Ex Parte Razumov

Board of Patent Appeals and Interferences

Jan 23, 2009

10762375 (B.P.A.I. Jan. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SERGEY N. RAZUMOV
____________

Appeal 2008-3743
Application 10/762,375
Technology Center 3600
____________

Decided: January 23, 2009
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

An oral hearing was held on Jan. 15, 2009.

DECISION ON APPEAL

STATEMENT OF THE CASE
Sergey N. Razumov (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 29-43. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
Appeal 2008-3743
Application 10/762,375

2
SUMMARY OF DECISION
We REVERSE.1
THE INVENTION
The claimed invention “relates to retail systems, and more
particularly, to a multimedia terminal for enabling a customer of a retail
system to place an order for a product.” Specification [02].
Claim 29, reproduced below, is illustrative of the subject matter on
appeal.
29. A system for enabling a customer to order a
required product, comprising:
a voice recognition mechanism for
recognizing voice commands from the customer,
and
a display mechanism responsive to the
recognized voice commands for displaying images
assisting the customer in ordering the product
during a product ordering session,
the display mechanism being configured for
displaying a first screen representing a first phase
of the product ordering session and a second
screen representing a second phase of the product
ordering session, and
the voice recognition mechanism being
configured to establish a first set of voice
commands recognizable when the first screen is
displayed, and a second set of voice commands
recognizable when the second screen is displayed.

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Dec. 13, 2007) and Reply Brief (“Reply Br.,” filed Mar. 19,
2008), and the Examiner’s Answer (“Answer,” mailed Jan. 30, 2008).
Appeal 2008-3743
Application 10/762,375

3
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Sturr, Jr. US 2004/0143512 A1 Jul. 22, 2004

The following rejection is before us for review:
1. Claims 29-43 are rejected under 35 U.S.C. §102(e) as being
anticipated by Sturr, Jr..

ISSUES OF LAW
The issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 29-43 under 35 U.S.C. §102(e) as being
anticipated by Sturr, Jr.. As to claims 29 and 36, does Sturr, Jr. expressly or
inherently describe a system comprising a “voice recognition mechanism for
recognizing voice commands from [a] customer,” which voice recognition
mechanism is configured to establish a first [and second] set of voice
commands recognizable “when [a] first [and second] screen is displayed”
(claim 29) or “during a first [and second] phase of [a] product ordering
session” (claim 36) and a display mechanism responsive to the recognized
voice commands for displaying images? As to claim 40, does Sturr, Jr.
expressly or inherently describe the claimed combination of executing voice
commands and displaying images corresponding to those commands, as
claimed?

Appeal 2008-3743
Application 10/762,375

4
PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
ANALYSIS
The independent claims are apparatus claims 29 and 36 and method
claim 40.
As to claims 29 and 36, they describe a system comprising a “voice
recognition mechanism for recognizing voice commands from [a]
customer,” which voice recognition mechanism is configured to establish a
first [and second] set of voice commands recognizable “when [a] first [and
second] screen is displayed” (claim 29) or “during a first [and second] phase
of [a] product ordering session” (claim 36) and a display mechanism
responsive to the recognized voice commands for displaying images.
We are unable to find any description of the voice recognition
mechanism and display mechanism described in claims 29 and 36 in Sturr,
Jr., expressly or inherently.
In support of the position that Sturr, Jr. expressly describes the voice
recognition and display elements of the claimed systems, the Examiner
relied on ¶¶ 0025, 0027, 0031-0033 and Figs. 1-13. We can find no mention
of “voice” or a similar term in any of the Sturr, Jr. Figs. 1-13 and, as to ¶¶
0025, 0027, 0031-0033, it is recited only once, at ¶ 0025: “Kiosk user
interfaces 20 are usually offered with touch screens 28 for the customer to
enter information by touching a monitor screen, however, other means for
Appeal 2008-3743
Application 10/762,375

