Ex Parte Oesterling et al

Patent Trial and Appeal Board

Mar 28, 2013

11206957 (P.T.A.B. Mar. 28, 2013)

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.
11/206,957 08/18/2005 Christopher L. Oesterling GP-306259-OST-ALS 6978
74829 7590 03/28/2013
Julia Church Dierker
Dierker & Associates, P.C.
3331 W. Big Beaver Road
Suite 109
Troy, MI 48084-2813
EXAMINER
KISWANTO, NICHOLAS
ART UNIT PAPER NUMBER
3664
MAIL DATE DELIVERY MODE
03/28/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER L. OESTERLING,
JULIANNE PETSCHKE, and MARK J. GLAZA
____________

Appeal 2011-001940
Application 11/206,957
Technology Center 3600
____________

Before STEVEN D.A. McCARTHY, ANNETTE R. REIMERS, and
CARL M. DeFRANCO, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Christopher L. Oesterling et al. (Appellants) appeal under 35 U.S.C. §
134(a) from the Examiner’s decision to reject (1) claims 14 and 15 under 35
U.S.C. § 112, second paragraph, as being indefinite; and (2) claims 1-19 and
21 under 35 U.S.C. § 103(a) as unpatentable over Kennedy (US 6,535,743
B1; issued Mar. 18, 2003) and Liebermann (US 5,982,853; issued Nov. 9,
1999). Claim 20 has been canceled.1 We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellants’ invention relates to navigation systems and methods for
producing navigation instructions for hearing-impaired operators. Spec.
para. [0001]; figs. 1-2.
Claims 1 and 14 are illustrative of the claimed invention and read as
follows:
1. A method for producing navigation instructions,
the method comprising:
generating a navigation route;
translating the navigation route from at least one of
textual instructions or audio prompts to sign language
symbols;

1 The Examiner incorrectly includes claim 20 in the stated ground of
rejection and in the body of the rejection. Supp. Ans. 5, 9. Appellants
addressed this error in the Appeal Brief. App. Br. 3. As correctly pointed
out by Appellants, Appellants canceled dependent claim 20 in an
Amendment filed Jul. 29, 2008. Id.
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transmitting a non-audible signal to a vehicle,
thereby indicating that the translated navigation route is
ready to be provided; and
providing the sign language symbols to the
vehicle.

14. A system for producing navigation instructions,
comprising:
means for generating a navigation route;
means for translating the navigation route from at
least one of textual instructions or audio prompts to sign
language symbols;
means for transmitting a non-audible signal to a
vehicle, the signal indicating that the translated
navigation route is ready to be provided; and
means for providing the sign language symbols to
the vehicle.

ANALYSIS
Indefiniteness of claims 14 and 15
Independent claim 14 recites inter alia the following means plus
function claim limitations under 35 U.S.C. 112, sixth paragraph: (1) means
for generating a navigation route; (2) means for translating the navigation
route from at least one of textual instructions or audio prompts to sign
language symbols; and (3) means for transmitting a non-audible signal to a
vehicle, the signal indicating that the translated navigation route is ready to
be provided. App. Br., Claims Appendix.2 Claim 15 depends from claim
14.

2 Throughout this Opinion, we shall refer to Appellants’ Appeal Brief, filed
May 7, 2009, as “App. Br.”; Appellants’ Reply Brief, filed Oct. 28, 2009, as
“Reply Br.”; and Appellants’ Supplemental Reply Brief, filed Aug. 23,
2010, as “Supp. Reply Br.”
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The Examiner rejected claims 14 and 15 under 35 USC § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
Supp. Ans. 3-43 (citing In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir.
1994) (en banc) (“[I]f one employs means plus function language in a claim,
one must set forth in the specification an adequate disclosure showing what
is meant by that language. If an applicant fails to set forth an adequate
disclosure, the applicant has in effect failed to particularly point out and
distinctly claim the invention as required by the second paragraph of section
112.”)). For a computer-implemented means-plus-function claim limitation
that invokes 35 U.S.C. § 112, ¶ 6, the corresponding structure is required to
be more than simply a general purpose computer. Aristocrat Techs. Austl.
Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). The
corresponding structure for a computer-implemented function must include
the algorithm as well as the general purpose computer. WMS Gaming, Inc.
v. Int’l Game Tech., 184 F.3d 1339 (Fed. Cir. 1999). The written description
must at least disclose the algorithm that transforms the general purpose
microprocessor to a special purpose computer programmed to perform the
claimed function. Aristocrat, 521 F.3d at 1338.
The Examiner took the position that Appellants’ Specification (1)
“indicates that any type of suitable route generator, including an onboard
route generator or an external route generator, may be used to generate a
route” (Supp. Ans. 4; see also Spec. para [0034]); (2) “indicates that a

