UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`Petitioner,
`
`v.
`
`WEST VIEW RESEARCH, LLC,
`Patent Owner.
`___________________
`
`Case IPR2016-00125
`Patent 8,290,778
`___________________
`
`PATENT OWNER’S MOTION TO AMEND UNDER 37 C.F.R. § 42.121
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`Petitioner,
`
`v.
`
`WEST VIEW RESEARCH, LLC,
`Patent Owner.
`___________________
`
`Case IPR2016-00125
`Patent 8,290,778
`___________________
`
`PATENT OWNER’S MOTION TO AMEND UNDER 37 C.F.R. § 42.121
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`Case IPR2016-00125
`Patent 8,290,778
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`TABLE OF CONTENTS
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`Introduction ........................................................................................................ 1
`I.
`II. Proposed Claim Construction ............................................................................ 1
`III. Support for Claims ............................................................................................. 2
`IV. Scope of Substitute Claims ................................................................................ 8
`V. Allowability of Proposed Substitute Claims Over Prior Art ............................. 8
`A. The Claim Amendments Overcome
`the Asserted Grounds of
`Unpatentability .............................................................................................. 8
`B. The Substitute Claims Are Patentable Over Relevant Prior Art Known to
`Patent Owner ............................................................................................... 15
`VI. Conclusion and Relief Requested .................................................................... 25
`APPENDIX .............................................................................................................. 26
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`EXHIBIT LIST
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`Exhibit 2001
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`Exhibit 2002
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`Original Specification, Claims, and Figures of U.S. Application
`Serial No. 13/404,853, now U.S. Patent No. 8,290,778 to
`Gazdzinski
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`Original Specification, Claims, and Figures of U.S. Application
`Serial No. 09/330,101, now U.S. Patent No. 6,615,175 to
`Gazdzinski
`
`Exhibit 2003
`
`U.S. Patent No. 6,615,175 to Gazdzinski
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`Exhibit 2004
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`U.S. Patent No. 6,148,261 to Obradovich et al.
`
`Exhibit 2005
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`U.S. Patent No. 6,252,544 to Hoffberg
`
`Exhibit 2006
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`U.S. Patent No. 5,682,525 to Bouve et al.
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`Exhibit 2007
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`U.S. Patent No. 6,944,533 to Kozak et al.
`
`Exhibit 2008
`
`U.S. Patent No. 5,948,040 to DeLorme et al.
`
`Exhibit 2009
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`MapQuest Launches Revolutionary GeoCentric Advertising
`Program Enabling Businesses to Provide Geographically
`Sensitive Advertisements as Users Click on Destinations and
`Content (1996)
`
`Exhibit 2010
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`U.S. Patent No. 6,044,376 to Kurtzman, II
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`Exhibit 2011
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`Argument of a Function, Wikipedia (2015)
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`Exhibit 2012
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`U.S. Patent No. 6,230,132 to Class et al.
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`Exhibit 2013
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`U.S. Patent No. 6,707,421 to Drury et al.
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`CASES
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`TABLE OF AUTHORITIES
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`Toyota Motor Corporation v. American Vehicular Sciences LLC,
`IPR2013-00419, Paper 32 (March 7, 2014) .................................................... 1
`
`
`In re Rasmussen,
`650 F.2d 1212, 211 USPQ 323 (CCPA 1981) ................................................ 7
`
`
`Phillips v. AWH Corp., 415 F. 3d 1303 (Fed. Cir. 2005) .......................................... 7
`
`Van Veen v. United States, 386 F.2d 462 (Ct. Cl. 1967) ......................................... 15
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`
`STATUTES
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`35 U.S.C. § 112, ¶ 6 ................................................................................................... 5
`
`35 U.S.C. § 316 .......................................................................................................... 1
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`
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`RULES AND REGULATIONS
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`37 C.F.R. § 42.100 ..................................................................................................... 1
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`37 C.F.R. § 42.121 ............................................................................................. 1, 6, 8
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`MPEP 2164 ................................................................................................................ 6
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`I.
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`Introduction
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`Patent Owner moves to cancel Claims 1, 3, 5, 8, 9, 22, 27, 28, and 30, and to
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`substitute Claims 31, 32, 33, 34, 35, 36, 38, 39, and 40 in their place, respectively,
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`per the Appendix to this Motion to Amend. 35 U.S.C. § 316; 37 C.F.R. § 42.121.
