Ex Parte Rodman

Patent Trial and Appeal Board

Jun 26, 2014

11080977 (P.T.A.B. Jun. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JEFFREY RODMAN
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Appeal 2012-001320
Application 11/080,977
Technology Center 2400
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1-22. App. Br. 6; Ans. 3. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

Appeal 2012-001320
Application 11/080,977

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RELATED APPEALS
Both Appellant and the Examiner denote the following seven related
applications (appeal numbers in parentheses): 11/080,369 (2012-001367);
11/080,978 (2012-001342); 11/080,984 (2012-001348); 11/080,985 (2012-
001372); 11/080,988 (2012-001373); 11/080,989 (2012-001374); and
11/081,081 (2012-001590). App. Br. 4-5; Ans. 3; see also 37 C.F.R.
§ 41.37(c)(ii) (defining “related cases”).
Appellant further denotes – but the Examiner does not – the following
two related applications: 11/080,996 (no present appeal; issued as U.S.
Patent No. 8,144,854 B2 on Mar. 27, 2012); and 11/081,016 (2012-008165).
App. Br. 4.

REJECTIONS
The Examiner rejected claims 1-3, 7-11, and 15-19 under
35 U.S.C. § 103(a) as unpatentable over U.S. Patent No. 5,625,407 to Biggs,
U.S. Patent No. 6,501,739 B1 to Cohen, and U.S. Patent No. 5,950,125 to
Buhrmann. Ans. 5-14.
The Examiner rejected claims 4, 12, and 20 under § 103(a) as
unpatentable over Biggs, Cohen, Buhrmann, and U.S. Patent No. 5,007,049
to Ohtsuka. Id. at 14-15.
The Examiner rejected claims 5, 13, and 21 under § 103(a) as
unpatentable over Biggs, Cohen, Buhrmann, and U.S. Patent No. 4,425,642
to Moses. Id. at 15-16.
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Application 11/080,977

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The Examiner rejected claims 6, 14, and 22 under § 103(a) as
unpatentable over Biggs, Cohen, Buhrmann, and U.S. Patent No. 4,541,118
to Eastmond. Id. at 16.

ANALYSIS
At-Issue Claim Limitations
Claims 1, 9, and 17 are independent. The remaining claims depend
(directly or indirectly) from one of claims 1, 9, and 17 and thus incorporate
their respective limitations. All claims accordingly require the following at-
issue features: “control data embedded in audio data” (claims 1 and 9); and
“embedding a control signal in the audio signal” (claim 17).
Examiner’s Application of Biggs’ Teachings
The Examiner reads the at-issue limitations on Biggs’ teachings. In
doing so, the Examiner finds that Biggs multiplexes control and audio
signals onto a single communications link. Ans. 6 (citing Biggs, Fig. 6;
col. 5, ll. 52-55; col. 10, l. 60 – col. 11, l. 11; col. 15, ll. 11-18 and 42-54;
col. 18, ll. 15-20).
Principal Contentions
Appellant principally argues that Biggs’ multiplexing does not
constitute an “embedding” of control data “in” audio data. App. Br. 14-15.
For example, Appellant contends:
Multiplexing audio, video, data and control signals into an
outgoing multimedia stream is not the same as embedding
control data in audio data, as required by Applicant’s claims.
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. . . .
In a multiplexed stream, the signals are separable. This is the
function of demux unit 609 of Biggs et al.
. . . .
If the control data were embedded in the audio data, as required
by Applicant’s claims, the control data would remain in the
audio data after the multimedia signal stream was processed by
demultiplexer 609. . . . [Biggs’] multimedia demux 609
separates the signals into an audio line and a control line
(among others) that are separately sent to common internal
switch 613 (see Fig. 6).
Id. (omitting Appellant’s quoted IEEE definitions of “multiplexer” and
quoted text of Biggs).
The Examiner principally responds that, in view of Appellant’s
disclosed embodiments of the invention, the claimed embodiments are broad
enough to be read on frequency division multiplexing (FDM). Ans. 17-19.
For example, the Examiner contends1:
It is stated in Appellants’ specification that:
. . . [A conference system] endpoint 200 may provide
a digital control channel and a voice channel over a
modem link to the PSTN 203. . . .
Thus, the transmission of the combined audio and control data
may be carried out over two sub-channels implemented on the
same connection through the same network interface.

1 For easier reading, we have single-indented the Examiner’s statements,
double-indented the Examiner’s quotations, and removed the Examiner’s
quotation marks and italics denoting those quotations.
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Application 11/080,977

