Ex Parte Hinde et al

Board of Patent Appeals and Interferences

May 22, 2012

09990766 (B.P.A.I. May. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN JOHN HINDE, LAWRENCE WILCOCK,
PAUL ST. JOHN BRITTAN, and GUILLAUME BELROSE
____________

Appeal 2010-003317
Application 09/990,766
Technology Center 2600
____________

Before JOHN A. JEFFERY, BRUCE R. WINSOR, and JOHN A. EVANS,
Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-12, 16, 19-30, 34, 37, and 38. Claims 13-15, 17, 18, 31-
33, 35, and 36 have been cancelled. See. Br. 2. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.

STATEMENT OF THE CASE
The present invention relates generally to communication with “dumb
entities.” A local entity without its own means of voice communication is
provided with the semblance of having a voice interaction capability. This is
done by providing an associated voice service hosted separately from the
entity, the service being initiated when a user comes near the entity. The
service uses audio input and output devices that are located either in user-
carried equipment or in the locality of the entity. The voice service can be
delivered to multiple users simultaneously with the users being joined into
the same communication session with the voice service so that all users hear
at least some of the same service output. The voice service can be arranged
to serve a group of associated entities, not necessarily near each other.
(Abstr.). Claim 1 is illustrative:
1. A method of voice interaction with a group of one or more entities,
comprising:
upon a user approaching any entity of the group, automatically
initiating provision of a group-related voice service to that user by joining
the user into a communication session established for the service and
common to all users of the voice service, the voice service being hosted by a
voice-service system with each user that is joined to the session
communicating with the voice-service system over a respective
communication channel for voice input and output;
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managing the voice service as a single common dialogue interaction
with all the users joined to the session, each such user hearing at least some
of the same voice-service output as all other users.

THE REJECTIONS
I. The Examiner rejected claims 1-6, 8, 10-12, 16, 19, 20, 22-24, 26,
28-34, 37, and 38 under 35 U.S.C. § 102(b)1 as anticipated by
Allinger (DE 1 974 745 A1; pub. July 1, 1999). Ans. 3-4.2
II. The Examiner rejected claims 16 and 34 under 35 U.S.C. § 103(a)
as obvious over Allinger in view of McGrath (US 6,259,795 B1;
issued July 10, 2001 (filed July 11, 1997)). Ans. 4-5.
III. The Examiner rejected claims 9 and 27 under 35 U.S.C. § 103(a) as
obvious over Allinger in view of Scott (WO 00/30329 A1; pub.
May 25, 2000). Ans. 5.

1 Although the Examiner’s statement of the rejection includes claims 13-15,
17, 18, 31-33, 35, and 36 (Ans. 3), these claims were cancelled in the
Amendment filed Dec. 2, 2004. We therefore omit those claims here for
clarity. Claims 37 and 38, filed Dec. 2, 2004, were listed as rejected in Box
6 in the Final Action, mailed Apr. 28, 2005, but were not specifically
discussed by the Examiner therein. Accord Br. 2 (noting that claims 37 and
38 are rejected in the “Status of the Claims” section); Ans. 2 (confirming
this status as correct). We therefore presume that the Examiner intended to
reject claims 37 and 38 under § 102.
2 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the following documents for their respective
details: the Appeal Brief (Br.) filed Nov. 3, 2008, and the Examiner’s
Answer (Ans.) mailed Oct. 5, 2007. We note that the Answer was mailed in
response to the Brief (deemed defective Apr. 10, 2006) filed July 5, 2005,
appealing from the Office Action mailed Apr. 28, 2005. A subsequent brief,
filed Oct. 30, 2006, was noticed as defective Oct. 22, 2008, which defect
was deemed corrected in the brief filed Nov. 3, 2008.
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IV. The Examiner rejected claims 7, 21, and 25 under 35 U.S.C.
§ 103(a) as obvious over Allinger in view of England (US
6,144,991; issued Nov. 7, 2000). Ans. 5.

THE ANTICIPATION REJECTION
The Examiner finds that Allinger discloses every recited feature of
independent claim 1 including:
A method of voice interaction with a group of one or
more entities, comprising:
upon a user approaching any entity of the group,
automatically initiating provision of a group-related voice
service to that user by joining the user into a communication
session established for the service and common to all users of
the voice service [(Ans. 3-4 (citing Allinger 5:33 to 6:5))], the
voice service being hosted by a voice-service system with each
user that is joined to the session communicating with the voice-
service system over a respective communication for voice input
and output [(Ans. 4 (citing Allinger 5:33 to 6:5))].
With reference to Allinger’s Figure 1, the Examiner concludes that if
two visitors are at the same location at substantially the same time, both
visitors would be able to listen to the voice services. The Examiner finds that
Allinger discloses managing the voice service as a single common dialogue
interaction with all the users joined to the session, each user hearing at least
some of the same voice-service output as all other users. The Examiner
further finds, taking the fact that users can move freely through the room,
that two or more users can be at the same place viewing the same exhibit at
the same time. And thus, the Examiner reasons, the control system 9 would
transmit the same voice services regarding that particular exhibit to those
users. (Ans. 4 (citing Allinger 4; Fig. 1)).
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Appellants argue that the Examiner’s prima facie case is lacking at
least one claim element, specifically, that Allinger does not disclose a
“communication session established by a voice service that is common to a
plurality of users and to a plurality of entities that belong to a same group.”
(Br. 4). Appellants argue that the claimed “communication session” is
defined in the Specification in such manner to require the plurality of users
to hear the same voice service at the same time. (Br. 2 (citing Spec. 26:29 to
27:1)).