3 Throughout this Opinion, we shall refer to the Examiner’s Answer, mailed
Aug. 28, 2009, as “Ans.”; and the Examiner’s Answer, mailed Jun. 23, 2010,
as “Supp. Ans.”
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translation engine, located internal or external to a call center, expresses
textual and/or audio route instructions as sign language symbols and/or
abbreviations” (Id; see also Spec. para [0035]); and (3) “describes that a
signal is sent to a vehicle from the call center” (Id; see also Spec. para
[0042]). However, the Examiner further took the position that Appellants’
Specification (1) “does not indicate a specific machine that comprises the
route generator nor does the Specification describe the steps, processes, or
procedures required to create a route;” (2) “does not disclose how the
conversion is accomplished or what equipment is used to accomplish this
task;” and (3) “does not describe how this is done or by what equipment this
is accomplished.” Supp. Ans. 4-5. As such, the Examiner concluded that
“Appellants have failed to adequately describe sufficient structure for
performing the function[s] claimed.” Id.
Regarding the “means for generating a navigation route” limitation,
Appellants argue that (1) Appellants’ Specification at paragraph [0034],
“discloses that a navigation route may be generated by an electronic route
generator [90]” (see also fig. 1); (2) “[t]he electronic route generator 90 may
be located at the call center, onboard the vehicle, or external to the call
center;” and (3) “electronic route generators are known by those skilled in
the art.” Supp. Reply Br. 6. Appellants further argue that “Appellants’
navigation route means is distinguishable from the gaming control means in
the Aristocrat patent.” Id. According to Appellants, “the ‘gaming control
means’ recited in claim 1 of the Aristocrat patent . . . altered the internal
programming of the gaming machine,” whereas “Appellants’ navigation
route generator, which generally includes a processor already programmed
by the manufacturer of the device to generate navigation routes, is not
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transformed into a new machine by changing its internal programming.” Id.
Appellants also argue that paragraph [0050] of Appellants’ Specification
discloses that “the route generator may include one or more graph traversal
algorithms, an example of which includes Dijksta’s algorithm. As such, the
instant application as filed does disclose examples of suitable algorithms that
are present in the electronic route generator.” Id.
Regarding the “means for translating the navigation route” limitation,
Appellants argue that (1) “the means for translating the navigation
instructions may be accomplished using a translation engine [64];” (2) “[t]he
translation engine may be located at the call center, onboard the vehicle, or
external to the call center;” (3) “translation engines are . . . known by those
skilled in the art;” and (4) “[t]he programming of the translation engine may
be accomplished by the manufacturer of the device.” Supp. Reply Br. 6-7.
Regarding the “means for transmitting a non-audible signal to a
vehicle” limitation, Appellants argue that “[figure] 1 of Appellants’
application . . . shows how the call center 46 is in communication with the
vehicle 12 via the communications network 42. Thus, the call center 46 can
transmit the non-audible signal to the vehicle 12 using, for example, the
communications network 42.” Supp. Reply Br. 7.
We agree with Appellants that paragraph [0050] of Appellants’
Specification discloses an example of a graph traversal algorithm (i.e.,
Dijksta’s algorithm) that may be present in the electronic route generator
(90). See Supp. Reply Br. 6. In addition, we find that Appellants’
Specification (paras. [0034], [0035], [0042]) and drawings (figs. 1, 2)
adequately describe sufficient structure for performing the functions of claim
14. Hence, we further agree with Appellants that “Appellants’ application[,]
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as filed, in and of itself provides sufficient structure for the means-plus-
function limitation[s],” as required by independent claim 14. Id.
Accordingly, the rejection of claims 14 and 15, under 35 U.S.C. §
112, second paragraph, for indefiniteness, cannot be sustained.
Obviousness of claims 1-15
Independent claim 1 recites a method for producing navigation
instructions including the step of “transmitting a non-audible signal to a
vehicle.” App. Br., Claims Appendix. Independent claim 14 recites similar