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`Patent Owner also proposes the addition of new Claim 37 (no existing
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`counterpart), per previous PTAB guidance: “If the additional proposed substitute
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`claim is patentably distinct from the first substitute claim, given the first substitute
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`claim as prior art, that likely would be sufficient justification.” Toyota Motor
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`Corporation v. American Vehicular Sciences LLC, IPR2013-00419, Paper 32 at 3
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`(March 7, 2014). Patent Owner submits that new Claim 37 is patentably distinct
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`(discussed infra), and is properly included with the other proposed claims.
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`
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`Proposed substitute Claim 35 is included solely for consistency (i.e., since
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`extant Claim 9 depends on Claim 8, which is the subject of substitute Claim 34).
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`Proposed Claim Construction
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`II.
`Patent Owner provides proposed claim constructions under the standard
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`applicable for Inter Partes Reviews for the following terms used in the proposed
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`substitute claims. Patent Owner’s construction should not be deemed limiting
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`outside of the context of Inter Partes Review. Specifically:
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`1. “compound search term” (Claim 31) - proposed to be construed as “a
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`search argument composed of two or more pieces of information” (see, e.g., Ex.
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`2001 at 13:7-19); and
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`2. “geographically proximate to the computerized apparatus” (Claim 40) and
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`“geographically relevant to the computerized apparatus” (Claim 34) - proposed to
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`be construed as “within a building or its immediate surroundings” (see, e.g., Ex.
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`2001 at 14:6-8, 7:8-9 (defining “building”)).
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`III. Support1 for Claims
`Each of the proposed substitute and new claims are supported by the original
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`disclosure of App. No. 13/404,853 (the “’853 Application”) (Ex. 2001), now U.S.
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`Patent No. 8,290,778 (Ex. 1001), as well as the original disclosure of the priority
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`application (App. No. 09/330,101 filed June 10, 1999 (the “’101 Application”)
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`(Ex. 2002), now U.S. Patent No. 6,615,175 (Ex. 2003)), for which the written
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`description is identical with respect to all citations provided herein.
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`Support for the language of the original Claims 1, 3, 5, 8-9, 22, 27-28, and
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`30 can be found in, for example: FIG. 1 and supporting discussion (the
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`information system components generally, including speech recognition and
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` Citation is to page and line numbers in the original disclosure of App. No.
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`13/404,853 (Ex. 2001), now U.S. Patent No. 8,290,778 (Ex. 1001).
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`synthesis, amplifier, and speakers); FIG. 3 and supporting discussion (wireless and
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`network interfaces, remote server, and related components); FIG. 5 and supporting
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`discussion (exemplary graphical display mechanisms, arrows, etc.); FIG. 6a
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`(various topical areas of interest); FIG. 7 and supporting discussion (exemplary
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`portable electronic device, and transferring data such as maps, including that
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`personalized for the user); 1:23-28 (directions to various locations or points of
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`interest, directions, traffic conditions, etc.); 11:18-14:11 (exemplary speech-based
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`direction system, iteration, matching entries, etc.).
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`Substitute (and new) Claims 31-40 add only additional features. Support for
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`the additional features of substitute Claim 31 can be found in, for example: 9:20-
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`10:15 (capacitive touch devices including touch screen input and display); 11:18-
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`14:11 (exemplary speech-based direction system, compression and digitalization,
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`iteration, matching entries, subsequent user query and appending speech thereof to
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`the initial query speech, etc.); 12:3-13:19 (speech input comprising only part of a
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`name, access of a network server based on the speech input, and a graphics co-
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`processor initiating display of data of a directory file); and 24:27-25:16 (displaying
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`video feed covering the area around the selected, e.g., floor).
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`Support for the additional features of substitute Claims 32-33 can be found
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`in, for example, FIGS. 1 and 18a-d and their supporting discussion (adaptive
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`advertising sub-system, and displaying of advertising using a contextual
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`relationship between industry or business type and a theme of displayed
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`advertising) and 23:1-18 (digitally compressed video data).
