Ex Parte PaulDownload PDFPatent Trials and Appeals BoardSep 23, 201311162520 - (D) (P.T.A.B. Sep. 23, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TERRANCE D. PAUL ____________ Appeal 2011-008738 Application 11/162,520 Technology Center 3700 ____________ Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and JOHN W. MORRISON, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-12, 14, 15, 17, 18, and 20-39. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2011-008738 Application 11/162,520 2 Claimed Subject Matter The claimed subject matter relates “in general, to education enhancement software and systems, and, more particularly, to software systems and methods to monitor speech to enhance the development of vocabulary and language ability.” Spec. 1, [Para 2]. Claim 1, reproduced below, is illustrative of the appealed subject matter. 1. A method of supporting language development comprising: capturing sound in a natural language environment, using at least one sound capture device which is located in the natural language environment; developing a sound signal from the captured sound, wherein the sound signal comprises components representing one or more features that affect a language development environment; analyzing the sound signal to determine at least one characteristic of the language development environment, wherein at least one characteristic indicates a qualitative or quantitative assessment of the one or more features; comparing the determined characteristic to a preselected standard or change over time; and reporting results. Evidence Relied Upon The prior art relied upon by the Examiner in rejecting the claims on appeal is: Vildgrube 4,464,119 Aug. 7, 1984 Russell 5,679,001 Oct. 21, 1997 Tallal 6,071,123 Jun. 6, 2000 Shpiro 2002/0150869 A1 Oct. 17, 2002 Petrushin 2003/0033145 A1 Feb. 13, 2003 Clapper 2003/0120846 A1 Jun. 26, 2003 Gupta 7,302,389 B2 Nov. 27, 2007 Appeal 2011-008738 Application 11/162,520 3 Morris, Suzanne Evans, Pre-Speech Assessment Scale: A Rating Scale for the Measurement of Pre-Speech Behaviors from Birth through Two Years, J. A. Preston Corp., 1982 (hereinafter “Morris”). Fell, Harriet J., et al., Automatic Babble Recognition for Early Detection of Speech Related Disorders, Proceedings of the Third International ACM SIGCAPH Conference on Assistive Technologies, April 15-17, 1998 (hereinafter “Fell”). Schötz, Susanne, Prosodic Cues In Human and Machine Estimation of Female and Male Speaker Age, The XIIth Swedish Phonetic Conference, May 26-28, 2003 (hereinafter “Schötz”). Nwe, Tin Lay, et al., Speech emotion recognition using hidden Markov Models, Speech Communication 41, pp. 603-623, Jun. 30, 2003 (hereinafter “Nwe”). Gerosa, Matteo, et al., Acoustic variability and automatic recognition of children's speech, ITC-IRST, Centro per la Ricerca Scientifica e Tecnologica, 1-38050 Povo, Trento, Italy; accepted: Jan. 11, 2007 (hereinafter “Gerosa”). Metze, Florian, et al., Comparison of Four Approaches to Age and Gender Recognition For Telephone Applications, ICASSP 2007 (hereinafter “Metze”). Schuller, Björn, et al., The INTERSPEECH 2009 Emotion Challenge, International Speech Communication Association (ISCA), pp. 312-316, 2009 (hereinafter “Schuller”). Rejections The following Examiner’s rejections are before us for review: I. claims 9-11, 20, 31, and 37 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement; Appeal 2011-008738 Application 11/162,520 4 II. claims 1, 2, 4-9, 12, 35, and 36 under 35 U.S.C. § 103(a) as unpatentable over Gupta and Fell;1 III. claims 3 and 39 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Fell, and Morris; IV. claims 14, 15, and 18 under 35 U.S.C. § 103(a) as unpatentable over Gupta and Russell; V. claims 10 and 31-36 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Fell, and Russell; VI. claim 17 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Petrushin, and Vildgrube; VII. claims 11 and 37 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Fell, Russell, Petrushin, and Vildgrube;2 VIII. claim 20 under 35 U.S.C. § 103(a) as unpatentable over Shpiro, Gupta, and Morris; 1 We included claim 5 in the claim listing of this ground of rejection, because the Examiner specifically addresses claim 5 in the body of the rejection. See Ans. 7. The Examiner’s omission of claim 5 from the ground of rejection on page 6 of the Answer appears to be a typographical error. In addition, although the Examiner does not specifically address claims 35 and 36 in the body of the rejection and the inclusion of claims 35 and 36 in the ground of rejection on page 6 of the Answer may be a typographical error, we will address the rejection of claims 35 and 36 under this ground of rejection infra for the sake of completeness. 