In re Thrift

• Decision Date: 09 August 2002
• Docket Number: No. 01-1445.,01-1445.
• Citation: 298 F.3d 1357
• Parties: In re Philip R. THRIFT and Charles T. Hemphill.
• Court: U.S. Court of Appeals — Federal Circuit

298 F.3d 1357

In re Philip R. THRIFT and Charles T. Hemphill.

No. 01-1445.

United States Court of Appeals, Federal Circuit.

August 9, 2002.

COPYRIGHT MATERIAL OMITTED

Ronald O. Neerings, Texas Instruments Incorporated, of Dallas, Texas, argued for appellants. Of counsel on the brief was Jay M. Cantor, Baker & Botts L.L.P., of Washington, DC, Of counsel was Michael K. Skrehot, Texas Instruments Incorporated, of Dallas, TX.

Joseph G. Piccolo, Associate Solicitor, United States Patent and Trademark Office, of Arlington, Virginia, argued for the Director of the United States Patent and Trademark Office. With him on the brief were John M. Whealan, Solicitor, and Cynthia C. Lynch, Associate Solicitor.

Before BRYSON, GAJARSA, and DYK, Circuit Judges.

DYK, Circuit Judge.

Philip R. Thrift and Charles T. Hemphill appeal from the decision of the Board of Patent Appeals and Interferences ("Board") affirming the examiner's rejection of claims 1-19 for obviousness under 35 U.S.C. § 103. Ex parte Thrift, No.1998-1109 (Bd. Pat.App. & Int. Feb. 28, 2001) ("Decision on Appeal"); Ex parte Thrift, No.1998-1109 (Bd. Pat.App. & Int. Apr. 24, 2001) ("Decision on Request for Rehearing"). We affirm the Board's decision with respect to claims 1-10, but vacate the Board's decision with respect to claims 11-19, and remand for further proceedings with respect to these claims.

BACKGROUND

On April 10, 1995, Thrift and Hemphill filed U.S. Patent Application No. 08/419,-229 (the "'229 application") entitled "Voice Activated HyperMedia Systems Using Grammatical Metadata." On June 6, 1995, Thrift and Hemphill assigned their entire rights in the invention described in the '229 application to Texas Instruments, Inc. ("TI"), making TI the real party in interest in this proceeding.

The parties focus on the three independent claims as amended: claims 1, 11, and 14. Appellants conceded before the Board that dependent claims 2-4 stand or fall with claim 1. Appellants' Br. to Board at 3. Moreover, claims 5-10 are ultimately dependent on claim 1; claims 12 and 13 are dependent on claim 11; and claims 15-19 are ultimately dependent on claim 14. Although appellants urge that the examiner rejected claims 5-10, 12, 13, and 15-19 without providing any evidence of the additional features of these claims, appellants fail to identify the specific errors in the Board's decision or even the features of these claims that would allow them to overcome an obviousness rejection. Such a conclusory argument by appellants is not sufficient to raise separate issues on appeal with respect to the dependent claims. Thus, all of the dependent claims must stand or fall with their respective independent claims 1, 11, and 14.

The independent claims provide as follows:

1. A voice activated Hypermedia system using grammatical metadata, said system comprising:

a. a speech user agent;

b. a network browsing module; and

c. an information resource located on a computer network wherein said speech user agent facilitates voice activation of said network browsing module to access said information resource.

11. A voice activated Hypermedia system using grammatical metadata, said system comprising:

a. a speech user agent;

b. a network browsing module;

c. an information resource located on a computer network wherein said speech user agent facilitates voice activation of said network browsing module to access said information resource;

d. a means for extracting a grammar from a hypermedia source on said information resource for future reference to said source;

e. a means for modifying said grammar;

f. a means for automatically producing an intelligent grammar from said information resource; and

g. a means for processing said grammar to produce a reference to said hypermedia source.

14. A voice activated Hypermedia system using grammatical metadata, said system comprising:

a. a speech user agent;

b. a browsing module;

c. an information resource; and

d. a means for producing a grammar from textual representation of links to said information resource.

'229 application at 13-14; Jan. 14, 1997 Amendment at 1-3.

The invention recited in claim 1 comprises a speech interface (i.e., the speech user agent) that allows users to access information located on a computer network using a network browsing module, a software tool used to locate database sites on a network. Using the speech interface, an individual can use voice commands to activate the browser and access information located on the computer network, such as a desired Hypertext Markup Language ("HTML") page. The user can access various links on a given HTML page by speaking aloud the link names.

