10163359 (B.P.A.I. May. 29, 2012)

Ex Parte Etter

Board of Patent Appeals and InterferencesMay 29, 2012

10163359 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/163,359 06/07/2002 Walter Etter 129250-001007/US 8210 32498 7590 05/29/2012 CAPITOL PATENT & TRADEMARK LAW FIRM, PLLC P.O. BOX 1995 VIENNA, VA 22183 EXAMINER BRINEY III, WALTER F ART UNIT PAPER NUMBER 2614 MAIL DATE DELIVERY MODE 05/29/2012 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte WALTER ETTER ____________ Appeal 2009-015202 Application 10/163,359 Technology Center 2600 ____________ Before THOMAS S. HAHN, BRADLEY W. BAUMEISTER, and DENISE M. POTHIER, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-015202 Application 10/163,359 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Invention Appellant’s invention reduces sidetone noise levels. See generally Spec.¶ 0005; Abstract. Claim 1 is reproduced below. 1. A device for at least reducing sidetone noise levels comprising: a noise estimation unit adapted to estimate a noise level of a near-end signal that includes both voice and background signals and does not include far end signals; a sidetone gain computation unit adapted to generate an adjustment factor based on the estimate; a sidetone gain control unit adapted to generate a sidetone signal comprising adjusted noise and signal levels using the generated adjustment factor; and a sidetone mixer adapted to output the adjusted, sidetone signal to the near-end. The Examiner relies on the following as evidence of unpatentability: Higuchi US 6,363,344 B1 Mar. 26, 2002 Feltstrom US 2002/0090078 A1 July 11, 2002 (filed Jan. 11, 2001) The Rejections 1. The Examiner rejected claims 1, 4-7, 11-13, 15, 16, and 20-22 under 35 U.S.C. § 102(e) as anticipated by Feltstrom. Ans. 2-5. 2. The Examiner rejected claims 2, 3, 9, and 17 under 35 U.S.C. § 103(a) as unpatentable over Feltstrom and Official Notice. Ans. 5-7. Appeal 2009-015202 Application 10/163,359 3 3. The Examiner rejected claims 8, 10, 14, 18, 19, and 23 under 35 U.S.C. § 103(a) as unpatentable over Feltstrom and Higuchi. Ans. 7-8. THE ANTICIPATION REJECTION OVER FELTSTROM Regarding representative claim 1, the Examiner maps Feltstrom’s noise energy estimator 110 to the recited noise estimation unit. Ans. 2-3. The Examiner also construes claim 1 as open-ended because Appellant opted to use the transitional term, “comprising.” Ans. 10-11. By choosing an open-ended claim recitation, the Examiner further concludes that the other claim 1 elements -- the sidetone gain computation unit, the sidetone gain control unit, and the sidetone mixer -- are not excluded from being adapted to generate or output information based on additional features, including the far-end signal. See id. Appellant disagrees and argues the Examiner’s interpretation of claim 1 is unreasonable. See Reply Br. 1-2. Appellant contends that claim 1 limits the adjusted sidetone signals outputted to the near-end to be “based on an adjustment factor that is itself based on a near-end signal, not a far-end signal.” App. Br. 4.1 Appellant also asserts that Feltstrom contrasts with claim 1 disclosing a sidetone controller 40 that uses both near-end and far-end signals to create an adjustment factor that then is used to adjust a sidetone signal to a near-end. Id. ISSUE Under § 102, has the Examiner erred in rejecting claim 1 by finding that Feltstrom discloses the units and mixer as recited? 1 Throughout this opinion, we refer to the corrected Appeal Brief filed March 3, 2009. Appeal 2009-015202 Application 10/163,359 4 PRINCIPLES OF LAW “‘Comprising’ is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.” Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (citations omitted). ANALYSIS We begin by construing representative claim 1. We agree with the Examiner that claim 1 recites the transitional phrase, “comprising,” (Ans. 10) and that such a transitional phrase does not exclude additional, unrecited elements. See Genentech, 112 F.3d at 501. We further concur with, and adopt as our own, the Examiner’s position that claim 1 recites a noise estimation unit adapted to estimate a noise level of a near-end signal that does not include far-end signals (Ans. 10), but does not exclude the recited sidetone gain computation unit, sidetone gain control unit, and a sidetone mixer from being adapted to generate or output information based on the recited elements plus additional, unrecited elements (see Ans. 10-11). Rather, claim 1 does no more than define a near-end signal as a signal that does not include a far-end signal, but does include voice and