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Motivation to Combine References Leaves Claims Unpatentable

January 24, 2001

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Last Month at the Federal Circuit - February 2001

Judges: Michel (author), Newman, and Gajarsa

In In re Kurzweil, No. 00-1258 (Fed. Cir. Jan. 24, 2001) (nonprecedential decision), the Federal Circuit affirmed a decision of the Board rejecting the appealed claims as being obvious under 35 U.S.C. § 103, given the motivation to combine the references found within the references themselves.

Raymond C. Kurzweil and John Armstrong III (collectively “Kurzweil”) filed a patent application for a dictation device. Kurzweil argued that patentability turned on the dictation device’s ability to correct misrecognized speech when the user dictates two commands, a technique Kurzweil referred to as a “double command arrangement.” The technique allows the user to speak a first command that informs the system it has misrecognized a previously spoken word. This command causes the system to display a list of alternative words based on the root form of the misrecognized word. The user then speaks a second command to select the desired word from the displayed list.

For the section 103 rejection, the Examiner combined U.S. Patent No. 5,231,670 (“Goldhor”) with U.S. Patent No. 4,868,750 (“Kucera”). Goldhor disclosed a dictation device for converting speech into text. When the user speaks into a microphone, the device converts the speech into text that is instantly displayed to the user. An important aspect of Goldhor’s invention is the user’s control of the device through spoken commands.

Goldhor’s dictation device is capable of correcting misrecognitions, but Goldhor does not disclose the use of the misrecognized word’s root form as a basis for determining what other word may be intended by the user, as claimed by Kurzweil.

Kucera discloses a device that uses a rootform analysis for correcting spelling and grammar errors in digitally encoded text. However, Kucera is not a dictation device; rather, it is a computer device for manipulating textual data to correct errors, or an improved spell checker. Kucera discloses the isolation and use of a misspelled word’s root in order to identify other candidates for the desired word. For example, when confronted with the text “walke,” Kucera’s device would drop the “e” and find “walk” in its data base of known word roots. The device would then choose alternative word-match candidates from its dictionary of known words containing the root “walk,” such as “walks,” “walking,” or “walker.”

The Board stated that Goldhor and Kucera are both directed to an apparatus for identifying erroneous text and that it was not material from an artisan’s perspective whether the erroneous text resulted from erroneous textual input or improperly decoded speech input. The Board agreed with the Examiner that one would have been motivated to search for alternative candidates in Goldhor using the candidates technique suggested by Kucera.

On appeal, Kurzweil asserted that the Board employed hindsight in combining selected features from Goldhor and Kucera. Kurzweil argued that neither Goldhor nor Kucera teach the double- command arrangement for correcting dictation as recited in Kurzweil’s claims, and that only through hindsight would a person of ordinary skill in the art be led to make the claimed invention based on the art of record.

The Court noted that Kurzweil had made no clear argument based on the double-command arrangement before either the Examiner or the Board, and thus it was hardly surprising that neither the Examiner’s rejection nor the Board’s decision addressed such an argument. The Court considered the argument, however, and concluded it was not persuasive.

The Court affirmed the Board’s finding that because both Goldhor and Kucera are directed to devices for identifying and correcting erroneous text, there was substantial evidence to  support the Board’s finding that one of ordinary skill in the art would be motivated to combine Goldhor and Kucera.

The Court pointed to Kucera’s statement that the claimed root-based text correction system “includes a spelling checker of the type wherein each erroneously-spelled word is identified and a list of possibly intended words is displayed.” Kucera, col. 3, ll. 15-19. To this the Court coupled Goldhor’s statement that misrecognitions, i.e., misspellings, are a problem with prior art dictation systems, and that one of the goals of its system is to provide for the correction of misrecognitions identified to the system by the user. Goldhor, col. 2, ll. 9-26. When combined, the Court found the statements provided substantial evidentiary support for the Board’s finding of fact that one of ordinary skill in the art would have been motivated to combine Kucera’s spell checker based upon root matching with Goldhor’s dictation system in order to provide improved correction of misrecognized words, one of the goals stated in Goldhor. This constituted clear motivation to improve the word-match, error-correction feature of the dictation system disclosed in Goldhor by adding the more advanced root-form technique taught in Kucera.

The Court went on to say that the use of two commands is simply unavoidable when implementing Kurzweil’s claimed combination of Kucera’s root-matching process and the dictation system disclosed in Goldhor. Goldhor teaches a “TRY AGAIN” command that a user utters in order to cause Goldhor’s system to reattempt a word match in the event of an initial mismatch. The selection of the correct word, of course, requires a second voice command. This constitutes a “double command arrangement” with “TRY AGAIN” constituting the first command and selection of the desired word from the resulting list constituting the second command.