2 We consolidated the Examiner’s rejections of claims 11 and 37 because both rejections are based on the combination of Gupta, Fell, Russell, Petrushin, and Vildgrube. See Ans. 14 and 15. However, the inclusion of Russell in the ground of rejection for claim 11 may be a typographical error as the Examiner does not appear to rely on Russell for any teachings in the body of the rejection of claim 11 (see Ans. 14) and claim 11’s parent claim 1 was only rejected based on Gupta and Fell (see Ans. 6; see also Br., Clms. App’x). Appeal 2011-008738 Application 11/162,520 5 IX. claim 38 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Russell, and Morris; X. claims 21-26, 28, and 29 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Fell, Russell, and Morris; XI. claim 27 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Fell, Russell, Morris, and Clapper; and XII. claim 30 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Fell, Russell, Morris, and Tallal.3 OPINION Rejection I – Lack of Enablement Claims 9 and 31 Claim 9 depends from independent claim 1 and recites that “the act of analyzing comprises estimating a developmental stage represented by utterances that occur in the sound signal.” Br., Clms. App’x. Emphasis added. Independent claim 31 recites “a reporting component coupled to the speech processor and operable to report metrics that quantify the identified characteristics and estimate a developmental stage associated with the captured vocalizations and utterances.” Id. Emphasis added. The Examiner determines that the Specification “does not provide a teaching on how one of ordinary skill[] in the art can make or implement” the feature of “‘estimating the developmental stage represented by the utterance in the sound signal.’” Ans. 5. 3 The Examiner’s ground of rejection on page 21 of the Answer has the last reference listed as “Taller,” instead of “Tallal,” which appears to be a typographical error. Appeal 2011-008738 Application 11/162,520 6 Appellant argues Specification [Para 45], [Para 55], [Para 70], and [Para 71] support that the features of claims 9 and 31 are enabled. Br. 14. More particularly, with reference to [Para 70] and [Para 71], Appellant notes that “the specification states that normative charts ‘involve multiple dimensions and combination[s] of dimensions’ and that the ‘measured characterics’ may be compared to the normative charts.” Id. With respect to [Para 45] and [Para 55], Appellant also note that “the specification describes what these measured characteristics may be.” The Examiner responds that the “[S]pecification fail[s] to show any algorithm that performs the claimed function,” and “while paragraph 70 mentions some [type] of normative graph similar to a height and weight [chart], the [S]pecification do[es] not show any graph that can be used to measure language development.” Ans. 22. The Examiner notes that the Specification does not show how one of ordinary skill in the art can modify the height and weight chart to “‘represent[] normal ranges of language development, including pre-linguistic development.’” Id. In addition, with respect to Appellant’s notation that Specification [Para 45] and [Para 55] provide measured characteristics that can be used to perform analysis, the Examiner states that the Specification fails to provide any method or algorithm that can be used to perform the analysis. Id. The Examiner also responds that none of Specification [Para 45], [Para 55], [Para 70], and [Para 71] relied on by the Appellant “provides any information that can guide one of ordinary skill[] in the art to create [the] speech processor” of claim 31’s reporting step. Ans. 23. The Examiner explains that “the problem of ‘estimating a developmental stage represented by utterance that occurs in the sound signal’ is still considered to be a Appeal 2011-008738 Application 11/162,520 7 research area that is still not solved” as evidenced by any one of Schötz, Gerosa, and Metze. Ans. 23-24. Thus, “the [E]xaminer concludes that one of ordinary skill[] in the art would have to select multiple paths in order to make or use the [estimating] feature,” “none of these paths provide a clear and effective answer,” and “the presence of multiple and ineffective path[s] are signs of undue experimentation.” Ans. 24. The test for compliance with the enablement requirement in the first paragraph of 35 U.S.C. § 112 is whether the disclosure, as filed, is sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). “Enablement is not precluded by the necessity for some experimentation . . . . However, experimentation needed to