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`Support for the additional features of substitute Claim 34 can be found in,
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`for example: 11:18-14:8 (exemplary matching entries, retrieving directory files,
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`local graphical imagery of establishments independently accessible without
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`reference to the location, etc.).
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`Support for the additional features of substitute Claim 36 and proposed new
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`Claim 37 can be found in, for example: 14:14-15:6 (selecting a generated soft
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`function key or SFK); 28:30-32:18 (“prompt” embodiment of the adaptive
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`advertising subsystem); and FIG. 18d and supporting discussion (context
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`determined via the user’s selection of the SFK, but independent of the accessed
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`information, and selecting content with a logical relationship to the context).
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`Support for the additional features of substitute Claim 38 can be found, for
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`example, at: 10:13-15 (capacitive touch screen); and 24:1-25:16 (displaying image
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`of a location correlated with a coordinate and displaying video feed covering the
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`area around the selected, e.g., floor).
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`Support for the additional features of substitute Claims 39 and 40 can be
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`found in, for example: 8:25-9:5 (voice data compression); 10:13-15 (capacitive
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`touch screen); 12:14-13:26 (compressing speech input and retrieving directory
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`files); 12:3-13:19 (speech input comprising only part of a name, access of a
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`network server based on the speech input, and a graphics co-processor initiating
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`display of data of a directory file); and 28:30-32:18 (the “prompt mode”
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`embodiment of the adaptive advertising subsystem, matching entries, etc.).
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`(i) “Means For” - Proposed substitute Claim 40 includes several new terms
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`which may be construed under the provisions of 35 U.S.C. §112 ¶6. As such,
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`Patent Owner provides the following citations for corresponding structure:
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`1. “means for wireless communication” – see, e.g., FIG. 3 and supporting
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`discussion at 10:27-11:9 (describing wireless interface 310, which in one
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`embodiment is an IEEE-802.11 compliant interface);
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`2. “means for data and graphics processing” – see e.g., FIG. 1 and
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`supporting discussion (specifically at least the CPU 106 and the graphics co-
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`processor 109);
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`3. “means for receiving a user touch input, the means for receiving
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`comprising an integrated means for display” – see e.g., FIG. 1 and supporting
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`discussion at e.g., 9:20-10:15 (illustrating display 113 and describing capacitive
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`touch devices including touch screen input and integral display); and
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`4. “means for speech processing” – see e.g., FIG. 1 and supporting
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`discussion at, e.g., 8:16-9:5 (specifically at least the DSP 125, RAM 127, and the
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`ADC 141, and examples of supporting processing algorithm).
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` (ii) “Secondary Content” - Patent Owner further notes that its use of the
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`term “secondary content” in proposed Claims 36-37 and 39-40: (i) does not enlarge
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`the scope of any claims per 37 C.F.R. § 42.121(a)(2)(ii), as all such features are in
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`addition to those already present in the respective claim as originally issued; and
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`(ii) is fully supported under both enablement and written description.
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`As to the latter, per MPEP 2164.01, the test for enablement is whether one of
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`ordinary skill, given the disclosure, could make/use the claimed invention without
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`“undue experimentation”. Further, per MPEP 2164 (regarding enablement): “For a
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`claimed genus, representative examples together with a statement applicable to the
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`genus as a whole will ordinarily be sufficient...” (emphasis added). Accordingly,
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`an applicant can claim a genus so long as there is specific support by way of
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`representative examples, as well as a statement applicable to the genus as a whole.
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`Per the ’778 specification: “[u]sing this advertising sub-system, the
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`aforementioned elevator display devices 113 and information and control system
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`100 may be programmed to provide adaptive advertising or information.” Ex.
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`2001 at 28:29-29:2 (emphasis added). Hence, the requisite “statement applicable to
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`the genus as a whole”, and specific representative examples (see e.g., Ex. 2001 at
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`34:4-10 for advertising), have each been provided in the specification at the
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`priority date. See also, e.g., MPEP 2163 (regarding written description), and MPEP
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`2163.05 (situations where one species adequately supports a genus (citing In re
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`Rasmussen, 650 F.2d 1212, 1214, 211 USPQ 323, 326-27 (CCPA 1981)).