ISSUE
Under § 102, has the Examiner erred by finding that Allinger
discloses a “communication session . . . that is common to a plurality of
users” where the plurality of users does not receive the same voice service at
the same time?

ANALYSIS
The Examiner finds that Allinger discloses a communication session
providing the same voice service because:
[T]he system of Allinger contains “various versions of the same
information, for instance at different language levels, and from
different starting point[s], with respect to the language and
contents” (page 7, lines 3-6) and “standard guided tour” (last 5
lines of page 7). So, when two different users viewing a
particular exhibit, they would hear the same voice service but
may be at different starting points.
(Ans. 6 (emphasis added)).
For claim language specifically states that “each user hearing at
least some of the same voice-service output as all other users”
(referring to independent claims 1 and 19), Allinger fully
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anticipates this limitation by . . . playing the same voice service
but at different starting points (page 7, lines 3-6).
(Ans. 7 (emphasis added)).
Appellants argue that the passage in Allinger, cited by the Examiner:
explicitly teaches that each user receives a highly personalized
information package that is dependent not only on the user’s
current location but also each user’s previous path, current
direction of sight, and previous responses to information
already provided. Thus, the fact that two users may be standing
elbow to elbow in front of the same exhibit is most certainly not
a guarantee that they will receive the same information package
(voice service) unless their previous actions since entering the
museum (in which Allinger’s system operates) have been one
hundred percent identical. Such mere possibility is not
anticipatory of the claimed method wherein a common
communication session is set up for all users and to which each
user is joined merely upon approaching an entity, regardless of
that user’s previous actions and interactions.
(Br. 5 (emphases omitted)).
Particularly, as here, where the claims recite the open-ended transition
phrase “comprising,” the PTO is required to give the claims their “broadest
reasonable construction.” (See Ex parte Boehme, 2009-008700, 2011 WL
5513250 (Bd. Pat. App. & Interf. Nov. 9, 2011) (citing Genentech, Inc. v.
Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)). Thus, it is reasonable in
the first instance for the Examiner to consider a claim’s construction where
the same voice service is played, but starting at different points. However,
the broadest construction rubric coupled with the term comprising does not
give the PTO an unfettered interpretive license. Rather, claims should
always be read in light of the specification and teachings in the underlying
application disclosure. (See id.).
Whereas claims may not be interpreted by importing a limitation from
the specification, an inventor may be his own lexicographer, but “must use a
“special definition of the term that is clearly stated in the patent specification
or file history.” (See Laryngeal Mask Co. Ltd. v. Ambu Inc., 618 F.3d 1367,
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1372 (Fed. Cir. 2010)) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1580 (Fed. Cir. 1996); see also CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366 (Fed. Cir. 2002) (“[T]he claim term will not receive its
ordinary meaning if the patentee acted as his own lexicographer and clearly
set forth a definition of the disputed claim term in either the specification or
prosecution history.”)). Appellants argue that the claimed “communication
session” is defined in the Specification in such a manner to require the
plurality of users to hear the same voice service at the same time. (Br. 2
(citing Spec. 26:29 to 27:1)).
Our reading of the Specification citation is in accord with that of
Appellants. The cited passage in the Specification defines “communication
session” so as to impart a requirement that the users experience the voice
service simultaneously:
For all of the above arrangements described with respect
to Figures 7 to 12 and their variants, the voice service
associated with plant 71 is configured such that when a user
contacts the voice service (or it is contacted on the user’s
behalf) the user is joined into a communication session with
any other users currently using the voice service associated with
the plant 71 such that all users at least hear the same voice
output of the voice service. This can be achieved by
functionality at the voice page server (session management
being commonly effected at web page servers) but only to the
level of what page is currently served to the voice browser
being used by each user. This may be acceptable where a page
is simple and without dialog branches as there is no opportunity
for divergence between users. However, in order to facilitate
the use of voice pages with more complex structures, it is
preferred to implement the common session feature at a voice
browser so as to be able to provide the voice service output
determined by the dialog manager thereby ensuring all users
hear the same output at the same time.
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(Spec. 26:29 to 27:9 (emphasis added)).
We are persuaded that Appellants have “clearly set forth a definition
of the disputed claim term in either the specification or prosecution history.”
(CCS Fitness, 288 F.3d at 1366).
Because Allinger does not disclose that various users receive the same
voice service at the same time, we find that Allinger does not anticipate
claims 1-6, 8, 10-12, 16, 19, 20, 22-24, 26, 28-34, 37, and 38 under 35
U.S.C. § 102(b). Therefore, we do not sustain the Examiner’s rejection of
these claims.

THE OBVIOUSNESS REJECTIONS
The Examiner rejected claims 16 and 34 under 35 U.S.C. § 103(a) as
obvious over Allinger in view of McGrath. (Ans. 4). The Examiner rejected
claims 9 and 27 under 35 U.S.C. § 103(a) as obvious over Allinger in view
of Scott. (Ans. 5). The Examiner rejected claims 7, 21, and 25 under 35
U.S.C. § 103(a) as obvious over Allinger in view of England. (Ans. 5). Since
the Examiner has not shown that McGrath, Scott, or England cures the
above-noted deficiencies, we do not sustain the Examiner’s rejection of
these claims.

CONCLUSIONS
The Examiner erred in rejecting (1) claims 1-6, 8, 10-12, 16, 19, 20,
22-24, 26, 28-34, 37, and 38 under 35 U.S.C. § 102(b); and (2) claims 7, 9,
16, 21, 25, 27, and 34 under § 103(a).

REVERSED
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