Ex Parte Schmid et al

Patent Trial and Appeal Board

Aug 30, 2016

11608961 (P.T.A.B. Aug. 30, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/608,961 12/11/2006 Robert SCHMID 72371 1293
23872 7590 08/30/2016
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
JANG, CHRISTIAN YONGKYUN
ART UNIT PAPER NUMBER
3735
MAIL DATE DELIVERY MODE
08/30/2016 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT SCHMID and RALF HEESCH
____________

Appeal 2014-004755
Application 11/608,9611
Technology Center 3700
____________

Before STEFAN STAICOVICI, LYNNE H. BROWNE, and
JAMES J. MAYBERRY, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Robert Schmid and Ralf Heesch (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s Final decision rejecting claims 1, 3–10, 12–
18, and 20–23. 2 Appellants’ representative presented oral argument on
Aug. 4, 2016. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

1 According to Appellants, the real party in interest is Dräger Medical
GmbH. Appeal Br. 1 (filed July 1, 2013).
2 Claims 2, 11, and 19 are indicated as allowable by the Examiner.
Final Act 9 (mailed Nov. 28, 2012).
Appeal 2014-004755
Application 11/608,961

2

INVENTION
Appellants’ invention relates to “a device for acoustically reproducing
the respiratory function for a respirator such that the acoustic reproduction is
more easily perceptible for the medical staff under changing ambient
conditions.” Spec. ¶ 8.
Claims 1, 18, and 21 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A device for acoustically reproducing the respiratory
function for a respirator, with a patient respiration circuit, the
device comprising:
a noise generator;
a volume flow sensor device, which determines volume
flow in the patient respiration circuit and generates an electric
volume flow signal representing a magnitude of volume flow;
a volume flow evaluating unit, which is set up to pick up
the volume flow signal and to generate, as a function of the
volume flow signal, a control signal for the noise generator in
such a way that an acoustic signal with a loudness that increases
with an increasing magnitude of the volume flow signal and
with a loudness that decreases with a decreasing magnitude of
the volume flow signal is generated;
a microphone; and
an evaluating unit connected to said microphone, said
evaluating unit generating an ambient noise level measure on
the basis of a microphone signal by averaging the microphone
signal over at least one period of time and increasing or
decreasing the loudness of the acoustic signal as a preset
monotonic function of said measure.

Appeal 2014-004755
Application 11/608,961

3

REJECTIONS
The following rejections are before us for review:3
I. The Examiner rejected claims 1, 3, 5, 6, 8–10, 17, 18, and 20
under 35 U.S.C. § 103(a) as being unpatentable over Sanderson
(US 2004/0243016 A1, pub. Dec. 2, 2004) and Shuttleworth
(US 2005/0063552 A1, pub. Mar. 24, 2005).
II. The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
being unpatentable over Sanderson, Shuttleworth, and
Appellants’ Admitted Prior Art (AAPA) (Apollo respirator).
III. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as
being unpatentable over Sanderson, Shuttleworth, and
Wattenbarger (US 4,076,968, iss. Feb. 28, 1978).
IV. The Examiner rejected claims 12–15 under 35 U.S.C. § 103(a)
as being unpatentable over Sanderson, Shuttleworth, and
Daniels (US 2003/0045807 A1, pub. Mar. 6, 2003).
V. The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as
being unpatentable over Sanderson, Shuttleworth, Lindgren
(US 2002/0128839 A1, pub. Sept. 12, 2002), and Takalo (US
2001/0024450 A1, pub. Sept. 27, 2001
VI. The Examiner rejected claim 21–23 under 35 U.S.C. § 103(a)
as being unpatentable over Sanderson, Shuttleworth, and Fitch
(US 5,730,140, iss. Mar. 24, 1998).

