Ex Parte Redman et al

Patent Trials and Appeals Board

Jan 16, 2015

11496443 - (D) (P.T.A.B. Jan. 16, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN REDMAN and REZA AHMADIAN-YAZDI
____________

Appeal 2012-006737
Application 11/496,443
Technology Center 2600
____________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 1, 3–5, 7, 8, and
13–15 (App. Br. 4; Reply Br. 2; Ans. 3). Examiner entered rejections under
the written description provision of 35 U.S.C. § 112, first paragraph and
35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The Real Party in Interest is VTech Telecommunications Limited (App. Br.
2).
Appeal 2012-006737
Application 11/496,443

2
STATEMENT OF THE CASE
The claims are directed to a communications device and a method for
operating a communications device. Claims 1, 5, and 13 are representative
and are reproduced in the Claims Appendix of Appellants’ Brief.
Claims 1, 3–5, 7, 8, and 13–15 stand rejected under the written
description provision of 35 U.S.C. § 112, first paragraph.
Claims 1, 3–5, 7, 8, and 13–15 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Müller2 and Kim.3

Written Description:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Appellants’ Specification fails to provide written
descriptive support for the claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Appellants’
[I]nvention allows a user to set a sensitivity and selectivity of
the MIC [(microphone)] circuit using an onscreen menu. In
particular, the invention provides a user with software to
manually select between present levels determining the
sensitivity and selectivity of the MIC circuit, which controls the
ambience at the transmit end of the system
or to “allow[] a user to override preset levels” (Spec. ¶ 14).

2 Jürgen Müller, DE 197 42 797 C1, published Apr. 22, 1999 (translation
PTO 2010-3378).
3 Hyun Kyun Kim, US 2002/0086653 A1, published July 4, 2002.
Appeal 2012-006737
Application 11/496,443

3
FF 2. Appellants’ Figure 1 is reproduced below:

Figure 1 is an exemplary onscreen menu in accordance
with one embodiment of . . . [Appellants’] invention. Onscreen
menu 100 may include a near or intimate setting 110, a less
intimate or intermediate I setting 120, an almost hall or
intermediate II setting 130 and a far or hall setting 140. . . .
Other factors may be modified according to the selected range.
For example, a frequency response may be changed to provide
improved sound quality depending on the selected settings. . . .
[A]ny number of intermediate settings may be provided in
accordance with . . . [Appellants’] invention.
(Spec. ¶¶ 15–17.)
FF 3. Appellants disclose that
In addition to . . . predefined settings corresponding to
the pickup levels . . . programmable settings could be provided
to override the predefined settings at the MIC control circuitry.
. . . These additional settings may be selected from a menu or
programmed by a user at a user interface. Moreover, the
settings may define the gain, frequency response, and activity
Appeal 2012-006737
Application 11/496,443

4
thresholds for various conditions. The additional settings are
applied in the same way as the preset MIC pickup levels
described above.
(Spec. ¶ 18.)
FF 4. Examiner finds that Appellants’ Specification fails to provide written
descriptive support for a “plurality of settings,” wherein the plurality of
settings includes “an intimate option, an intermediate option and a hall
option” (Ans. 5–6).
FF 5. Examiner finds Appellants’
[S]pecification as originally filed states “intimate setting 110” .
. . and “far or hall setting 140”. . . . Each of “intimate setting”
is a single setting. Each of “far or hall setting” is a single
setting. The specification states “intermediate settings 120 and
130”. . . . This further clearly implies that there is only one
“intimate setting” and one “far or hall setting.”
(Ans. 13.)
ANALYSIS
Examiner finds that Appellants’ Specification fails to provide written
descriptive support for Appellants’ claimed invention (Ans. 4–5 and 12–13).
We are not persuaded.
As Appellants explain,
[O]ne skilled in the art would readily understand that a user’s
selection of an intimate option, an intermediate option, or a hall
option may specify more than a single parameter (i.e., setting)
to adjust sensitivity of the microphone and may specify more
than a single parameter (i.e., setting) to specify a frequency
response of the microphone. As such, the specification
reasonably conveys to one skilled in the relevant art that the
Appeal 2012-006737
Application 11/496,443

