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Applicant Loses Claims for Voice- Activated Hypermedia System

August 09, 2002

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Last Month at the Federal Circuit - September 2002

Judges: Dyk (author), Bryson, and Gajarsa

In In Re Thrift, No. 01-1445 (Fed. Cir. Aug. 9, 2002), the Federal Circuit affirmed in-part, vacated in-part, and remanded the Board’s decision affirming an Examiner’s rejection of claims for obviousness under 35 U.S.C. § 103(a).

Philip Thrift and Charles Hemphill filed U.S. Patent Application No. 08/419,229 (“the ‘229 application”) entitled “Voice Activated HyperMedia Systems Using Grammatical Metadata” on April 10, 1995. The most pertinent claims to this decision were independent claims 1, 11, and 14. Claim 1 is directed to a voice-activated hypermedia system using grammatical metadata. Claims 11 and 14 add to claim 1 the ability to create a “grammar.”

In the first Office Action, the Examiner rejected all the pending claims under 35 U.S.C. § 103(a) as being unpatentable over Stefanopoulos et al. (U.S. Patent No. 5,333,237) in view of Chris Schmandt et al., Augmenting a Window System with Speech Input, Computer Magazine, Aug. 1990, at 50 (“Schmandt”). With regard to dependent claims 11 and 14, the Examiner stated that although Stefanopoulos et al. and Schmandt do not disclose the grammar-creation capability of claims 11 and 14, the use of grammar is old and well known in the art.

In response to the Office Action, the Applicants amended claims 1 and 11 and presented arguments in an attempt to overcome the rejection. The Examiner then issued a final Office Action maintaining his rejection of the claims of the ‘229 application as obvious over Stefanopoulos et al. in view of Schmandt.

The Applicants then appealed to the Board, which affirmed the Examiner’s rejection. Although the Board acknowledged that the applied references do not explicitly disclose several of the various features of claims 11 and 14, it sustained the rejection of these claims.

Applicants appealed to the Federal Circuit on two grounds: (1) that the record does not support the Board’s determination that the Examiner made a prima facie case of obviousness of claim 1; and (2) that the Board failed to provide evidence of the presence of key limitations of claims 11 and 14 in the prior art.

With regard to claim 1, the Applicants argued that the phrase “speech user agent” had a specific meaning (i.e., an agent that dynamically creates the vocabulary, grammar, and action that are possible for the user to use in a given situation) and none of the cited prior art disclosed this element. The Federal Circuit, however, interpreted the phrase according to
its plain meaning (i.e., an interface that allows the user to interact with the system by speaking). Although the Federal Circuit recognized that an applicant may be his own lexicographer, it found that nothing in the specification defined the phrase “speech user agent” differently from its ordinary meaning. The Federal Circuit then found that given its ordinary meaning, the cited references clearly disclosed all the elements of claim 1.

The Applicants further argued that the Federal Circuit should reverse the obviousness rejection because there is no suggestion or motivation to combine the cited references. The Federal Circuit, however, found that the Board clearly identified a motivation to combine the teachings that were present in the text of each reference.

With regard to claims 11 and 14, the Federal Circuit found that the Board’s rejection was inadequate. In particular, the Board sustained the Examiner’s conclusion of obviousness based on his finding that the use of grammar is old and well known in the art. The Federal Circuit, although recognizing that this statement is likely true, found that the cited references failed to address the grammarcreation capability of claims 11 and 14. In particular, the Federal Circuit found that although the Examiner’s statement generally addresses the use of grammar, it does not discuss the unique limitations of claims 11 and 14.

Therefore, because the Board did not hold that the arguments were untimely and reached the merits of claims 11 and 14 but failed to provide an adequate basis for rejecting this claim, the Federal Circuit vacated the Board’s rejection of claims 11 and 14.