3 The Examiner withdrew the rejection of claims 1–23 under 35 U.S.C.
§ 112, second paragraph, as being indefinite. Ans. 8 (mailed Jan. 14, 2014).
Appeal 2014-004755
Application 11/608,961

4

ANALYSIS
Rejection I
The Examiner finds that Sanderson discloses a device for acoustically
reproducing the respiratory function of a respirator including a patient
respirator circuit, a noise generator F, a volume flow sensor device B, and a
volume flow evaluating unit for generating a signal for the noise generator
that corresponds to the patient volume flow. Final Act. 4 (citing Sanderson
¶¶ 49, 64, 65, and Fig. 2). However, the Examiner also finds that
“Sanderson fails to teach a microphone and an evaluating unit connected to
the microphone to further correlate the acoustic signal with averaged
ambient noise levels.” Id. Nonetheless, the Examiner finds that
Shuttleworth discloses an ambient noise compensation device that adjusts an
audio output signal device as the ambient noise increases or decreases. Id
(citing Shuttleworth ¶¶ 8, 19). Thus, the Examiner concludes that it would
have been obvious for a person of ordinary skill in the art “to modify
Sanderson with Shuttleworth so that the desired acoustic signal can be heard
by the user while preventing the signal to be too loud for quieter
environments.” Id.

Claims 1, 3, 6, 9, 10, 17, and 18
Appellants have not presented arguments for the patentability of
claims 3, 6, 9, 17, and 18 apart from claim 1. See Appeal Br. 12–18.
Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select claim 1
as the representative claim to decide the appeal of the rejection of these
claims, with claims 3, 6, 9, 17, and 18 standing or falling with claim 1. We
will address the rejection of claim 10 separately.
Appeal 2014-004755
Application 11/608,961

5

Appellants argue that the disclosure of Shuttleworth is in a different
technical field and should be considered non-analogous art. See Appeal Br.
13. According to Appellants, “[t]he technical field of the Shuttleworth[]
relates to ambient noise compensation while dealing with the source sound
and feedback issues of produced sound for a particular room or space.” Id.
In contrast, Appellants contend that the claimed invention relates to a
medical setting and addresses the problem of “adjust[ing] the volume setting
of the acoustically reproduced respiratory function, after an initial setting,
because the ambient noise of the room has changed.” Id. at 14. Thus,
Appellants assert that a person of ordinary skill in the art concerned with
Appellants’ problem “would not seek a solution with regard to ambient noise
compensation which addresses issues with regard to feedback,” as taught by
Shuttleworth because the disclosure of Shuttleworth would “direct the
person of ordinary skill in the art away from the invention.” Id.
The Federal Circuit has explained that “[t]he analogous art inquiry is a
factual one, requiring inquiry into the similarities of the problems and the
closeness of the subject matter as viewed by a person of ordinary skill in the
art.” Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1360 (Fed.
Cir. 2014). “Criteria for determining whether prior art is analogous may be
summarized as ‘(1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.’” Id.
at 1359 (citing In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)). In this
case, Appellants state that “[t]he object of the present invention is . . .
acoustic reproduction [that] is more easily perceptible . . . under changing
Appeal 2014-004755
Application 11/608,961

6

ambient conditions” of rising or falling ambient noise level. Spec. ¶ 8; see
also id. ¶ 9. As Shuttleworth discloses providing a sound output that is
audible over “undesirable noise” (ambient noise) whose level rises or falls
over time (see Shuttleworth ¶ 14), we agree with the Examiner that
Appellants’ invention and Shuttleworth address the same problem of
“generat[ing] sound that is perceptible to the audience in [differing] ambient
noise levels.” Ans. 9. In other words, both Shuttleworth and Appellants’
claimed invention are directed to adjusting the loudness of a desired acoustic
signal based on a measurement of the ambient noise and as such,
Shuttleworth is reasonably pertinent to the problem faced by Appellants.
As to Appellants’ concerns regarding Shuttleworth’s feedback
approach to comparing the sound produced with the ambient sound,4 we are
not persuaded that this is evidence of a teaching away or non-analogous art
(see Appeal Br. 13–16) because regardless of the approach taken, the
function of the Shuttleworth device is similar to that of Appellants, namely,
to increase or decrease the loudness of an acoustic signal based on rising or
falling ambient noise levels. If a reference disclosure has the same purpose
as the claimed invention, the reference relates to the same problem, and that
fact supports use of that reference in an obviousness rejection. Innovention
Toys, LLC v. MGA Entertainment, Inc., 637 F.3d 1314, 1321 (Fed. Cir.
2011) (quoting Clay, 966 F.2d at 659). Therefore, the Examiner correctly
finds that Shuttleworth is analogous art, and properly considered its