language. The Examiner found that Kennedy “shows means for transmitting
a non-audible signal to a vehicle.” Supp. Ans. 6; see also Kennedy, col. 17,
ll. 34-37; col. 18, ll. 49-51. Appellants argue that “Kennedy discloses that
such transmission is actually an audible signal.” App. Br. 8. Specifically,
Appellants argue that
Kennedy discloses that the directions may be communicated
over a voice network and may be separated using dual tone
multi-frequency signals or other appropriate separator signals.
A processor and audio recorder recognize the separator signals
and record different segments of the directions separately so
that each segment may be played back in succession at an
appropriate time and location.
Id. (citing Kennedy, col. 17, ll. 49-55).
In response, the Examiner took the position that “Kennedy describes
emails or any other suitable signal indicating a ready navigation route in
column 18, lines 49 to 51. While Kennedy may or may not process ready
signal thereafter into an audible signal, said signal still arrives initially in a
non-audible form.” Supp. Ans. 9. Appellants counter that “column 18, lines
47-61[,] of Kennedy reveals that a processor of the mobile unit may use
speech synthesis software to translate the e-mails into verbal communication
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and play back the e-mail using the speakers (see specifically column 18,
lines 53-56).” Reply Br. 4 (emphasis in original).
Kennedy discloses that (1) “mobile unit 12 may perform these
techniques [i.e., downloading, recording, playing, and deleting directions]
using voicemails, e-mails, or any other suitable communication from service
center 16” (Kennedy, col. 18, ll. 47-52); and (2) “processor 38 may execute
speech synthesis software 74 to translate e-mails into verbal communication
and play back the e-mails using speakers 202” (Kennedy, col. 18, ll. 54-56).
In other words, although a signal may arrive at the mobile unit 12 initially in
a non-audible form (i.e., in the form of an email) that non-audible signal is
subsequently translated by speech synthesis software 74 into an audible
signal that is then played backed (i.e., transmitted) to the vehicle using
speakers 202 (i.e., an audible signal). As such, we agree with Appellants
that “it is of no consequence that the signal is initially sent as a non-audible
signal (e.g., an e-mail); rather the signal transmitted to the vehicle (via the
speakers) is in the form of an audible signal.” Reply Br. 4. Hence, Kennedy
fails to disclose a system/method for producing navigation instructions
including the step of “transmitting a non-audible signal to a vehicle,” as
required by independent claims 1 and 14.
The Examiner relied on Leibermann for disclosure of
translating/converting audible speech or text into sign language symbols.
Supp. Ans. 5, 9-10. The Examiner did not rely on Liebermann to cure the
above-noted deficiency with Kennedy. Id. at 9. Accordingly, for the
foregoing reasons, the Examiner’s rejection of claims 1-15 under 35 U.S.C.
§ 103(a) as being unpatentable over Kennedy and Liebermann cannot be
sustained.
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Obviousness of claims 16-19
Independent claim 16 recites a navigation system including an
electronic device, wherein the electronic device “[is] at least one of a tactile
signaling device or a visual signaling device.”4 App. Br., Claims Appendix.
The Examiner found that Kennedy discloses “the electronic device being at
least one of a tactile signaling device or a visual signaling device.” Supp.
Ans. 8.
Appellants argue that Kennedy fails to teach or suggest that the
electronic device is at least one of a tactile signaling device or a visual
signaling device. App. Br. 6, 8. Specifically, Appellants argue that
transmitting audible signals as disclosed in Kennedy “does not require a
tactile signaling device or a visual signaling device.” Id. at 8.
Although we agree that Kennedy discloses a vehicle navigation
system (Kennedy, Abstract; fig. 1), we could not find any portion of
Kennedy, and the Examiner has not pointed to any portion of Kennedy, that
discloses that the navigation system of Kennedy includes an electronic
device “being at least one of a tactile signaling device or a visual signaling
device.” Kennedy discloses (1) “[p]rocessor 38 and audio recorder 70 use
speech synthesis software 74 to access speech synthesis database 76 and
translate the textual directions into audio voice signals for playback using
speakers 202” (Kennedy, col. 17, ll. 59-63); (2) “processor 38 may execute