practice the invention must not be undue experimentation. The key word is ‘undue,’ not ‘experimentation.’” Id. at 736-37. To evaluate whether a disclosure would require undue experimentation, the Federal Circuit has adopted the following factors to be considered: (1) the quantity of experimentation needed to make or use the invention based on the content of the disclosure; (2) the amount of direction or guidance presented; (3) the existence of working examples; (4) the nature of the invention; 5) the state of the prior art; (6) the relative skill of those in the art; (7) the level of predictability in the art; and (8) the breadth of the claims. See id. at 737. The examiner’s analysis must consider all the evidence related to each of these factors, and any conclusion of nonenablement must be based on the evidence as a whole. Id. We agree with the Examiner’s that the scope of protection provided by these claims is not adequately enabled by the description of the invention Appeal 2011-008738 Application 11/162,520 8 in the Appellant’s Specification. Although Specification [Para 70] states that “[t]he present invention enables the development of normative charts,” and Specification [Para 71] states that “[t]he normative charts may be useful in the detection, diagnosis and treatment of various cond[it]ions,” this does not adequately establish how to make and use the method of claim 9 and system of claim 31 which require estimating a developmental stage. In other words, there is inadequate disclosure concerning how the estimation of the developmental stage is performed. Thus, the Examiner’s rejection is sufficient to shift the burden to the Appellant, and Appellant failed to reply to the Examiner’s conclusion of undue experimentation in the Answer by showing that one of ordinary skill in the art could have practiced the claimed invention without undue experimentation, and we are not persuaded by Appellant’s argument that the Specification enables “estimating a developmental stage” either represented by utterances that occur in a sound signal (claim 9) or associated with the captured vocalizations and utterances (claim 31). Accordingly, we sustain the Examiner’s rejection of claims 9 and 31 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Claim 10 Claim 10 depends from independent claim 1 and recites that “the act of analyzing comprises distinguishing between human-made sounds and non-human-made sounds in the language environment.” Br., Clms. App’x. Emphasis added. The Examiner determines that the Specification “do[es] not provide a a teaching . . . that can be used by one of ordinary skill[] in the art to Appeal 2011-008738 Application 11/162,520 9 implement the act of analyzing that is capable of distinguishing between human and non-human made sound[s].” Ans. 5. Without specifically addressing claim 10 (i.e., in a paragraph beginning with “[i]n respect to claims 11 and 37”), Appellant notes that Specification [Para 15] “describes the resolution of human sound from non-human sound.” Br. 15. The Examiner responds that the Specification fails to show any algorithm or give any criteria as to how one of ordinary skill in the art, or a computer processor, can perform distinguishing human-made sound from non-human-made sound. Ans. 25. The Examiner’s findings reasonably establish that the disclosure, as filed, is not sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. Therefore, the Appellant did not establish error in the Examiner’s rejection. Accordingly, we sustain the Examiner’s rejection of claim 10 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Claim 20 Independent claim 20 is directed to a method of teaching vocabulary, including, inter alia, the step of “monitoring the student’s communications in a natural language environment, wherein the student is not monitored alone, but in the context of various other people, using at least one sound capture device which is located in the natural language environment, over a period of time to identify indirect teaching of the vocabulary words.” Br., Clms. App’x. Emphasis added. The Examiner determines that the Specification “do[es] not provide a a teaching [as to] how one of ordinary skill[] in the art can make or Appeal 2011-008738 Application 11/162,520 10 implement [the] feature” of identifying indirect teaching of the vocabulary words. Ans. 5. Appellant generally argues that “the Examiner has only identified conclusory reasoning for non-enablement and that no findings of fact have been made” so that “[t]he burden to articulate a prima facie case has not been met,” and “the burden to rebut with evidence and/or argument has not yet shifted to Appellant.” Br. 