background signals. To elaborate, we agree that the first recited element, a noise estimation unit, limits its estimation of a noise level to that of a near-end signal including both voice and background signals but excluding far-end signals. However, the remaining limitations do not also include such an exclusion. We agree that the sidetone gain computation unit is adapted to generate an adjustment factor based on the estimate and the sidetone gain Appeal 2009-015202 Application 10/163,359 5 control unit is adapted to generate a sidetone signal using the generated adjustment factor. Yet, the open-ended transitional phrase, “comprising” in claim 1 does not exclude additional, unrecited elements, including (a) the sidetone gain computation unit being adapted to generate an adjustment factor based on the estimate and yet other, unrecited factors and (b) the sidetone gain control unit being adapted to generate a sidetone signal using the generated adjustment factor and yet other, unrecited factors. That is, these elements do not recite that the adjustment factor is based only on the estimate or using only the generated adjustment factor. As such and contrary to Appellant’s allegations, the Examiner has construed claim 1 broadly, but reasonably and has not “ignore[d] the words of the claims” (Reply Br. 1). Turning to Feltstrom, the Examiner has mapped the recited noise estimation unit to the noise energy estimator 110 that estimates the noise signal of the uplink or near-end signal. See Ans. 2-3. While this estimator 110 is a component of the sidetone controller 40, the Examiner has not relied upon the entire controller 40 to be the noise estimation unit. See id. Thus, despite Appellant’s arguments focusing on controller 40 using the far-end signal (App. Br. 4), Feltstrom’s estimator 110 does not. See Ans. 2 (citing to ¶ 0028; Fig. 3). Moreover, as the Examiner states (see Ans. 3 (citing to ¶¶ 0004-0005)), the uplink or near-end signal includes voice and background signals. Feltstrom, therefore, discloses a noise estimation unit adapted to estimate a noise level of a near-end signal that does not include far-end signals but includes voice and background signals as recited. Concerning claims 12 and 21, we agree with the Examiner and Appellant that they differ in scope from claims 1 and 15. See Ans. 10; see also Reply Br. 2. These claims do not recite (1) an estimation unit or Appeal 2009-015202 Application 10/163,359 6 estimating step or (2) a gain computation unit or generating an adjustment factor step. As such, any of Appellant’s arguments discussing these or similar limitations (App. Br. 4) or a sidetone signal generated using an adjustment factor based on the estimate (App. Br. 5) are not commensurate in scope with claims 12 and 21. Notably, for the first time, Appellant challenges claims 12 and 21 specifically arguing that these claims recite, “any reduction in a noise level, made on a near-end signal, does not include a far-end signal” (see Reply Br. 3) and that the Examiner has ignored the words of these claims (see id.). While Appellant “apologize[s] for the error” in lumping claims 12 and 21 with claims 1 and 15 in the Appeal Brief (Reply Br. 2), this argument is nonetheless untimely. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not.”). However, if Appellant decides to prosecute this application further, this new argument should be considered by the Examiner. For the foregoing reasons, Appellant has not persuaded us of error in the rejection of independent claim 1 and claims 4-7,2 11-13, 15, 16, and 20- 22, not separately argued with particularity (App. Br. 4-5). 2 Appellant boldfaces particular claim numbers in the Arguments section of the Appeal Brief. See App. Br. 4 (boldface claims “4-7”). Appellant has not particularly argued these claims, and we do not consider boldfacing itself to be a separate argument for patentability. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2009-015202 Application 10/163,359 7 THE OBVIOUSNESS REJECTIONS For the obviousness rejections, Appellant refers to the previous arguments for claims 1, 12, 15, and 21. App. Br. 5-6. The issues before us, then, are the same as those in connection with representative claim 1. We refer to our previous discussion and need not address whether Higuchi cures any alleged deficiency. CONCLUSION The Examiner did not err in rejecting claims 1, 4-7, 11-13, 15, 16, and 20-22 under § 102 or claims 2, 3, 8-10, 14, 17-19, and 23 under § 103. DECISION The Examiner’s decision rejecting claims 1-23 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED gvw