4 According to Appellants, feedback issues result when “a microphone
detecting ambient noise . . . will also detect the source sound.” Appeal Br.
13.
Appeal 2014-004755
Application 11/608,961

7

teachings in determining that the subject matter of claim 1 would have been
obvious.
Appellants further argue that “[t]he various problems which are
addressed by Shuttleworth[] . . . are not problems encountered by
Sanderson[]” and “[t]he references do not provide teachings or suggestions
with regard to using concepts of Shuttleworth[] with the system of
Sanderson[].” Appeal Br. 17. More specifically, Appellants note that “[t]his
frequency scheme [of Shuttleworth] addresses a problem which is not
encountered according to the invention and which is not encountered with
the device of Sanderson[].” Id. at 18.
Although we appreciate that the environments of Sanderson and
Shuttleworth are not related, nonetheless, Appellants’ arguments are not
persuasive because “[w]hen a work is available in one field of endeavor,
design incentives and other market forces can prompt variations of it, either
in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appellants have not
persuasively explained why any differences in technologies between
Sanderson and Shuttleworth are such as to have dissuaded a person of
ordinary skill in the art from utilizing Shuttleworth’s ambient noise
compensator with Sanderson’s respiratory acoustic device to adjust
automatically a respiratory acoustic signal as the ambient noise level varies
over time, as reasoned by the Examiner. See Final Act. 4.
The proper inquiry is whether the Examiner has articulated sufficient
reasoning based on a rational underpinning to explain why a person of
ordinary skill in the art would have combined the teachings of Sanderson
Appeal 2014-004755
Application 11/608,961

8

and Shuttleworth. See KSR at 418 (stating that “[r]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” (citing In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006))). Here, the Examiner’s modification is an
improvement to Sanderson’s respiratory acoustic device in the same manner
as taught by Shuttleworth to lead to a predictable result, namely, to adjust
automatically Sanderson’s respiratory acoustic signal so that it is perceptible
to listeners as the ambient noise level varies over time. See Final Act. 4; see
also Shuttleworth ¶¶ 14, 59 (“[T]he volume of the desired sound signal may
be adjusted to compensate for changes over time in the ambient noise.”).
Moreover, such a modification is within the skill of a person of ordinary
skill in this art. See KSR at 417 (“[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”).
Lastly, we do not agree with Appellants’ argument that the combined
teachings of Sanderson and Shuttleworth fail to disclose that the “ambient
noise level measure[d] on the basis of the microphone signal is averaged
over a time period.” Appeal Br. 16; see also Reply Br. 4. As the Examiner
correctly finds, Shuttleworth discloses a running average block that receives
ambient sound signals from a microphone and calculates a set of running
averages of absolute values. See Final Act. 4 (citing Shuttleworth ¶ 19); see
also Shuttleworth ¶ 21. Moreover, Shuttleworth discloses that the averaging
occurs over a short time period of 0.25 to 2 seconds or over a long time
period of approximately 30 seconds. See Final Act. 5 (citing Shuttleworth ¶
Appeal 2014-004755
Application 11/608,961

9

82). Appellants have not persuasively shown error in the Examiner’s
findings.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1, and claims 3, 6, 9, 17, and 18 falling
with claim 1, as being unpatentable over Sanderson and Shuttleworth.
With respect to claim 10, Appellants do not set forth any arguments.
See Appeal Br. 16–19. Accordingly, we summarily sustain the rejection of
claim 10 over the combined teachings of Sanderson and Shuttleworth.