5
entering information may also be used, including … microphones and voice
recognition and response systems and other suitable means of making a
selection that can be recognized by a computer.” (Emphasis added.) Sturr, Jr.
does not otherwise explain how the voice recognition enables the computer
to make a selection or further describe an association with the monitor
screen.
Thus, we do not find that Sturr, Jr.’s disclosure of using voice
recognition as one of the means by which a customer can enter information
into a computer to “mak[e] a selection that can be recognized by a
computer” expressly describes a voice recognition mechanism configured to
establish a first [and second] set of voice commands recognizable “when [a]
first [and second] screen is displayed” (claim 29) or “during a first [and
second] phase of [a] product ordering session” (claim 36) and where a
display mechanism is responsive to the recognized voice commands for
displaying images.
Since Sturr, Jr. does not expressly describe the claimed subject matter,
it must inherently describe it to qualify as an anticipatory reference.
In that regard, Sturr, Jr. does not explain how a voice recognition
mechanism would enable its computer to make a selection in association
with the monitor screen. All that Sturr, Jr. discloses is a voice recognition
means as an alternative to touching a screen for entering information so that
a selection can be made. To operate, Sturr, Jr.’s system would necessarily
need a mechanism that recognizes a customer’s voice commands “when [a]
first [and second] screen is displayed” (claim 29) or “during a first [and
second] phase of [a] product ordering session” (claim 36). Under principles
of inherency, when a reference is silent about an asserted inherent
Appeal 2008-3743
Application 10/762,375

6
characteristic, it must be clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill. Continental Can Co. v.
Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). While it is fair to say
that Sturr, Jr.’s computer is configured to recognize information received in
a voice format from which a selection is made, such a computer would not
necessarily need a voice recognition mechanism to recognize a voice
command “when [a] first [and second] screen is displayed” (claim 29) or
“during a first [and second] phase of [a] product ordering session” (claim
36) and a display mechanism responsive to the recognized voice commands
for displaying images. While it may be quite possible to configure Sturr,
Jr.’s computer to include the mechanisms claimed (and perhaps within the
level of ordinary skill in the art to do so), “[i]nherency [for purposes of
establishing anticipation], however, may not be established by probabilities
or possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” Hansgirg v. Kemmer, 102 F.2d 212, 214
(CCPA 1939), quoted in Continental Can Co. USA v. Monsanto Co., 948
F.2d 1264, 1269 (Fed. Cir. 1991).
Accordingly, we find that a prima facie case of anticipation has not
been established for the subject matter of claims 29 and 36, and,
respectively, for the subject matter of dependent claims 30-35 and claims
37-39.
As to the rejection of method claim 40 and claims 41-43 that depend
from it, the Examiner relies on the position taken with respect to the system
claims. See Answer 5. The Examiner should have made a claim construction
analysis of claim 40, rather than relying on an understanding of the system
Appeal 2008-3743
Application 10/762,375

7
claims, because method claim 40 is quite a bit broader in scope than the
independent system claims 29 and 36. Claim 40 calls for a terminal that
executes two voice commands and the displaying of two sets of images
corresponding to the voice commands during two phases of a product
ordering session. Unlike claims 29 and 36, claim 40 does not require the use
of a computer display to perform the step of displaying the sets of images.
Nor is there any requirement that there be a display responsive to the voice
commands. Based on its broadest reasonable construction in light of the
Specification as it would be understood by one of ordinary skill in the art,
claim 40 encompasses a combination of a terminal (e.g., a computer)
executing two customer voice commands and someone displaying two
images corresponding to the voice commands, not necessarily in that order,
during two phases of a product ordering session. Had the Examiner made
such an analysis, perhaps the Examiner’s position would have been
different.
But, we are constrained to review the rejection that has been presented
to us. In that regard, we are unable to find, and the Examiner has not
explained, where in Sturr, Jr., expressly or inherently, the claimed
combination of executing voice commands and displaying images
corresponding to those commands, as claimed, is described. As a result, we
are compelled to reverse the rejection on the ground that the Examiner has
not met the initial burden of establishing a prima facie case of anticipation
for the claimed subject matter over the teachings of Sturr, Jr.

Appeal 2008-3743
Application 10/762,375

8
CONCLUSIONS OF LAW
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 29-43 under 35 U.S.C. §102(e) as being anticipated by
Sturr, Jr..

DECISION
The decision of the Examiner to reject claims 29-43 is reversed.

REVERSED

vsh

MCDERMOTT, WILL & EMERY
600 13th Street, N.W.
Washington DC 20005-3096