Ex parte OKADA

Board of Patent Appeals and Interferences

Apr 6, 1998

08048503 (B.P.A.I. Apr. 6, 1998)

Application for patent filed April 20, 1993.1
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte TOSHIO OKADA
________________
Appeal No. 96-2864
Application 08/048,5031
________________
ON BRIEF
________________
Before STONER, Chief Administrative Patent Judge, McQUADE and
CRAWFORD, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was originally taken from the final rejection of
claims 1 through 15, all of the claims pending in the
application. The appellant has since amended claims 1 through
15, and in response the examiner has withdrawn all rejections of
claims 9, 10, 14 and 15 which now stand allowed. Thus, the
Appeal No. 96-2864
Application 08/048,503
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appeal as to claims 9, 10, 14 and 15 is hereby dismissed, leaving
for review the standing rejections of claims 1 through 8 and 11
through 13.
The invention pertains to a voice recording and reproducing
apparatus designed to function as an interactive language
learning device. A copy of the claims involved in the appeal is
appended to the appellant’s main brief (Paper No. 14).
The reference relied upon by the examiner as evidence of
anticipation and obviousness is:
Willetts 5,010,495 Apr. 23, 1991
Claims 1 through 8 and 13 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Willetts, and claims 11 and 12
stand rejected under 35 U.S.C. § 103 as being unpatentable over
Willetts.
Reference is made to the appellant’s main and reply briefs
(Paper Nos. 14 and 16) and to the examiner’s main and
supplemental answers (Paper Nos. 15 and 18) for the respective
positions of the appellant and the examiner with regard to the
merits of these rejections.
Willetts discloses “a computerized interactive language
learning system which provides visual text displays and
associated digitized audio speech” (column 1, lines 7 through 9).
Appeal No. 96-2864
Application 08/048,503
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As described by Willetts with reference to Figure 1, the system
50 includes
a conventional personal computer 52 (e.g., IBM PC or
true compatible provided with a conventional DOS disk
operating system version 2.1 or higher and at least 384
kilobytes of random access memory); a keyboard input
device 54; a mass storage device 56 (which may be one
or more floppy diskette drives and associated floppy
diskettes, Winchester-type hard disk drives and/or CD
ROM drives); a conventional CRT-type display 58; and a
speech processor 60 connected to an appropriate audio
input/output device (a conventional headset-type
speaker/microphone arrangement 62a and/or a
microphone/loudspeaker combination 62b with appropriate
external audio amplifiers as necessary).
. . . Speech processor 60 converts audio signals
applied to its audio input into ADPCM (Adaptive
Differential Pulse Code Modulation) encoded digital
data in a conventional manner for storage on mass
storage device 56 - and also converts previously
recorded ADPCM encoded digital data stored on the mass
storage device into an audio signals [sic] provided at
the speech processor audio output socket (also in a
conventional manner) [column 7, lines 29 through 61].
The Willetts system provides a “Studio Routine” (see column
20, line 41 et seq.) which allows a teacher to design and/or
customize lessons and exercises which are presented to a student
through three student functions: SoundSort, AudioWrite and
AudioLab. The SoundSort function requires a student to listen to
a jumbled series of audio phrases and arrange them in the proper
order (see column 6, lines 7 through 21; column 11, line 40
through column 12, line 32; and column 17, line 59 through column
Appeal No. 96-2864
Application 08/048,503
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20, line 40). The AudioWrite function requires a student to
listen to and type an audio text (see column 6, lines 22 through
30; column 10, line 61 through column 11, line 40; and column 16,
line 42 through column 17, line 58). The AudioLab function
allows a student to listen to an audio text, and to record and
play back his or her restatement of the text (see column 5, line
47 through column 6, line 6; column 9, line 1 through column 10,
line 60; and column 13, line 5 through column 16, line 42).
The examiner’s explanation of the rejections on appeal
indicates that they are based on the AudioLab configuration of
the Willetts system. As explained by Willetts, the student
separately implements each of the various steps in the AudioLab
function, i.e., the selection of an audio text, the playing of a
selected text, the recording of the student’s restatement of a
text and the play back of the recorded restatement, in whatever
order desired by pressing specified keys on the keyboard input
device 54.
With regard to the standing 35 U.S.C. § 102(b) rejection of
claims 1 through 8 and 13, anticipation is established only when
Appeal No. 96-2864
Application 08/048,503
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a single prior art reference discloses, expressly or under
principles of inherency, each and every element of a claimed
invention. RCA Corp. v. Applied Digital Data Sys., Inc., 730
F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
In the present case, independent claim 1 recites a voice
recording and reproducing apparatus comprising, inter alia, input
means for receiving a sentence end reproduction indication signal
and control means for controlling the recording and reproducing
means so as to reproduce a predetermined length of the recorded
audio signal representing a terminating portion of one of the
sentences in response to the sentence end reproduction indication
signal. Independent claim 7 recites a voice recording and
reproducing apparatus comprising, inter alia, input means for
receiving a recording and reproducing mode indication signal and
control means responsive to said recording and reproducing mode
indication signal for controlling a repetitive sequence of the
reproducing of a first audio signal and the recording and
reproducing of a second audio signal by the recording and
reproducing means with each repetition of the repetitive sequence
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including at least recording of the second audio signal and
reproducing of at least one of the first and second audio
signals. Independent claim 8 recites a voice recording and
reproducing apparatus comprising, inter alia, input means for
receiving a skip indication signal and control means for
controlling the recording and reproducing means in response to
the skip indication signal so as to alter by a predetermined
interval a position on the disk-shaped recording medium from
which the recorded audio signal is reproduced. It is not
apparent, nor has the examiner specifically pointed out, where
each of these recited elements is disclosed by Willetts.
Arguably, if a series of individual commands were inputted
in the proper sequence via the keyboard input device 54, the
Willetts system in its AudioLab configuration could (1) reproduce
a predetermined length of a recorded audio signal representing a
terminating portion of a sentence, or (2) reproduce a repetitive
sequence of the reproducing of a first audio signal and the
recording and reproducing of a second audio signal by the
recording and reproducing means with each repetition of the
repetitive sequence including at least recording of the second
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audio signal and reproducing of at least one of the first and
second audio signals, or (3) alter by a predetermined interval a
position on the disk-shaped recording medium from which a
recorded audio signal is reproduced. It is not evident, however,
that Willetts discloses, or would have suggested, the particular
“means” recited in claims 1, 7 and 8 for performing these
operations.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 102(b) rejection of independent claims 1, 7 and 8, or of
dependent claims 2 through 6 and 13, as being anticipated by
Willetts, or the standing 35 U.S.C. § 103 rejection of dependent
claims 11 and 12 as being unpatentable over Willetts.
With additional regard to the 35 U.S.C. § 103 rejection, the
examiner has failed to present an adequate evidentiary showing
that a voice recording and reproducing apparatus having the
variable speed features recited in claims 11 and 12, which are
conceded to be lacking in Willetts, would have been obvious to
one of ordinary skill in the art. The citation of new references
under the “Response to Argument” heading in the main answer to
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cure this deficiency is inappropriate. See In re Hoch, 428 F.2d
1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
The decision of the examiner is reversed.
REVERSED
BRUCE H. STONER, JR. )
Chief Administrative Patent Judge )
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 96-2864
Application 08/048,503
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William S. Frommer
Frommer Lawrence & Haug
745 Fifth Avenue
New York, NY 10151