Claims 5 and 20
Claim 5 depends from independent claim 1 and further includes, inter
alia, “a trigger evaluating circuit” that cooperates with a volume flow sensor
device and “a low-pass filter . . . for distinguishing the phase of inspiration
from the phase of expiration . . . such that the acoustic signal provides a
noise during inspiration that sounds differently from . . . a noise the acoustic
signal provides during expiration.” Appeal Br. 31 (Claims App.). Claim 20
includes similar limitations. See id. at 35.
The Examiner finds that “Sanderson teaches distinguishing inspiration
and expiration sounds ([0052]) using a low pass filter ([0052] - the use of a
lower pitch for exhalation is considered to be use of a low pass filter).”
Final Act. 4.
Although we appreciate the Examiner’s finding that Sanderson device
distinguishes between inspiration and expiration sounds, nonetheless, we
agree with Appellants that the Examiner does not make findings with respect
to the claimed “trigger evaluating circuit.” See Appeal Br. 18–19.
Appellants’ Specification describes a “trigger evaluating circuit” 14 as
Appeal 2014-004755
Application 11/608,961

10

“detect[ing] the type of respiratory activity.” Spec. ¶ 23. Merely because
Sanderson distinguishes between inspiration and expiration sounds, does not
mean that the volume flow sensor cooperates with a trigger evaluating
circuit, as called for by claims 5 and 20.
Accordingly, we do not sustain the rejection of claims 5 and 20 over
the combined teachings of Sanderson and Shuttleworth.

Claim 8
Claim 8, depends from independent claim 1, and adds the limitation of
“the compensation comprising a preset function of the control signal for said
noise generator.” Appeal Br. 32 (Claims App.).
The Examiner finds that “Shuttleworth teaches the evaluating unit
compensates for a contribution to the microphone signal, the compensation
comprising a preset function of the control signal for the noise generator (fig
5; [0008], [0082-0083]).” Final Act. 5.
Appellants’ Specification states that “the control signal for the
loudness setter 11, which is . . . a function of the microphone signal, can be
generated according to different, presettable functions in order to generate
different signal intensities.” Spec. ¶ 26 (emphasis added). Although we
appreciate that Shuttleworth discloses adjusting the level of the source signal
depending on the ambient noise level, we could not find a description of a
“preset function,” as called for by claim 8 in the paragraphs cited by the
Examiner. We agree with Appellants that in contrast to claim 8, which
requires a preset function, Shuttleworth “involves a situation with the source
sound varying in unknown (not predetermined) ways.” Appeal Br. 19.
Appeal 2014-004755
Application 11/608,961

11

Therefore, we also do not sustain the rejection under 35 U.S.C.
§ 103(a) of claim 8 as being unpatentable over Sanderson and Shuttleworth.

Rejection II
Claim 4 depends from independent claim 1 and adds the limitation of
“said generator simulates a stethoscope breathing noise sound.” Appeal Br.
31 (Claims App.).
Appellants argue that Sanderson fails to disclose, “providing
breathing noise sounds” and furthermore, “the combination of features of
claim 1 are not suggested by the prior art.” Appeal Br. 20.
We are not persuaded, because Appellants’ arguments are not
commensurate with the Examiner’s rejection. Nonobviousness, cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the Examiner’s
rejection is based on the combined teachings of Sanderson, Shuttleworth,
and AAPA. More specifically, the Examiner finds that although the
combined teachings of Sanderson and Shuttleworth fail to disclose the above
recited limitation, nonetheless, “in the [Appellants’] arguments submitted
6/15/12 . . . the simulation of various sounds is well known, including the
use of a known device, the Apollo respirator, which is capable of generating
a noise similar to a stethoscope.”5 Final Act. 5. Appellants have not
persuasively shown error in the Examiner’s findings.

5 See pages 12–13 of Appellants’ Amendment filed June 15, 2012.
Appeal 2014-004755
Application 11/608,961

12

Accordingly, we sustain the rejection under 35 U.S.C. § 103(a) of
claim 4 as being unpatentable over Sanderson, Shuttleworth, and AAPA.