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`Further, reading the proposed claims in light of the specification and file
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`histories, clearly indicates that the claims and specification are not limited to
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`advertising. See Phillips v. AWH Corp., 415 F. 3d 1303, 1323 (Fed. Cir. 2005).
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`The original specification and claims also support each of the original and
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`proposed claim limitations being used together. See e.g., FIG. 1 and supporting
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`description (information system with speech recognition module, PCI slots, touch
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`sensitive display, and other components for operation of directory subsystem); FIG.
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`4 (exemplary embodiment of a “dialogue” or search algorithm used on the
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`directory system of FIG. 1); FIG. 3 (exemplary network architecture and server
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`apparatus; and FIGS. 18a-19 (exemplary algorithms, logic, and features of
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`secondary content (e.g., advertising) selection and display subsystem); 6:3-7:18
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`(“Brief Description of the Drawings”, wherein FIGS. 4, 5, 8-10, 11, 12, 13, 14a-
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`14b, 15, 16, 17, 18a-18d, and 19 are described as “subsystems” of the
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`computerized apparatus); Claims 1-12, 13-22, 30-35, and 36-40 (identical to
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`Claims 1-12, 13-22, 30-35, and 36-40 in the original priority document (Ex. 2002),
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`which explicitly demonstrate that at time of original filing, the inventor
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`contemplated use of the various now-claimed features and subsystems together in
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`various combinations). References to the various “subsystems” are replete as well
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`(see, e.g., section headings on pages 11, 17, 22, 25, and 28).
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`IV. Scope of Substitute Claims
`The proposed substitute claims retain all of the features of the corresponding
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`original claims, and only add additional features, and therefore comply with 37 C.F.R.
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`§ 42.121(2)(ii). Furthermore, all claims are patentably distinct from the prior art, and
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`the dependent claims are patentably distinct from their respective base claims per
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`section V below. Therefore the amendments comply with 37 C.F.R. § 42.121(2)(i).
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`V. Allowability of Proposed Substitute Claims Over Prior Art
`A. The Claim Amendments Overcome the Asserted Grounds of
`Unpatentability
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`The alleged combination of Ito, Lind, Fujiwara, and Walters fails to render
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`obvious substitute Claims 31-36 and 38-40, and new Claim 37. Ito discloses an
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`automobile navigation system that includes a vehicle navigation apparatus that is
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`mounted in a vehicle that wirelessly connects to a navigation base apparatus. Ex.
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`1003 at 8:11-16, 10:51-57, FIG. 1. Lind discloses a Network Vehicle that displays
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`navigation information on a touch screen LCD display. Ex. 1004 at I21-2, I21-3.
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`Fujiwara discloses a navigation system that provides a course guidance to a
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`predetermined place by calculating a car's position and displaying the car's position
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`with a map therearound on a display. Ex 1005 at 1:5-12, 4:14-22, FIG. 1. Walters
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`discloses a navigation device, which mounts on the dash of a vehicle and displays
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`thoroughfares and their corresponding names along with an icon indicative of the
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`location of the vehicle. Ex. 1006 at 4:38-62, FIGS. 1-3, Abstract. Specifically:
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`Substitute Claims 31, 39 and 40 - The alleged combination (Ito and/or Lind)
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`fails to teach or suggest receiving digitized speech input consisting (substitute
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`Claim 31) or comprising (substitute Claim 40) of only a name or a part of a name
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`of an organization or entity which a user desires to locate. Petitioner cites Ito and
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`Lind (see, e.g., Pet. at 15); however, even assuming arguendo that the foregoing
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`statements by Petitioner are correct, such disclosures would be insufficient to teach
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`or suggest the respective features of Claims 31 and 40 herein.
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`Patent Owner notes that the respective features of Claims 31 and 40 relate to
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`an exemplary embodiment of the ‘778 Patent which provides a specific user
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`interface and voice protocol algorithm (see e.g., FIG. 4) which obviates the user
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`from having to have any prior knowledge of how to operate the system (e.g., the
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`user need not have used the system before, since it is completely intuitive how to
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`operate it), and need only know part of a name of the desired entity for which they
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`seek to obtain information. Ex. 1001 at 9:60-10:42 (including Smith example).