12. We agree with Appellant. The PTO bears the initial burden when rejecting claims for lack of enablement. When rejecting a claim under the enablement requirement of section 112, the PTO bears an initial burden of setting forth a reasonable explanation as to why it believes that the scope of protection provided by that claim is not adequately enabled by the description of the invention provided in the specification of the application; this includes, of course, providing sufficient reasons for doubting any assertions in the specification as to the scope of enablement. If the PTO meets this burden, the burden then shifts to the applicant to provide suitable proofs indicating that the specification is indeed enabling. In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)). In the present case, the Examiner has failed to provide a reasonable explanation as to why the scope of protection provided by claim 20 is not adequately enabled by the description of the invention provided in Appellant’s Specification. In particular, the Examiner has failed to sufficiently show why Appellant’s disclosure would require undue experimentation in order to make and/or use the claimed invention, in particular, the feature of identifying indirect teaching of the vocabulary words. As such, Appellant has shown error in the Examiner’s rejection. Appeal 2011-008738 Application 11/162,520 11 Accordingly, we do not sustain the Examiner’s rejection of claim 20 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Claims 11 and 37 Claim 11 depends directly from independent claim 1 and recites that “the act of analyzing comprises estimating the emotional tone of the utterances that occur in the sound signal.” Br., Clms. App’x. Emphasis added. Claim 37 depends indirectly from independent claim 31, and recites that “the speech processor comprises mechanisms operable to estimate emotional content of the communication.” Id. Emphasis added. The Examiner finds that the Specification “do[es] not provide a teaching . . . that can be used by one of ordinary skill[] in the art of any act of analyzing that is capable of estimating the emotional content of the communication.” Ans. 5. Appellant argues that Specification [Para 41] “describes the analysis of emotional content including intonation and information related to turn taking.” Br. 15. The Examiner responds that the “disclosure disclose[s] that some language analysis can be used to perform the analysis of the emotional content,” but does not disclose “any algorithm or steps that can be used by one of ordinary skill[] in the art to perform analysis [of] the emotional content of the voice signal.” Ans. 26. The Examiner also responds that “[A]ppellant’s disclosure do[es] not show . . . any instruction that can be used by one of ordinary skill[] in the [art] to make or create the speech processor.” Id. The Examiner additionally responds that the estimating of emotional tone/content “can be considered a state of the art problem with no Appeal 2011-008738 Application 11/162,520 12 known solution,” as evidenced by Nwe and Schuller. Ans. 26-27. The Examiner concludes that “one of ordinary skill[] in the art would have to select multiple paths in order to make or use the [estimating] feature,” “none of the[] paths provide a clear and effective answer,” and “the presence of multiple and ineffective path[s] are signs of undue experimentation.” Ans. 27. Here, we cannot agree that the Examiner’s conclusion as to undue experimentation is reasonable. Specification [Para 41] provides a way to estimate emotional tone/content (i.e., “[b]oth precise and imprecise language analysis techniques can be used to develop a metric related to the emotional content.”). Even if it is true that Nwe only provides a 55-79% effectiveness and Schuller’s precision is only 57-70% as pointed out by the Examiner, estimating emotional tone/content is still possible. Thus, we are persuaded by Appellant’s arguments that the Examiner has not established that the disclosure, as filed, is insufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. Accordingly, we do not sustain the Examiner’s rejection of claims 11 and 37 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Rejection II – Obviousness based on Gupta and Fell The Examiner finds that Gupta discloses “capturing sound in a natural language environment using at least one capture device that is located in the natural language environment.” Ans. 6 (citing Gupta, col. 7, ll. 15-25). Appeal 2011-008738 Application 11/162,520 13 Appellant argues that “Gupta teaches an artificially constrained interaction between a computer and an individual, where a computer provides ‘prompts’ to the