4 Appellants’ Specification discloses that (1) “examples of . . . an electronic
device 60 are tactile signaling devices, visual signaling devices, and/or
combinations thereof. The tactile signaling device receives the signal and
vibrates or shakes in response thereto” (Spec. [0043]); and (2) “[t]he visual
signaling device receives the signal and lights up and/or flashes in response
thereto” (Spec. [0044]).
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speech synthesis software 74 to translate e-mails into verbal communication
and play back the e-mails using speakers 202” (Kennedy, col. 18, ll. 54-56);
and (3) “[s]peakers 202 are capable of producing enough volume for the
audio signals to be heard in either an automotive or heavy duty trucking
environment” (Kennedy, col. 13, ll. 28-30; fig. 2). In other words, speakers
202 of Kennedy are configured to alert the vehicle passenger of an incoming
call or navigation route commands as recited in claim 16. See claim 16,
App. Br., Claims Appendix. Hence, the speakers 202 (i.e., audible signaling
devices) of Kennedy constitute the electronic device recited in the claim.
We agree with Appellants that the electronic device of Kennedy is an
“audible” signaling device and not a “tactile” or “visual” signaling device, as
required by independent claim 16. Reply Br. 4.
As discussed above, the Examiner relied on Leibermann for disclosure
of translating/converting audible speech or text into sign language symbols.
Supp. Ans. 8-10. The Examiner did not rely on Liebermann to cure the
above-noted deficiency with Kennedy. Accordingly, for the foregoing
reasons, the Examiner’s rejection of claims 16-19 under 35 U.S.C. § 103(a)
as being unpatentable over Kennedy and Liebermann cannot be sustained.
Obviousness of claim 21
Independent claim 21 recites a method for producing navigation
instructions including the step of “translating the navigation route from
textual instructions to sign language symbols.” App. Br., Claims Appendix.
The Examiner found that Kennedy discloses the limitations of
independent claim 21 except “translating the [navigation] route into sign
language symbols.” Supp. Ans. 5. The Examiner further found that
Liebermann discloses “specifically being able to translate into sign language
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on a phone.” Id. In addition, the Examiner took the position that “it is
common and well known in the art to be able to translate within a navigation
system.” Id. The Examiner concluded that “[i]t would have been obvious to
one having ordinary skill in the art at the time of the invention to include a
translation to sign language in order to allow more easily someone to
understand the instructions received.” Ans. 5-6.
Appellants argue that neither Kennedy nor Liebermann, either alone
or in combination, teach or suggest the step of “translating the navigation
route from textual instructions to sign language symbols,” as required by
claim 21. App. Br. 9. Specifically, Appellants argue that “Liebermann’s
focus centers on using a video apparatus for observing and digitizing facial,
body, and hand and finger signing motions, and translating the motions into
words or phrases, and likewise translating spoken words or phrases into
signing motions.” Id. (emphasis in original). As such, Appellants take the
position that “one skilled in the art, based on the video apparatus-based
teachings of Liebermann, would not be led to translate textual instructions in
view of this reference, taken alone or in combination with Kennedy.” Id.
We are not persuaded by Appellants’ arguments, because obviousness
does not require that all of the features of the secondary reference be bodily
incorporated into the primary reference. In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Liebermann discloses that
On the other end of the telephone line, the normally
hearing person talks on his or her conventional telephone in the
normal and regular way of spoken language. His or her voice is
carried on line (in whatever method of transport is utilized by
the telephone carrier) to the Center where speech recognition
algorithms convert the spoken word to text. The Center will
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accommodate appropriate speech recognition (i.e., automatic,
continuous and speaker independent). The recognized speech is
then transformed into its equivalent signing content vocabulary
and then into text. The text is sent via the telephone lines to the
device used by the deaf person and converted to signing
animation.
Liebermann, col. 5, ll. 14-25 (emphasis added).
In other words, Liebermann discloses translating/converting speech
from a hearing person to equivalent signing content vocabulary and then into
text and converting the text to sign language symbols for the deaf person.
Consequently, we agree with the Examiner that “Liebermann is applying a
known technique, in this case converting audible speech or text into sign
language symbols, to a known device, in this case a vehicle navigation
apparatus [as disclosed in Kennedy], in order to make [the] device accessible
to the hearing-impaired.” Supp. Ans. 9-10.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
claim 21 under 35 U.S.C. § 103(a) as being unpatentable over Kennedy and
Liebermann is sustained.

DECISION
The decision of the Examiner to reject claims 14 and 15 under 35
U.S.C. § 112, second paragraph, as being indefinite, is reversed.
The decision of the Examiner to reject claims 1-19 under 35 U.S.C. §
103(a) is reversed.
The decision of the Examiner to reject claim 21 under 35 U.S.C. §
103(a) is affirmed.
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).
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AFFIRMED-IN-PART

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