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`Patent Owner reads Ito to require the user to have resolved the name of the
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`destination (“This data is used for specifying the position (which is defined by
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`Longitude and Latitude thereof) of the destination on the basis of information such
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`as a telephone number, address, name of the destination and the like.”). Ex. 1003
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`at 9:34-37.
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`Additionally, the foregoing cited portions of Lind relate to travel directions
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`and traffic updates, and no disclosure of use of part of a name of an organization or
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`entity which a user desires to locate is present (as explicitly recited in Claims 31
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`and 40). Thus, neither Ito nor Lind teach or suggest the foregoing feature, and
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`hence do not render obvious Claims 31 and 40.
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`Additionally, the alleged combination fails to teach or suggest: (i) causing
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`compression of the received first digitized speech input using a digital data
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`compression algorithm; and (ii) compressing the subsequent digitized speech input.
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`While Ito discloses compression of recommended route data and return route data
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`(Ex. 1007 at 39:11-16), there is a salient difference between the aforementioned
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`data in Ito and digitized speech (as in Claim 31). At a minimum, one cannot
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`reasonably equate the foregoing data in Ito to the digitized speech input in Claim
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`31; the data in Ito is extracted from the navigation data (which could be speech
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`inputs) stored in the data base (id. at Abstract). Patent Owner does not see where
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`Ito reasonably teaches or suggests compressing the speech inputs (or even
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`navigation data in general).
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`Moreover, Ito in no way teaches or suggest wireless transmission of such
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`compressed speech data (while Ito discussed voice input: (i) there is no discussion
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`of what form any such voice data takes if/when transmitted to the base apparatus
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`150; and (ii) the base apparatus 150 is not disclosed as having any speech data
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`processing capability). Therefore, one cannot reasonably assert that Ito teaches or
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`suggests the foregoing features of Claim 31 relating to compression of digitized
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`speech input. Lind does not remedy the foregoing deficiencies of Ito. Specifically,
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`Lind is silent with regards to compression of digitized speech.
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`Additionally, with respect to Claim 31, the alleged combination fails to teach
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`or suggest (i) subsequent digitized speech comprising additional information not
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`present in the first digitized speech input; (ii) transmission of the (compressed)
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`subsequent digitized speech to the networked server apparatus for logical
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`appending so as to form a compound search term; and (iii) identification of a
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`location based at least in part on the compound term.
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`Patent Owner notes that the foregoing features relate to the ambiguity
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`resolution aspect of an exemplary embodiment of the ’778 Patent shown in FIG. 4;
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`as noted above, Patent Owner interprets Ito to require its user to have already
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`resolved to a unique entity (“destination name” or “facility name”), and hence can
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`be thought to teach away from the Claim 31 (and other) inventions.
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`Ito discloses if a user enters only the first several digits of a telephone area
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`code as the information for the navigation destination, several facilities may match
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`those digits. Ex. 1005 at 16:5-19. A list of matching facilities is “displayed at the
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`vehicle” such that “the user views such facilities to decide whether or not the
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`destination is included in the searched facilities…”; the display prompts the user to
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`respond. Ex. 1005 at 16:5-19; see also id. at 11:27-30; Ex. 1002, ¶ 8.
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`However, neither Ito nor Lind teach or suggest “a subsequent digitized
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`speech input…” and formation of a “compound term” as recited in Claim 31. See,
`
`e.g., Ex. 1001 at 10:48-50 (showing one species of subsequent input described in
`
`the specification (“defining information [appended] to the initial query statement to
`
`form a Boolean search statement”)).
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`Yet additionally, Patent Owner notes that Claims 39 and 40 (and 34) further
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`specify that the matching organizations or entities are selected based on access of a
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`database of organizations comprising entities that are geographically proximate to
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`the computerized apparatus (see proposed definition in Section II above, regarding
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`“within a building or its immediate surroundings).
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` Each of the above-cited references are also silent with respect to the
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`particular features of Claims 38, 39 and 40 relating to “secondary content”.
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`Specifically, Claim 38 recites, in relevant part, the display of advertising selected
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`by one or more remote servers,…comprising imagery of a location correlated with
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`a coordinate on the capacitive touch screen input and display device and selectable
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`thereby, the imagery showing the organization or entity in its actual physical
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`relationship to at least one of the other organizations or entities.