user ‘to provide spoken inputs in response to a series of questions’ where ‘each question has a finite number of possible responses,’” and “the phrase ‘natural language environment’ is inconsistent with a scripted, automated, interaction between an individual and a computer.” Br. 16 (citing to Gupta, col. 7, ll. 36-50). More particularly, Appellant argues that “[a]lthough the patient in Gupta can use the tool in the privacy of his or her home, the interaction of an individual with a computer is not a natural language environment,” and “[t]he construction proposed by the [Examiner] is not consistent with Appellant’s specification, since sitting at home and the singular act of speaking to a computer would not be considered a natural language environment” in light of the Specification’s “multi-person social context where and when language naturally occurs.” Br. 17. We are persuaded by Appellant’s argument. In light of Appellant’s Specification indicating that “by operating in a natural language environment, as opposed to a clinical, classroom, or other special-purpose environment,” “the subject is not monitored along, but in the context of the various other people with which the subject normally interacts,” and “[t]he subject can be monitored in conversations with a variety of people” (see, e.g., Spec. 20-21, [Para 63]), one of ordinary skill in the art would interpret the claim term “natural language environment” to have some sort of conversational and social interaction component. However, Gupta discloses a computer-based system having a typical automated attendant application, wherein the attendant algorithm prompts the user to provide spoken inputs in Appeal 2011-008738 Application 11/162,520 14 response to a series of questions, each question having a finite number of possible answers. Although the Examiner pointed to the fact that in Gupta’s system 100, “the patient can use this tool in the privacy and convenience of his or her own home” (col. 7, ll. 23-24), we note that Gupta’s disclosure does not provide for any interaction between the user or patient and other persons. Thus, we cannot agree that Gupta discloses a natural language environment when considered in light of Appellant’s Specification. Accordingly, we do not sustain the Examiner’s rejection of independent claim 1, and claims 2, 4, 6-9, and 12 which depend thereon, under 35 U.S.C. § 103(a) as unpatentable over Gupta and Fell. Turning to claims 35 and 36, these claims do not depend either directly or indirectly from independent claim 1, but rather depend from claim 32 which in turn depends from independent claim 31. Br., Clms. App’x. The Examiner has not rejected claims 31 and 32 under 35 U.S.C. § 103(a) as unpatentable over Gupta and Fell. Rather, the Examiner rejects claims 31 and 32 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Fell, and Russell.4 Consequently, we shall not sustain the Examiner’s rejection of claims 35 and 36 under 35 U.S.C. § 103(a) as unpatentable over Gupta and Fell. Rejection III – Obviousness based on Gupta, Fell, and Morris Claims 3 and 39 both depend directly from independent claim 1. Br., Clms. App’x. 4 Claims 35 and 36 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gupta, Fell, and Russell. Appeal 2011-008738 Application 11/162,520 15 The Examiner’s rejection of claims 3 and 39 relies on Morris for its disclosure that “the speech involves at least two participants (see page 227 item 4 the child as the subject and the parent as the second participant) and the method further comprises of associating the sound signal with a particular one of the at least two participants (see page 227 item 5-6).” Ans. 9-10. Appellant argues that “Morris does nothing to resolve the failings of Gupta.” Br. 21. We disagree. Morris discloses tape recording a child while the child is “talking or babbling with another person.” Morris, p. 227, paras. 4 and 5. Thus, Morris cures Gupta’s deficiency of failing to disclose a natural language environment. Accordingly, we sustain the Examiner’s rejection of claims 3 and 39 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Fell, and Morris. Rejection IV – Obviousness based on Gupta and Russell Independent claim 14 is directed to a method of supported learning including, inter alia, “monitoring sounds in a natural language environment occurring during an activity in which spoken content is delivered, wherein at least one sound capture device which is located in the natural language environment is used to perform the monitoring.” Br., Clms. App’x. Claims 15 and 18 both depend directly from independent claim 14. Id. The Examiner’s rejection of independent claim 14 relies on the erroneous