Ex Parte Redman et alDownload PDFPatent Trials and Appeals BoardJan 16, 201511496443 - (D) (P.T.A.B. Jan. 16, 2015) Copy Citation 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 Copy with citationCopy as parenthetical citation