5
inventor, at the time the application was filed, had possession of
the claimed invention.
(App. Br. 14–15; Cf. FF 1–3.) Appellants disclose that an “[o]nscreen menu
. . . may include a near or intimate setting . . ., a less intimate or intermediate
I setting . . ., an almost hall or intermediate II setting . . . and a far or hall
setting” and that “[o]ther factors may be modified according to the selected
range. For example, a frequency response may be changed to provide
improved sound quality depending on the selected settings” (FF 2).
Therefore, we are not persuaded by Examiner’s assertion that Appellants’
Specification “clearly implies that there is only one ‘intimate setting’ and
one ‘far or hall setting’” (FF 5; Cf. FF 1–3).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner’s finding that Appellants’ Specification fails to provide written
descriptive support for the claimed invention.
The rejection of claims 1, 3–5, 7, 8, and 13–15 under the written
description provision of 35 U.S.C. § 112, first paragraph is reversed.

Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 6. Examiner finds that
Müller discloses a method for operating a communications
device (mobile telephone coupled to the car radio . . .), the
communications device having a speakerphone . . . including a
microphone . . ., the method comprising:
Appeal 2012-006737
Application 11/496,443

6
providing a user . . . with a plurality of options for
configuring the speakerphone feature, wherein the plurality of
options include settings to adjust the sensitivity of the
microphone . . . that control ambience at a transmit end of the
communication device (by reducing the reverberation effects
. . . [and] the ambience at the transmit end of the
communication device is affected);
receiving a user selection of one of the options . . .; and
applying the settings, associated with an option selected by the
user input, to the communications device . . . .
(Ans. 5–6.)
FF 7. Examiner finds that Müller fails to suggest “that the user is provided
settings to specify a frequency response that control[s] ambience at a
transmit end of the communication device” and relies on Kim to make up for
this deficiency in Müller (Ans. 6).
FF 8. Examiner relies on Kim to suggest “a user adjustable equalizer . . .
that would allow the user to adjust the frequency response of the
microphone” (Ans. 6).
ANALYSIS
Based on the combination of Müller and Kim, Examiner concludes
that, at the time Appellants’ invention was made, it would have been prima
facie obvious to modify Müller to include Kim’s “equalizer with user
controlled settings at the output of the microphone in order to allow the user
to create his/her individual sound to be transmitted to the receiver” (Ans. 6).
We are not persuaded.
Appellants’ claimed invention is directed to a communications device
and method of using a communications device, wherein the device and
method include an interface that allows a user to select options for the
operation of the microphone, wherein the options include an intimate option,
Appeal 2012-006737
Application 11/496,443

7
and intermediate option, and a hall option (see Appellants’ claims 1, 5, and
13; see, e.g., App. Br. 17). As Appellants explain, “in order for a user of the
Müller/Kim device to achieve similar results, a user . . . must manually
adjust the Müller gain setting and manually adjust several frequency bands
of the Kim equalizer” (App. Br. 17).
[N]either Müller nor Kim, alone or in combination disclose . . .
or suggest a desire for an intimate option that configures the
communication device to filter noise from beyond an
immediate vicinity of the microphone, a hall option that
configures the communication device to detect speech in a first
area beyond the immediate vicinity of the microphone, and an
intermediate option that configures the communication device
to detect speech in a second area that extends beyond the
immediate vicinity of the microphone but does not extend as far
as the first area.
(App. Br. 18.)
“[S]uch complex manual manipulation of the Müller gain setting and
the Kim equalizer . . . do[es] not read upon the claim recitation ‘receiving a
user input that selects one of the plurality of options [and] in response to the
user selecting the intimate option, applying intimate settings’” (App. Br. 17).
In this regard, Appellants contend that while Müller and Kim “may provide
the tools to achieve such results does not mean it is obvious to perform the
requisite complex manipulations of the Müller/Kim device in order to obtain
an intimate setting, a hall setting, and an intermediate setting” (id. at 18).
We agree.
Obviousness requires more than a mere showing that the
prior art includes separate references covering each separate
limitation in a claim under examination. KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418, 127 S.Ct. 1727, 167 L.Ed.2d
705 (2007). Rather, obviousness requires the additional
showing that a person of ordinary skill at the time of the
Appeal 2012-006737
Application 11/496,443

8
invention would have selected and combined those prior art
elements in the normal course of research and development to
yield the claimed invention. Id. at 421, 127 S.Ct. 1727.
Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir.
2011).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 1, 3–5, 7, 8, and 13–15 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Müller and Kim is
reversed.

REVERSED

cdc