finding that Gupta discloses a natural language environment. Appellant argues that Russell does not cure the fact that Gupta fails to disclose a natural language environment. Br. 21. We agree. Accordingly, we do not sustain the Examiner’s rejection of independent claim 14, and claims 15 and 18 Appeal 2011-008738 Application 11/162,520 16 dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Gupta and Russell. Rejection V – Obviousness based on Gupta, Fell, and Russell Claim 10 Claim 10 directly depends from independent claim 1. Br., Clms. App’x. The Examiner’s rejection of claim 10 relies on the erroneous finding that Gupta discloses a natural language environment. Ans. 11. Appellant argues that “Gupta, Fell, and Russell do not capture sound in a natural language environment.” Br. 22. We agree. Accordingly, we do not sustain the Examiner’s rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Fell, and Russell. Claims 31-36 Independent claim 31 is directed to a system for assessing the language development of children and adults including, inter alia, “a speech capture component operable to capture vocalizations and utterances of people in natural settings.” Br., Clms. App’x. Emphasis added. The Examiner finds that Gupta “provides a teaching of a sound capture component to capture sound produced by a first person and a plurality of other sound sources.” Ans. 11 (citing Gupta, col. 3, ll. 30-40). Appellant makes the same argument as discussed supra with respect to claim 10 and “Rejection V,” i.e., “Gupta, Fell, and Russell do not capture sound in a natural language environment.” Br. 22. However, claim 31 does not specifically recite the term “natural language environment,” but rather uses the term “natural setting.” Appellant’s Specification does not define the term “natural setting,” but does state that a purpose of the invention “is Appeal 2011-008738 Application 11/162,520 17 to provide a means to easily measure the level of a child’s language, vocabulary, and cognitive functioning in a naturalistic setting.” Spec. 6, [Para 25]. Appellant also argues with respect to the Gupta reference that “the singular act of sitting in front of a computer and interacting with it cannot be considered a natural setting as recited in claim 31.” Br. 22. Thus, in light of Appellant’s Specification, one of ordinary skill in the art would understand the claim term “natural setting” as being synonymous with the claim term “natural language environment.” Accordingly, for the same reasons as discussed supra with respect to claims 1 and 14, we are persuaded by Appellant’s argument and accordingly, we do not sustain the Examiner’s rejection of claims 31-36 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Fell, and Russell. Rejection VI – Obviousness based on Gupta, Petrushin, and Vildgrube Claim 17 directly depends from independent claim 14. Br., Clms. App’x. The Examiner’s rejection of claim 17 relies on the erroneous finding that Gupta discloses a natural language environment. Ans. 14. Appellant argues neither Petrushin nor Vildgrube cures the defects of Gupta in not disclosing a natural language environment with respect to independent claim 14. Br. 22. We agree. Accordingly, we to not sustain the Examiner’s rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Petrushin, and Vildgrube. Appeal 2011-008738 Application 11/162,520 18 Rejection VII – Obviousness based on Gupta, Fell, Russell, Petrushin, and Vildgrube Claim 11 Claim 11 depends directly from claim 1. Br., Clms. App’x. The Examiner’s rejection of claim 11 relies upon the erroneous finding that Gupta discloses a natural language environment. Ans. 14. Appellant argues that neither Petrushin nor Vildgrube cures the deficiency of the combination of Gupta and Fell in failing to disclose a natural language environment. Br. 22. We agree. Accordingly, we do not sustain the Examiner’s rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Fell, Russell, Petrushin, and Vildgrube. Claim 37 Claim 37 depends indirectly from claim 31. Br., Clms. App’x. Appellant argues that “[t]he combination of Gupta, Fell, Russell, Petrushin, and Vildgrube do not teach any aspects of claim 31 that Gupta and Russell fail to teach (in respect to a natural language environment and capturing vocalizations and utterances of people in natural settings).” Br. 22-23. We are persuaded by Appellant’s arguments for the same reasons as discussed supra with respect to claim 31. Accordingly, we do not sustain the Examiner’s rejection of claim 37 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Fell, Russell, Petrushin, and Vildgrube. Rejection VIII – Obviousness based on Shpiro, Gupta, and Morris Independent claim 20 was discussed supra with respect to “Rejection I.” The Examiner finds that Shpiro substantially discloses the subject matter of claim 20, but “fails to provide a teaching of a ‘natural language environment using at least one capture device which is located in the natural Appeal 2011-008738 Application 11/162,520 19 language environment.