Rejection III
Claim 7 depends from independent claim 1 and adds the limitation of
“evaluat[ing] a microphone signal, for generating a measure for the ambient
noise level, only during periods of time during which no acoustic signal is
generated by said noise generator or during periods of time during which no
acoustic alarm is signaled.” Appeal Br. 32 (Claims App.).
The Examiner finds that although the combined teachings of
Sanderson and Shuttleworth fail to disclose the above recited limitation,
nonetheless, “Wattenbarger teaches a tone ringer where the ambient noise
level is measured prior to the ringer is activated, and thus when no acoustic
signal is generated (Fig. 4C).” Final Act. 6. Thus, according to the
Examiner, “[i]t would have been obvious to [a person of ordinary skill in the
art] modify the above combination [of Sanderson and Shuttleworth] with
Wattenbarger to measure ambient noise levels when it is easiest to measure.”
Id.
In addition to the arguments presented supra in the rejection of claim
1 (Appeal Br. 21), which we have found unpersuasive, Appellants further
argue that Wattenbarger “fails to suggest detecting ambient sound in the
short periods between ringer signal bursts.” Id. Appellants explain that
because in Wattenbarger the ambient noise is either detected (1) before and
during the ringer event that results in a loudness setting that increases with
each successive ring or (2) only before the ringer event that results in a fixed
Appeal 2014-004755
Application 11/608,961

13

loudness setting, Wattenbarger fails to disclose “sensing the loudness
between ring bursts.” See id. at 21–22.
Appellants’ argument is not persuasive, because claim 7 does not
require sensing the loudness of the ambient noise between acoustic signal
bursts. Limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Claim 7
merely requires that the ambient noise level is determined only during a
period of time when no acoustic signal is generated. As the Examiner
correctly finds, in Wattenbarger, the ambient noise level is determined
before a ringing event, which is, only during a period of time when no
ringing occurs. See Wattenbarger, col. 1, ll. 63–66.
Accordingly, we sustain the rejection under 35 U.S.C. § 103(a) of
claim 7 as being unpatentable over Sanderson, Shuttleworth, and
Wattenbarger.

Rejection IV
The Examiner finds that although the combined teachings of
Sanderson and Shuttleworth “does not detect the type of respiratory activity
and reproduce acoustically the type of respiratory activity,” nonetheless,
“Daniels teaches a method for determining whether breath was spontaneous
or mandatory.” Final Act. 6 (citing Daniels ¶ 62). The Examiner further
finds that Daniels discloses “a sound card to generate audible warnings and
alarms, as well as audibly alerting a user about various patient respiratory
information.” Id. at 6–7 (citing Daniels ¶ 46). As Sanderson discloses
varying the pitch of sounds depending on various parameters (see Sanderson
¶ 27), the Examiner concludes that,
Appeal 2014-004755
Application 11/608,961

14

It would be within the ability of one of ordinary skill in the art
to notify the user or caretaker of the type of respiratory activity
detected, and would furthermore be obvious to modify the
above combination [of Sanderson and Shuttleworth] with that
of Daniels to allow for the detection of the type of respiratory
activity in relaying more information to the caretaker. Acoustic
reproduction of the respiratory activity is considered to be
varying the acoustic breathing signal.

Final Act. 7.

Claim 12
Appellants argue that although Daniels discloses, “determining
whether a breath was spontaneous or mandatory,” the applied prior art
“present teachings of individual aspects without a suggestion of combining
the features of the present invention.” Appeal Br. 23.
We are not persuaded by Appellants’ arguments because the Supreme
Court has rejected the rigid requirement that the rationale for the proposed
combination come from within the references. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (rejecting the rigid requirement of a teaching,
suggestion or motivation to combine known elements in order to show
obviousness). Further, Appellants’ conclusory assertion that there is no
suggestion of combining the features ignores and fails to point out the error
in the rationale provided by the Examiner, namely, “to allow for the
detection of the type of respiratory activity in relaying more information to
the caretaker.” Ans. 5. Given that Sanderson discloses a device for
acoustically reproducing the respiratory function of a respirator and varying
the pitch of sounds based on various parameters, and Daniels discloses
detecting the type of respiratory activity, the Examiner’s reasoning has a
Appeal 2014-004755
Application 11/608,961

15

rational underpinning. Appellants have not persuasively shown error in the
Examiner’s findings and reasoning.
Accordingly, we sustain the rejection under 35 U.S.C. § 103(a) of
claim 12 as being unpatentable over Sanderson, Shuttleworth, and Daniels.