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It is stated in another embodiment of the Appellants’
specification that:
A portion of the audio signal may be filtered out using a
notch filter technique. . . . [The] notch filter 1106
creates a subset of the audio signal frequency
spectrum for forwarding the digital data.
. . . Referring now to FIG. 13 . . . [a] portion 1300 of the
audio signal frequency spectrum 1200 has been filtered
out by the notch filter 1106. A modulated carrier
signal 1400 is created for insertion into the portion
1300 of the audio signal frequency spectrum 1200, as
shown in FIG. 14. . . .
Thus, the audio data and control data occupy different portions
of the audio frequency spectrum; in a broad sense, it is a
frequency division multiplexing (FDM) scheme. Therefore,
in light of the specification, the claim limitation “provide
control data embedded in audio data” has been interpreted as
that the control data is combined (inserted) in a portion
(subband) of the audio frequency spectrum separated from the
portion carrying the audio data (audio subband) for analog
transmission. This is equivalent to multiplexing the audio and
in-band signaling data onto an analog signal as taught by Biggs.
Id. (citing Spec., Figs. 4, 6A-B, and 12-15; quoting Spec. ¶¶ [0085, 135,
166, and 173]).
Appellant replies to the Examiner’s above contentions as follows:
The Examiner’s Answer further contends that the notch filter
technique of combining control data in-band with audio data
described in the specification of the subject case is “equivalent
to multiplexing the audio and in-band signaling data onto an
analog signal as taught by Biggs.” This is incorrect. Biggs et al
does not specify where the control data is inserted (cf.
Appellant’s claims which require it to be embedded in the audio
data) and, in the conferencing system described in Biggs et al.,
the transmission medium must have a much higher bandwidth
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Application 11/080,977

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than audio data (because it is additionally carrying video
signals).
Reply Br. 6-7.
Holdings
The Examiner has failed to sufficiently support the above-noted
finding that the claimed embed-in recitations – “control data is embedded in
audio data” and (claims 1 and 9) and “embedding a control signal in the
audio signal” (claim 17) – are taught by Biggs’ FDM. Particularly, the
Examiner has erred insofar as reading the claimed embed-in recitations on
Biggs’ FDM of control and audio signals without establishing that the FDM
indeed embeds the control signals “in” the audio signals. The Examiner
presents only a token discussion of the “in” requirement, stating:
[T]he claim limitation “provide control data embedded in audio
data” has been interpreted as that the control data is combined
(inserted) in a portion (subband) of the audio frequency
spectrum separated from the portion carrying the audio data
(audio subband) for analog transmission. This is equivalent to
multiplexing the audio and in-band signaling data onto an
analog signal as taught by Biggs.
Ans. 18-19; see also supra (Examiner’s contentions). There is no dispute
that, as stated above by the Examiner, the claimed embed-in recitations can
be read on inserting of control data within an “audio frequency spectrum”
but separate from audio data. See Spec., Figs. 12-14 (illustrating Appellant’s
representative notch-filter technique); Reply Br. 6-7 (acquiescing that the
independent claims encompass the notch-filter technique). However, the
Examiner has not shown that Biggs’ FDM performs such particular inserting
of Biggs’ cited control signal. For example, with respect to Biggs, the
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Examiner does not show a bounds (or even present a meaning) of the “audio
frequency spectrum” and then show that a portion of the control signal is
multiplexed therein.
In sum, the Examiner has not shown that Biggs’ FDM inserts “the
control data . . . in a portion (subband) of the audio frequency spectrum
separated from the portion carrying the audio data (audio subband),” as is
asserted by the Examiner and underlies the rejection. See supra (above
block quote). We make no determination of whether Biggs’ FDM teaches or
suggests the claimed embed-in subject matter. Rather, we have determined
only that the Examiner reads the claimed embed-in recitations on a merely
alleged FDM insertion of control and audio signals within respective bands
of an “audio frequency spectrum,” failing to present any teaching or
suggestion of those relative frequencies.
The Examiner has applied an unreasonably broad interpretation of the
claimed embed-in recitations; that is, an unreasonably broad interpretation of
“embedded in audio data” and (claims 1 and 9) and “embedding . . . in the
audio signal” (claim 17). Particularly, the Examiner has read the claimed
embed-in recitations on FDM of control and audio signals, while
disregarding that the recitations restrict FDM to yielding control signals “in”
audio signals (assuming that, as here, the recitations are read on FDM). The
Examiner presents only a token discussion of this recited requirement,
stating:
[T]he control data is combined (inserted) in a portion (subband)
of the audio frequency spectrum separated from the portion
carrying the audio data (audio subband) for analog
transmission. This is equivalent to multiplexing the audio and
in-band signaling data onto an analog signal as taught by Biggs.
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Ans. 18-19; see also supra (Examiner’s contentions). We do not disagree
that, as stated by the Examiner, the claimed embed-in recitations can be read
on a control signal transmitted within the same frequency spectrum but
separate from audio data. But to meaningfully address the claimed embed-in
recitations, the Examiner must also specify the bounds of the frequency
spectrum – “audio frequency spectrum” – and how Biggs teaches a control
signal multiplexed therein – i.e., how the control data or signals are inserted
into the audio data or signals. Because the Examiner has not provided such
clarification and the Examiner’s explanation (above) indicates that the
control data and audio data (signals) are separate, we find the Examiner has
not sufficiently explained how FDM of control and audio signals embeds
(inserts) control data or signals “in” audio data or signals.
Conclusion
The Examiner’s reading of the claimed embed-in recitations on Biggs
is not properly supported. Accordingly, as all rejections rely upon that
reading of the claimed embed-in recitations on Biggs, none of the rejections
can be sustained.

DECISION
For the foregoing reasons, the Examiner’s decision rejecting claims 1-
22 is reversed.

REVERSED
msc