[’]” Ans. 15. The Examiner relied on Morris to “provide a teaching of monitoring in the natural language environment includes subject matter that is monitored with other people with which the subject[] interacts.” Ans. 16 (citing Morris, p. 227, paras. 4 and 5, “where the subject (the child) is talking to the parent and/or another person”). Appellant notes a typographical error in the Examiner’s previous Office Action mailed June 10, 2009 in which the Examiner listed the reference name of Gupta, but thereafter had the incorrect reference patent number of Masterson. See Non-Final Rej. 12. The present Office Action mailed February 18, 2010 from which Appellant is appealing has the correct reference name and patent number. See Final Rej. 12. However, Appellant’s first argument is that “[c]laim 20 is patentable over Shpiro in view of Masterson, since Masterson fails to teach monitoring in a natural language environment.” Br. 23. We are not persuaded by this argument as it is moot since it is clear that the Examiner is applying Gupta, not Masterson. Secondly, Appellant argues that “Shpiro in view of Gupta also fails to teach monitoring in a natural language environment.” Id. We are also not persuaded by Appellant’s second argument because one cannot show nonobviousness by attacking references individually where the rejections are based on a combination of references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981). In the present case, the Examiner’s reliance on Morris’s disclosure of a child “[t]alking or [v]ocalizing directly to another person” cures Gupta’s failure to disclose a natural language environment. See Morris, p. 227, para. 4. Appeal 2011-008738 Application 11/162,520 20 Accordingly, we sustain the Examiner’s rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable over Shpiro, Gupta, and Morris. Rejection IX – Obviousness based on Gupta, Russell, and Morris Claim 38 depends directly from claim 14. Br., Clms. App’x. The Examiner relies on Morris to disclose “monitoring in the natural language environment includes subject that is monitored with other people with which the subject[] interacts.” Ans. 16 (citing Morris, p. 227, paras. 4-5, “wherein the subject (child) is talking to the parent and/or another person”). Appellant argues that Gupta “does not teach or suggest capturing sound in a natural language environment,” and “Russell does not teach or suggest capturing sound in a natural language environment, but instead, when a child interacts with a computer.” Br. 23 (citing Russell, Fig. 1 and related description). We are not persuaded by Appellant’s arguments for the same reasons as discussed supra with respect to claim 20 and “Rejection VIII,” i.e., the Examiner is relying on Morris to teach recording the child’s vocalizations while the child is interacting with another person and thus, Morris cures the deficiency of Gupta. Accordingly, we sustain the Examiner’s rejection of claim 38 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Russell, and Morris. Rejection X – Obviousness based on Gupta, Fell, Russell, and Morris Appellant argues claims 21-26, 28, and 29 as a group and we select independent claim 21 as the representative claim. Br. 24. Claims 22-26, 28, and 29 fall with claim 21. Appeal 2011-008738 Application 11/162,520 21 Independent claim 21 is directed to a system for supporting language acquisition including, inter alia, “a sound capture component operable to capture sounds produced by a first person and a plurality of other sound sources, wherein the plurality of other sound sources includes other people.” Br., Clms. App’x. The Examiner makes the same finding with respect to Morris as discussed supra with respect to claim 38 and “Rejection IX.” Ans. 18. Appellant argues that “Gupta, Fell, Russell, and Morris do not capture sounds in a natural language environment” and “[c]laims 21 – 26, 28, and 29 are patentable at least by virtue of their dependency on claim 20.” Br. 24. We are not persuaded by Appellant’s argument for several reasons. First, claim 21 is an independent claim and is not dependent upon claim 20. See Br., Clms. App’x. Second, claim 21 does not recite a “natural language environment,” and it is well established that limitations not appearing in the claims cannot be relied upon for patentability. See Self, 671 F.2d 1344, 