Claim 13–15
With respect to claim 13, as noted above, the Examiner finds that
Sanderson discloses a device for acoustically reproducing the respiratory
function of a respirator and varying the pitch of sounds based on various
parameters. See Sanderson ¶ 27. The Examiner further finds that Daniels
discloses detecting the type of respiratory activity, namely, whether a breath
was spontaneous or mandatory. See Daniels ¶ 62. Thus, according to the
Examiner, the combined teachings of Sanders, Shuttleworth, and Daniels
disclose a device, for acoustically reproducing the respiratory function of a
respirator and varying an acoustic breathing based on whether a breath was
spontaneous or mandatory. See Final Act. 7. In other words, as the device
of Sanders, Shuttleworth, and Daniels performs the same function as
Appellants’, the device of Sanders, Shuttleworth, and Daniels includes a
“sensor unit . . . [that] cooperates with a trigger evaluating circuit,” as called
for by claim 13.6
As to claims 14 and 15, the Examiner finds that “Sanderson teaches
the ability to vary the frequency/tone (pitch) of the acoustic signal. It would
have been obvious to utilize the detected type of respiratory activity to

6 Similar to Daniels’s device, Appellants’ “trigger evaluating circuit”
“detects the type of respiratory activity.” Spec. ¶ 23.
Appeal 2014-004755
Application 11/608,961

16

change the frequency or tone to relay said information to the caretaker.”
Final Act. 7.
In response, Appellants recite the limitations of claims 13–15 and
argue that “[t]he invention presents a combination of features which is
neither taught nor suggested by the prior art as a whole.” Appeal Br. 23–24.
Appellants’ arguments amount to a recitation of the claim elements
and a “naked assertion” that the elements are not found in the prior art. Such
statements do not constitute a separate argument for patentability pursuant to
37 C.F.R. § 41.37(c)(1)(iv). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011). Moreover, Appellants have not persuasively shown error in the
Examiner’s findings and reasoning.
Accordingly, we likewise sustain the rejection under 35 U.S.C.
§ 103(a) of claims 13–15 as being unpatentable over Sanderson,
Shuttleworth, and Daniels.

Rejection V
The Examiner finds that although the combined teachings of
Sanderson and Shuttleworth “fail[] to teach the use of a pass-band filter to
detect ambient noise level only in a preset frequency range,” nonetheless,
“Lindgren teaches that human hearing is limited to a lower frequency limit
of 20Hz and upper frequency limit of 20kHz” and “Takalo teaches a band-
pass filter to separate a frequency range of 20Hz-20kHz.” Final Act. 7–8
(citing Lindgren ¶ 2; Takalo ¶ 2). The Examiner concludes that “[it] would
[have been] obvious to one of ordinary skill in the art to modify the above
combination [of Sanderson and Shuttleworth] with Lindgren to utilize sound
within said frequency range so that only noises that can be heard (and
Appeal 2014-004755
Application 11/608,961

17

thereby be considered as ambient noise) [are] factored into the acoustic
signal” and “to utilize the bandpass filter of Takalo to obtain and utilize only
the frequency range that a human being can hear and thus consider as a
noise.” Id. at 8.
Appellants argue that the teachings of Lindgren and Takalo fail to
disclose “the combination of features wherein ambient noise, which is time
averaged and used to adjust an audio signal from the noise generator, is used
for this with a limited frequency band range.” Appeal Br. 25. However,
this contention is not persuasive as Appellants cannot show nonobviousness
by attacking Lindgren and Takalo individually when the rejection as
articulated by the Examiner is based on a combination of Sanderson,
Shuttleworth, Lindgren, and Takalo. See In re Keller, 642 F.2d 413, 425
(CCPA 1981). Moreover, we note that Appellants have not persuasively
shown error in the Examiner’s findings or reasoning.
As such, we sustain the rejection under 35 U.S.C. § 103(a) of claim
16 as being unpatentable over Sanderson, Shuttleworth, Lindgren, and
Takalo.

