Ex Parte Goller et al

Patent Trial and Appeal Board

Aug 23, 2018

14034059 (P.T.A.B. Aug. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/034,059 09/23/2013 Michael D. Goller
26192 7590 08/27/2018
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
16113-9156002 2781
EXAMINER
BATURAY, ALICIA
ART UNIT PAPER NUMBER
2441
NOTIFICATION DATE DELIVERY MODE
08/27/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL D. GOLLER and STUART E. GOLLER1
Appeal2018-000042
Application 14/034,059
Technology Center 2400
Before CAROLYN D. THOMAS, MICHAEL M. BARRY, and
DAVID J. CUTITTA II, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1, 6-12, and 15-20, all the pending
claims in the present application. Claims 2-5, 13, and 14 are canceled (see
Claims Appendix). We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We REVERSE.
The present invention relates generally to sharing between computing
devices via a sharing interface (see Spec., Abstract).
1 Appellants name Google Inc. as the real party in interest (App. Br. 1 ).
Appeal2018-000042
Application 14/034,059
Claim 1 is illustrative:
1. A method of sharing one or more speech recognition
program profiles for applications, the method comprising:
receiving, at a sharing interface, a speech recognition
program profile for an application from a first computing
device, wherein the speech recognition program profile for the
application further comprises a grammar that is indicative of
one or more speech commands executable by the application,
one or more application actions associated with speech
commands, and identification data indicating an application for
which the grammar of the speech recognition program profile is
executable;
receiving, from a requesting speech recognition software
in a second computing device, a request for information
describing one or more speech recognition program profiles for
one or more applications;
providing from the sharing interface to the requesting
speech recognition software in the second computing device
information describing one or more speech recognition program
profiles that are accessible via the sharing interface;
based on the information describing the one or more
speech recognition program profiles, receiving a selection of
one or more of the speech recognition program profiles that are
accessible via the sharing interface for download into the
requesting speech recognition software in the second computing
device; and
providing, from the sharing interface to the requesting
speech recognition software in the second computing device,
the selected one or more speech recognition program profiles.
Appellants appeal the following rejection:
Claims 1, 6-12, and 15-20 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Mallett (US 8,214,208 B2, July 3, 2012).
We review the appealed rejection for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
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Application 14/034,059
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
Rejection under§ 102(e)
Issue: Did the Examiner err in finding that Mallett discloses
"identification data indicating an application for which the grammar of the
speech recognition program profile is executable," as set forth in claim 1?
The Examiner finds that in Mallett "[b ]ecause each speech recognition
system device is configured to use only one type of application configured to
utilize voice profiles, it follows that if a voice profile is transferred from one
speech recognition system device to another ... any suggestion of
compatibility between a grammar/voice profile and application would be
'indicative of' association with that application" (Ans. 11) ( citations
omitted). Although not expressly stated, it appears that the Examiner is
relying on "inherency" to illustrate that Mallet discloses identification data
indicating an application, given that a specific cite to Mallett showing the
same is missing. Appellants share this interpretation.
For example, Appellants contend that "Mallett does not describe that
the voice profiles include any 'identification data indicating an
application for which the grammar of the speech recognition program
profile is executable"' (App. Br. 10; see also Reply Br. 1-2). Appellants
further contend that "[ t ]he Examiner relied on an ability to transfer the voice
profiles between applications in Mallett as allegedly conferring that the
voice profiles inherently indicate the claimed information" (Reply Br. 2), but
"the voice profiles in Mallett do not 'necessarily' indicate 'identification
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Appeal2018-000042
Application 14/034,059
data indicating an application for which the grammar of the speech
recognition program profile is executable"' (id.). We agree with Appellants.
As noted supra, the Examiner appears to be relying on "inherency" to
show that Mallett discloses the aforementioned argued limitation. However,
regarding the Examiner's inherency conclusion, we note that "[i]t is well
settled that a prior art reference may anticipate when the claim limitations
not expressly found in that reference are nonetheless inherent in it. 'Under
the principles of inherency, if the prior art necessarily functions in
accordance with, or includes, the claimed limitations, it anticipates."' In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations
omitted).
"Inherency, 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." In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) ( citations omitted). Here, we agree with Appellants that "the
voice profiles in Mallett can be transferred between devices as a user sees
fit" (Reply Br. 2), although not necessarily because of identification data
indicating an application, as set forth claim 1. As correctly pointed out by
Appellants (see id.), when relying upon a theory of inherency, the Examiner
must provide a basis in fact and/or technical reasoning to reasonably support
the Examiner's determination that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior art. Ex parte Levy,
17 USPQ2d 1461, 1463---64 (BP AI 1990). Here, we find that the Examiner
has not sufficiently shown that Mallett is necessarily using identification
data indicating an application in order to ensure compatibility between a
profile and an application.
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Application 14/034,059
Thus, we disagree with the Examiner's finding that Mallett discloses
the aforementioned argued limitation, which is recited in each of the
independent claims. Since we agree with at least one of the arguments
advanced by Appellants, we need not reach the merits of Appellants' other
arguments. Accordingly, we will not sustain the Examiner's anticipation
rejection of claims 1, 6-12, and 15-20.
DECISI0N2
The decision of the Examiner to reject claims 1, 6-12, and 15-20 is
reversed.
REVERSED
2 In the event of further prosecution, we leave it to the Examiner to consider
if the computer readable memory claim, claim 12, should also be rejected
under 35 U.S.C. § 101. The ordinary and customary meaning of "computer
readable memory" to a person of ordinary skill in the art is broad enough to
encompass both non-transitory and transitory media (see Spec. ,r 45).
Signals are not patentable eligible subject matter under § 101. In re Nuijten,
500 F.3d 1346, 1357 (Fed. Cir. 2007). See also MPEP § 2106(!) (8th ed.
Rev. 9 Aug. 2012) and Ex parte Mewherter, 107 USPQ2d 1857 (PTAB
2013) (precedential).
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