 908-09.
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however, specify how those parameters were obtained, nor recite
transformation of raw data into a visual depiction, or any other analogous
depiction (e.g., audio output) that would be cognizable by a human operator.
Therefore, the weight of the evidence indicates that Appellant’s claim 1 is
substantially more similar to the nonstatutory independent claim in Abele
than to the statutory dependent claim.
We therefore conclude that the invention of claim 1 is not tied to a
particular machine, nor does it transform an article. As a result, we conclude
that claim 1 is directed to nonstatutory subject matter.
Because Appellant has not shown error in the Examiner’s rejection of
representative claim 1, we will sustain the rejection of claims 1-77 under 35
U.S.C. § 101.

CLAIMS 1-6, 16, 27, 28, 37-41, 43, 44, 59, 60, 62, AND 63
Claims 1 and 38 constitute all of the independent claims pending in
this application. Claim 1 recites determining a set of pulse locations,
producing a set of first signal samples from the first digital filter and the
pulse locations, producing a set of second signal samples from the second
digital filter and the pulse locations, and combining the first signal samples
with the second signal samples to produce a set of digital speech samples
corresponding to the selected voicing state. Claim 38 recites computing a set
of pulse locations, producing a set of first signal samples from the first
impulse response and the pulse locations, producing a set of second signal
samples from the second impulse response and the pulse locations, and
combining the first signal samples with the second signal samples to produce
the digital speech samples for the subframe corresponding to the selected
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voicing state. The Examiner concedes that Griffin does not teach these
limitations, but finds that Barnwell teaches speech coding where a filter is
programmed with coefficients and excited with pulses, where the pulses will
necessarily have a separation (pitch period – location) and sequential sets of
samples (from frames or subframes) will produce a signal (Ans. 6).
We are not persuaded by the Examiner’s position. We have reviewed
Barnwell and do not find the teaching of computing or determining a set of
pulse locations generally alluded to by the Examiner (Ans. 6, citing
Barnwell pp. 85-89). We agree with Appellant that Barnwell does not
illustrate the connection between the fundamental frequency and pulse
locations as claimed when used to excite a filter (programmed with spectral
information) (App. Br. 7). We further agree with Appellant that even if the
Examiner is correct that Barnwell describes the input of pitch information to
a pulse generator which excites a filter (linear predictor) which is configured
with spectral information (LPC coefficients), that description fails to teach
the use of first and second digital filters, along with pulse locations, to
produce sets of first and second digital samples that are combined to produce
a set of digital speech samples, as recited in claim 1 (App. Br. 5), nor the
analogous recitations of claim 38. Finally, we agree with Appellant that the
Examiner failed to explain why one of ordinary skill in the art would have
found it obvious to modify Griffin’s multi-band excitation (MBE) decoder to
include elements from Barnwell’s linear predictive coding (LPC) decoder
(App. Br. 9), given the substantial differences between the two coding
approaches.
We therefore find that the Examiner erred in finding that the
combination of Griffin and Barnwell would have rendered the claimed
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invention obvious. Accordingly, we will not sustain the rejection of claims
1-6, 16, 27, 28, 37-41, 43, 44, 59, 60, 62, and 63 under 35 U.S.C. § 103.

CLAIMS 7, 42, 45, 46, 49, 61, 64, 65, AND 68
As noted supra, we reverse the § 103 rejection of independent claims
1 and 38, from which these claims depend. The Examiner’s taking of
Official Notice that reinitialization after a period of non-pulsed operation is
well known in the art does not remedy the deficiencies of Griffin in view of
Barnwell which we have noted. As a result, we will not sustain the rejection
of claims 7, 42, 45, 46, 49, 61, 64, 65, and 68 under 35 U.S.C. § 103 as
being unpatentable over Griffin in view of Barnwell and well known prior
art.

CONCLUSIONS OF LAW
1. Appellant has not shown that the Examiner erred in concluding
that the claimed method of synthesizing a set of digital speech samples
constitutes non-statutory subject matter under § 101.
2. Appellant has shown that the Examiner erred in finding that
Griffin in combination with Barnwell teaches determining a set of pulse
locations, producing a set of first signal samples from the first digital filter
and the pulse locations, and producing a set of second signal samples from
the second digital filter and the pulse locations, as recited in claim 1.

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ORDER
The Examiner’s rejection of claims 1-77 under 35 U.S.C. § 101 is
affirmed. The Examiner’s rejection of claims 1-7, 16, 27, 28, 37-46, 49, 59,
60-65, and 68 under 35 U.S.C. § 103(a) 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)(1)(iv).

AFFIRMED

ELD

FISH & RICHARDSON P.C.
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
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