Rejection VI
The Examiner finds that although the combined teachings of
Sanderson and Shuttleworth “fail[] to teach a mixing stage for mixing
ambient noise to form a mixed signal,” nonetheless, Fitch discloses “a
sonification system to synthesize body sounds (such as breathing) based on
physiological variables . . . the sonification system can combine the normal
output of the system (i.e. acoustic signal) with one or more auxiliary sound
sources such as recreational or background music.” Final Act. 9 (citing
Appeal 2014-004755
Application 11/608,961

18

Fitch, Abs., col. 8, ll. 46–57). The Examiner further finds that Fitch
discloses, “the system can be used with such audio output devices as
headphones, in which case it would be prudent to enable the user to hear
background or ambient noise in certain situations (e.g. surgery) so that
communication is not impeded.” Id. The Examiner concludes that “it would
have been obvious [for a person of ordinary skill in the art] to modify the
above combination [of Sanderson and Shuttleworth] with Fitch to still
enable the user to listen to desired ambient or background noise.” Id.

Claim 21
In addition to the arguments presented supra with regards to the
rejection of claim 1 (see Appeal Br. 26–27), which we found unpersuasive,
Appellants further argue that “[t]he references do not suggest . . . mix[ing]
the ambient noise from the microphone into the acoustic signal,” the
“desirability of mixing ambient noise into a produced sound,” or “mixing in
the same ambient noise which is the basis of the increase or decrease of the
loudness of the acoustic signal.” Appeal Br. 27–28.
Once more Appellants appear to be holding the Examiner to the old
teaching, suggestion, or motivation (“TSM”) standard where there must be
some suggestion or motivation, either in the references themselves or in the
knowledge generally available to one of ordinary skill in the art, to modify
the reference or to combine reference teachings. However, as discussed
above, such a standard is not required. Furthermore, Appellants’ conclusory
assertions that there is “no suggestion” or “no desirability” ignores and fails
to point out the error in the rationale provided by the Examiner, namely, “to
Appeal 2014-004755
Application 11/608,961

19

still enable the user to listen to desired ambient or background noise.” See
Final Act. 9.
Moreover, we do not agree with Appellants’ characterization of
Shuttleworth as “isolat[ing] the ambient noise from the total sound,” which
according to Appellants “is counter to the main purpose of the teachings of
Shuttleworth.” Appeal Br. 27–28. Shuttleworth discloses providing a sound
output that is audible over “undesirable noise” (ambient noise) whose level
rises or falls over time. In other words, Shuttleworth’s system adjusts an
audio output signal device as the ambient noise increases or decreases. See
Shuttleworth ¶¶ 8, 14, and 19. Thus, the ambient sound is not isolated, as
Appellants contend, but rather is maintained at a level lower than the desired
sound output. Appellants fail to cogently explain why Shuttleworth’s
adjustment restricts mixing in ambient noise, as taught by Fitch, to the
acoustic signal of Sanderson and Shuttleworth, as the Examiner proposes, as
long as the mixed in ambient noise component does not overwhelm the
acoustic signal that reproduces the respiratory function of a respirator.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 21 as being unpatentable over Sanderson,
Shuttleworth, and Fitch.

Claims 22 and 23
Each of claims 22 and 23 requires an amplifier that receives an
ambient noise signal from a microphone to provide an amplified ambient
noise signal for mixing in with the acoustic signal. See Appeal Br. 36
(Claims App.).
Appeal 2014-004755
Application 11/608,961

20

Appellants argue that the combined teachings of Sanderson,
Shuttleworth, and Fitch “do not suggest the amplification stage.” See id. at
28. According to Appellants, “optional audio signal [in Fitch] is already in
the form for being fed to a speaker or a headphone” and “Shuttleworth[]
deals with signals that are essentially used for control purposes and not used
to issue a sound from a loudspeaker or headphones.” Id.
We agree with Appellants that the Examiner does not make findings
with respect to the claimed “amplifier.” Although we appreciate that Fitch
discloses amplifier 66, Fitch’s amplifier is used to amplify the output signal
of mixer 65 (i.e., mixed signal) and not an input signal (i.e., ambient noise
signal), as required by claims 22 and 23. See Fitch, col. 13, ll. 36–37.
Accordingly, we do not sustain the rejection of claims 22 and 23 over
the combined teachings of Sanderson, Shuttleworth, and Fitch.

SUMMARY
The Examiner’s decision to reject claims 1, 3–10, 12–18, and 20–23 is
affirmed as to claims 1, 3, 4, 6–10, 12–18, and 21 and reversed as to claims
5, 8, 20, 22, and 23.
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-IN-PART