1349 (CCPA 1982). Finally, Morris specifically teaches a sound capture component (tape recorder) which is capable of performing the recited intended use of being “operable to capture sounds produced by a first person and a plurality of other sound sources, wherein the plurality of other sound sources includes other people.” Br., Clms. App’x. Accordingly, we sustain the Examiner’s rejection of independent claim 21, and claims 22-26, 28, and 29 which fall therewith, under 35 U.S.C. § 103(a) as unpatentable over Gupta, Fell, Russell, and Morris. Rejection XI – Obviousness based on Gupta, Fell, Russell, Morris, and Clapper Claim 27 depends directly from claim 21. Br., Clms. App’x. Appeal 2011-008738 Application 11/162,520 22 Appellant argues that “Gupta, Fell, Russell, and Morris do not capture sounds in a natural language environment,” “Clapper does not teach or suggest any of the failings of Gupta, Fell, Russell, and Morris,” and “[c]laim 27 is patentable at least by virtue of its dependency on claim 20.” Br. 24. For reasons similar to those discussed supra with respect to claim 21 and “Rejection X,” we are not persuaded by Appellant’s argument. More particularly, we note first that claim 27 is not dependent upon claim 20, it is dependent upon claim 21. See Br., Clms. App’x. Second, claim 27 does not recite a “natural language environment,” and it is well established that limitations not appearing in the claims cannot be relied upon for patentability. See Self, 671 F.2d at 1349. Finally, Morris specifically teaches a sound capture component (tape recorder) which is capable of performing the recited intended use of being “operable to capture sounds produced by a first person and a plurality of other sound sources, wherein the plurality of other sound sources includes other people.” Br., Clms. App’x. Accordingly, we sustain the Examiner’s rejection of claim 27 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Fell, Russell, Morris, and Clapper. Rejection XII – Obviousness based on Gupta, Fell, Russell, Morris, and Tallal Claim 30 depends directly from claim 21. Br., Clms. App’x. Appellant argues that “Gupta, Fell, Russell, and Morris do not capture sounds in a natural language environment,” “Tall[al] does not teach or suggest any of the failings of Gupta, Fell, Russell, and Morris,” and “[c]laim 30 is patentable at least by virtue of its dependency on claim 20.” Br. 24. Appeal 2011-008738 Application 11/162,520 23 For reasons similar to those discussed supra with respect to claim 21 and “Rejection X” and claim 27 and “Rejection XI,” we are not persuaded by Appellant’s argument. First, claim 30 is not dependent upon claim 20, it is dependent upon claim 21. See Br., Clms. App’x. Second, claim 30 does not recite a “natural language environment,” and it is well established that limitations not appearing in the claims cannot be relied upon for patentability. See Self, 671 F.2d at 1349. Finally, Morris specifically teaches a sound capture component (tape recorder) which is capable of performing the recited intended use of being “operable to capture sounds produced by a first person and a plurality of other sound sources, wherein the plurality of other sound sources includes other people.” Br., Clms. App’x. Accordingly, we sustain the Examiner’s rejection of claim 30 under 35 U.S.C. § 103(a) as unpatentable over Gupta, Russell, Morris, and Tallal. DECISION We REVERSE the Examiner’s rejections, under either 35 U.S.C. § 112, first paragraph, or 35 U.S.C. § 103(a), of: claims 11, 20, and 37 as failing to comply with the enablement requirement; claims 1, 2, 4-9, 12, 35, and 36 as unpatentable over Gupta and Fell; claims 14, 15, and 18 as unpatentable over Gupta and Russell; claim 10 and 31-36 as unpatentable over Gupta, Fell, and Russell; claim 17 as unpatentable over Gupta, Petrushin, and Vildgrube; and claim 11 and 37 as unpatentable over Gupta, Fell, Russell, Petrushin, and Vildgrube. We AFFIRM the Examiner’s rejections, under either 35 U.S.C. § 112, first paragraph, or 35 U.S.C. § 103(a), of: claims 9, 10, and 31 as failing to Appeal 2011-008738 Application 11/162,520 24 comply with the enablement requirement; claims 3 and 39 as unpatentable over Gupta, Fell, and Morris; claim 20 as unpatentable over Shpiro, Gupta, and Morris; claim 38 as unpatentable over Gupta, Russell, and Morris; claims 21-26, 28, and 29 as unpatentable over Gupta, Fell, Russell, and Morris; claim 27 as unpatentable over Gupta, Fell, Russell, Morris, and Clapper; and claim 30 as unpatentable over Gupta, Fell, Russell, Morris, and Tallal. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART mls Copy with citationCopy as parenthetical citation