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`Claim 39 recites the contemporaneous display of a received secondary
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`content element…selected by the network server apparatus using one or more
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`words within the first digitized speech input to access a data structure having
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`entries grouped into a plurality of topical groupings based on respective shared
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`topical contexts, and data enabling automated selection of contextually relevant
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`secondary content to the respective shared topical context). Fujiwara, for example,
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`uses geographic location for selection of anything that could be considered
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`“secondary content”. See, e.g., Ex. 1005 at 5:36-6:21.
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`Claim 40 recites secondary content selected by the network server apparatus
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`based at least on (i) identification, via the database, of at least one organization or
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`entity at or proximate to the location; (ii) identification of a business type of the
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`identified at least one organization or entity, and having a topical relationship to
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`the at least one identified business type yet not specific to the at least one
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`organization or entity at or proximate to the location. At best, Fujiwara teaches
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`advertising specific to the “local” entity (“and sale information of a store” (Ex.
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`1005 at 5:53-6:1)), yet no teaching or suggestion of industry/business type
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`determination.
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`Substitute Claims 32, 33, and 36, and New Claim 37 - Each of Claims 32,
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`33, 36 and 37 relate to secondary content. As noted above, each of the cited
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`references (Ito, Lind, Fujiwara, and/or Walters) is silent with respect to the
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`particular features of Claims 39 and 40 relating to secondary content. Claims 32,
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`33, 36 and 37 recite yet other respective particular features relating to secondary
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`content not remotely taught or suggested by the above-listed cited art (e.g.,
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`digitally compressed video data obtained by one or more cameras disposed at a
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`location correlated with a coordinate on the touch screen input and display device
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`and selectable thereby, secondary content which is independent of the information
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`accessed via a generated SFK, etc.). Thus, the alleged combination fails to render
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`obvious substitute/new Claims 32, 33, 36 and 37.
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`Substitute Claim 34 - Proposed Claim 34 states, in relevant part, a database
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`comprising graphic imagery for respective ones of organizations or entities therein,
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`the graphic imagery comprising at least part of the graphical or visual
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`representation and independently accessible without reference to the location.
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`Patent Owner submits that none of the cited art teaches or suggests, inter
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`alia, the foregoing feature of a database of graphic imagery that is independently
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`accessible without reference to the location. As best Patent Owner can determine,
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`all such cited systems that select graphics from a database maintained on a server
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`utilize geographic references to access the imagery (i.e., “geographically locate the
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`destination, and then based on the determined location, access the imagery”). The
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`embodiment described by Claim 34, in contrast, can access imagery based on name
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`association only (e.g., once the user converges on the proper “Smith”, the imagery
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`can be accessed based on an association between that proper Smith and an imagery
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`file, and not dependent on where proper Smith happens to be located).
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`B.
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`The Substitute Claims Are Patentable Over Relevant Prior Art
`Known to Patent Owner
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`Before the ’778 patent, the art described navigational systems and
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`communication devices that can display a map with one or more locations.
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`Conventionally, these systems used GPS data to locate the device, and the lat./lon.
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`coordinates of the desired location, to generate a route from the current location of
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`the device to the desired location. Some references also disclose the use of speech
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`recognition and touch screens. Obradovich, Hoffberg, Bouve, Kozak, Delorme,
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`Class, and Fujiwara are examples of these GPS-based navigational systems and
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`represent the most relevant prior art known to Patent Owner.
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`Notably, the claimed inventions of the substitute claims do not explicitly
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`require GPS receivers, and have greatly improved simplicity of user interface (and
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`supporting logic) so as to enhance intuitive use and rapid convergence on the
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`desired information. See, e.g., Van Veen v. United States, 386 F.2d 462, 465 (Ct.
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`Cl. 1967) (“Experience has shown that some of the simplest advances have been
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`the most nonobvious”). Patent Owner anecdotally submits that only in recent times
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`has the state-of-the-art advanced as to where such simple and intuitive user
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`interfaces were identified and widely implemented in, e.g., smartphones.
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`Substitute Claims 31, 39 and 40 - With respect to Claims 31 and 40, none of
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`the art teaches or suggests a computerized apparatus configured to, inter alia,
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`receive digitized speech input consisting (Claim 31) or comprising (Claim 40) of
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`only a part of a name of an organization or entity which a user desires to locate.