Claims 11 and 14 add the ability to create a "grammar." A grammar is an established set of standard query words. '229 application at 11. According to the '229 application, each user can construct a grammar and associate it with a Uniform Resource Location ("URL"), creating a "Speakable Hotlist." Id. at 4. A "Speakable Hotlist" allows the user to access a number of different URLs by just saying a phrase. For example, saying the phrase "how does the weather look today" could immediately link the user to the URL . Id. at 5.

Claim 11 differs from claim 1 by adding a number of means limitations providing the functions of extracting, modifying, dynamically producing, and processing the grammar. Claim 14 differs from claim 1 by reciting "a means for producing a grammar from textual representation of links to [the] information resource." '229 application at 14.

On August 7, 1996, the examiner issued a first Office Action, which rejected claims 1-19 under "35 U.S.C. § 103 as being unpatentable over Stefanopoulos et al. [U.S. Patent No. 5,333,237] and in view of Schmandt [Chris Schmandt et al., Augmenting a Window System with Speech Input, Computer Magazine, Aug. 1990, at 50 ("Schmandt")]...." Aug. 7, 1996 Office Action at 3.

These prior art references relate most directly to claim 1. U.S. Patent No. 5,333,237 (the "'237 patent") issued to Stefanopoulos, et al. ("Stefanopoulos") is entitled "Hypermedia Structured Knowledge Base System." Stefanopoulos is directed to a hypermedia-structured expert system (i.e., a browser software system) that searches and accesses archived electronic documents. '237 patent, col. 1, ll. 11-15. The disclosed invention "incorporates the ability to have both an electronic-based document and an expert system [i.e., a browser software system] coexist within a single computer program." Id. at col. 2, ll. 52-54. The browser software system and the electronic documents are interlinked so that the user can move easily between them. Id. at col. 2, ll. 55-57. Stefanopoulos discloses the processing of user action based on embedded intelligence and returning results to the user. Id. at col. 6, ll. 52-54. Stefanopoulos also discloses an advice (or help) scheme that provides troubleshooting advice to the user, id. at col. 6, ll. 55-68, in addition to disclosing the textual representation of hypertext links. Id. at col. 6, ll. 32-42, col. 7, ll. 18-38.

Another pertinent prior art reference is an article entitled "Augmenting a Window System with Speech Input," authored by Chris Schmandt, Mark S. Ackerman, and Debby Hindus. The Schmandt reference is directed to controlling a windows system by speech input. Schmandt at 50. Speaking a window's name will move the window to the front of the screen and move the cursor into that window. Id. Schmandt describes how speech can be used to navigate in a windows system so that speech actually "assume[s] some of the functions currently assigned to the mouse." Id. Schmandt describes two speech interfaces: "Xspeak" and "Xspeak II." Id. at 52, 54. Xspeak rearranges windows by "associat[ing] windows with voice templates, [i.e.,] words trained and stored in the recognizer and constituting its vocabulary." Id. at 52. Xspeak II improves on the speech interface of the original Xspeak system by making two changes: (1) "improv[ing] recognition rates ... [by] add[ing] the ability to create subtemplates;" and (2) "includ[ing] a specialized language, G-XL, to facilitate general-purpose handling of the window[s] system." Id. at 54. In other words, "Xspeak II allows greater flexibility in the speech interface." Id.

On August 7, 1996, the examiner concluded that claim 1 was obvious because Stefanopoulos taught a "hypermedia structured knowledge base system" comprising a browsing module and an information resource, and Schmandt taught a speech interface that served as a navigational tool. Aug. 7, 1996 Office Action at 3. The examiner's motivation to combine the two references was that the speech interface to the Web "allows easy access to information on the Web by reducing manual intervention [i.e., the use of keyboard], and ... is user friendly." Id.

Although the examiner did not find that Stefanopoulos and Schmandt disclosed the grammar-creation capability added in claims 11 and 14, the examiner also rejected both of these claims, noting that "[t]he use of grammar is old and well known in the art of speech recognition as a means of optimization which is highly desirable." Id. at 5. The examiner concluded that the additional features specified in the dependent claims were also unpatentable over the cited references, and ultimately rejected claims 1-19 under 35 U.S.C. § 103.

On January 14, 1997, appellants amended claims 1-5, 7-9, and 11 to attempt to overcome the obviousness rejections. Most pertinently, the "information resource" of claim 1 was further defined as "located on a computer network wherein said speech user agent facilitates voice activation of said network browsing module to access said information resource." Jan. 14, 1997 Amendment at 2. This limitation was also added to claim 11 in addition to amending element (d) of claim 11 to recite "a means for extracting a grammar from a hypermedia source on said information resource for future reference to said source." Id. at 3 (...