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`See discussion of Ito, Lind, etc. supra. The system of Class is based on proper
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`destination names (e.g., region, city, town, etc.), and not a part of a name of an
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`organization or entity. See, e.g., Ex. 2012 at 5:1-19.
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`Obradovich (Ex. 2004) discloses “[t]he caller requests specific information
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`(location of gas stations, names of restaurants, local banks, etc.) via a voice
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`command (‘Download e.g., Wells Fargo Banks’) or via digital commands using a
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`keypad or other input device...” Ex. 2004 at 2:61-3:4 (emphasis added). As
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`discussed above, the foregoing features respective of substitute Claims 31 and 40
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`are implemented to obviate the user from having to have any prior knowledge of
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`how to operate the system (e.g., the particular “download” command of
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`Obradovich), and need only know a name or part of a name of the desired entity
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`for which they seek to obtain information. Ex. 1001 at 9:60-63.
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`Moreover, with respect to each of Claims 31 and 40, the prior art is silent
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`with respect to the respective features of Claims 31 and 40 relating to providing
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`possible matching organizations or entities identified by the networked server
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`apparatus using the digitized part of a name only. Ito teaches a “base apparatus”,
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`but no use of digitized speech by such apparatus is taught or suggested. Delorme
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`(Ex. 2008) discloses “state-of-the-art text searches and associations and other
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`"fuzzy" database search or data matching technologies”, yet these are not
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`performed by a network server, as would be required by the foregoing features of
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`Claim 31. Rather, Delorme merely discloses “[t]he electronic maps, TRIPS
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`database, and TRIPS software are typically stored on a CDROM and the digital
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`computer incorporates a CDROM drive.” Ex. 2008 at 10:10-18 (emphasis added).
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`Furthermore, the foregoing disclosure appears to teach away from the combination
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`with the other references in which the communication device and the speech
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`recognition technology thereof communicate with a remote server.
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`Further with respect to Claim 31, the art fails to teach or suggest (i) receipt
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`of a subsequent digitized speech input comprising additional information not
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`present in the first digitized speech input; and (ii) transmission of the compressed
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`subsequent digitized speech input via at least the wireless interface to the
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`networked server apparatus for logical appending…so as to form a compound
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`search term. Delorme appears to be the closest known art, as Delorme discloses
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`“[u]ser browsing and computerized searches can also be conducted by the specific
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`NAME and/or SUPPLEMENTAL INFORMATION attributes.” Ex. 2008 at 56:33-
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`36. However, nowhere does Delorme disclose that the “supplemental information
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`attributes” in the foregoing citation thereof are appended to the “specific name” to
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`form a compound term that is used to identify a location.
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`Moreover, with respect to Claim 31, the prior art fails to teach or suggest (i)
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`compression of the received first digitized speech input using a digital data
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`compression algorithm; and (ii) compression of the subsequent digitized speech
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`input, in combination with the foregoing features.
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`Obradovich ’261 discloses that data downloaded through a data provider’s
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`web page will be in the form of a compressed digital data file that may include
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`video, sound, or other digitally encoded data. Id. at 17:7-12. While Obradovich
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`’261 does reference voice commands (Id., at 2:61-3:9), it fails to teach a speech
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`processing apparatus that provides digital data compressed in the digital domain
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`using a digital voice compression algorithm.
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`Hoffberg teaches digital compression of “event information”, but fails to
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`teach or suggest compression of speech input (e.g., part of a name as a basis for a
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`query) and wireless transmission of such compressed speech to a remote server to
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`access the desired information. While digital domain compression was known as of
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`June 10, 1999 by those of ordinary skill in the signal processing arts, transmission
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`of digitally compressed voice samples for purposes of accessing a remote network
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`server as part of a recognition request were not, as evidenced by each of Ito, Lind,
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`and Class using indigenous recognition (i.e., recognition by the mobile platform).
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`Substitute Claims 32, 33, 36, 39 and 40, and New Claim 37 - Additionally,
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`the features of Claims 32, 33, 36, 37, 39 and 40, each relating to secondary content,
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`are patentable over the cited references, of which Kurtzman, Newswire,
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