Ex Parte Wang et al

Board of Patent Appeals and Interferences

Jun 27, 2012

10302746 (B.P.A.I. Jun. 27, 2012)

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.
10/302,746 11/20/2002 Ye Wang 944-001.088 1814
4955 7590 06/28/2012
WARE FRESSOLA VAN DER SLUYS & ADOLPHSON, LLP
BRADFORD GREEN, BUILDING 5
755 MAIN STREET, P O BOX 224
MONROE, CT 06468
EXAMINER
FLETCHER, MARLON T
ART UNIT PAPER NUMBER
2832
MAIL DATE DELIVERY MODE
06/28/2012 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 YE WANG and MATTI HAMÄLÄINEN
____________

Appeal 2010-001135
Application 10/302,746
Technology Center 2800
____________

Before JOSEPH F. RUGGIERO, DENISE M. POTHIER, and
BRIAN J. McNAMARA, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed Jan. 6, 2006), the Answer (mailed June
10, 2009), and the Reply Brief (filed July 31, 2009).
Appeal 2010-001135
Application 10/302,746

2
Appellants’ Invention
Appellants’ invention relates to audio data streaming in which two
different types of coder/decoders (codecs) are used to separately stream
synthetic audio signals and natural audio signals. Audio signals indicative
of voice are encoded by a voice-specific encoder, while audio signals
indicative of instrumental sounds are encoded by a different encoder such as
a Scalable Polyphony Musical Instrument Digital Interface (SP-MIDI)
synthesizer. See generally Spec. 5:5-20.

Claim 1 is illustrative of the invention and reads as follows:

1. A method of audio streaming between at least a first electronic device
and a second electronic device, wherein a first audio signal and a second
audio signal having different audio characteristics are encoded in the first
electronic device for providing audio data to the second electronic device,
said method characterized by
encoding the first audio signal in a first audio format, by
embedding the encoded first audio signal in the audio data, by
encoding the second audio signal in a second audio format different
from the first audio format, and by
embedding the encoded second audio signal in the audio data, so as to
allow the second electronic device to separately reconstruct the first audio
signal based on the encoded first audio signal and reconstruct the second
audio signal based on the encoded second audio signal.

Appeal 2010-001135
Application 10/302,746

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The Examiner’s Rejections

The Examiner’s Answer cites the following prior art references:
Eleftheriadis US 6,044,397 Mar. 28, 2000
Chihara US 6,714,233 B2 Mar. 30, 2004
(filed June 20, 2001)

Claims 1-27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chihara in view of Eleftheriadis.

ANALYSIS
Claims 1-20
Appellants contend, with respect to the obviousness rejection of
independent claim 1, that Eleftheriadis does not overcome what the
Examiner has identified as the deficiency of Chihara, i.e., the lack of
disclosure of two audio encoders that encode different audio signals into
different audio formats. According to Appellants (App. Br. 12; Reply Br. 11
and 15), while Eleftheriadis discloses two separate audio encoders 119 and
120 to encode, respectively, natural audio objects and synthetic audio
objects, the encoding is performed according to a single format, i.e., the
MPEG-4 standard (col. 4, ll. 6-62).
We agree with Appellants. We find that the Examiner has not
adequately explained where Eleftheriadis discloses that the natural audio and
synthetic audio encoders encode audio signals in different audio formats as
claimed. Accordingly, even if Chihara and Eleftheriadis were combined as
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Application 10/302,746

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proposed by the Examiner, the resultant combination will not satisfy all of
the limitations of independent claim 1.
1

In view of the above discussion, since we are of the opinion that the
proposed combination of references set forth by the Examiner does not
support the obviousness rejection, we do not sustain the rejection of either
independent claim 1 or claims 2-20 dependent thereon.

Claims 21-27
We sustain the Examiner’s obviousness rejection of independent
claims 21 and 26, as well as the rejection of dependent claims 22-25, and 27
which are not separately argued. Appellants’ arguments rely on those
asserted against the rejection of independent claim 1 and reiterate the
contention that neither Chihara nor Eleftheriadis discloses encoding or
decoding audio signals in two different audio formats (App. Br. 16-17;
Reply Br. 11-15). These arguments, however, are not commensurate with
the scope of independent claims 21 and 26. Although claims 21 and 26
include limitations requiring first and second audio encoders which encode
audio signals in first and second audio formats, there is no requirement that
the second audio format is different from the first audio format as required
by previously discussed independent claim 1.
2

1
Claim 1 includes the word “by” at the end of each method step preceding
the following step. We interpret this usage as mere superfluous wording
which has no limiting relationship to the recited steps.
2
The preambles of independent claims 21 and 26 recite that the first and
second audio signals have “different audio characteristics.” This recitation
does not distinguish over the natural audio objects and synthetic audio
objects, which have different audio characteristics, encoded by the encoders
of Eleftheriadis.
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The Examiner finds, as acknowledged by Appellants (App. Br. 12),
that Eleftheriadis discloses first and second audio encoders 119 and 120
which encode, respectively, natural language objects and synthetic audio
objects for providing first and second encoded audio data streams (Fig. 1A;
col. 4, ll. 39-62). While we agree with Appellants, as previously discussed,
that the plural encoders of Eleftheriadis encode audio signals in the same
format, i.e., MPEG-4, the mere claimed recitation of “first” and “second”
formats does not require that such first and second formats be different from
each other. Conversely, the claimed “first” and “second” format language
does not preclude such formats from being the same as in Eleftheriadis. As
to the further claimed features of independent claims 21 and 26, we also
agree with the Examiner’s finding (Ans. 5) that Eleftheriadis discloses that
the first and second audio signals are reconstructed by first and second
decoders and mixed at the receiving device (Fig. 1B, col. 5, ll. 29-46).
3

We further find that the Examiner has provided a valid, articulated
line of reasoning with a rational underpinning to support the conclusion of
obviousness with respect to the proposed combination of the multiple audio
encoding teachings of Eleftheriadis with Chihara (Ans. 6-7). See KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)). Appellants’ argument that there would be no
incentive to combine Chihara and Eleftheriadis because the short-range
communication system of Chihara would be incompatible with the MPEG-4
editing system of Eleftheriadis is not persuasive (App. Br. 16-17; Reply Br.

3
Claim 26 recites two instances of first and second audio coding modules.
We understand the first instance as intending to refer to encoders which
perform the encoding operation and the second instance to refer to decoders
which perform the reconstruction operation.
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15-16). Appellants’ further argument (Reply Br. 16) that the system of
Eleftheriadis would be inoperable if it were modified by replacing one of the
MPEG-4 encoders with a non-MPEG-4 encoder from Chihara is also not
persuasive.
It is apparent to us that the Examiner is not suggesting the bodily
incorporation of the MPEG-4 encoders of Eleftheriadis into the
communication system of Chihara, or the non-MPEG-4 encoders of Chihara
into Eleftheriadis (Ans. 6-7). Rather, it is Eleftheriadis’s teaching of
providing multiple audio encoders for encoding audio signals with different
audio characteristics, such as natural audio and synthetic audio, that is relied
upon as a rationale for the proposed combination with Chihara. “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” See In re Keller, 642 F.2d
413, 425 (CCPA 1981), In re Nievelt, 482 F.2d 965, 968 (CCPA 1973).

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CONCLUSION
Based on the analysis above, we conclude that Appellants have shown
that the Examiner erred in rejecting claims 1-20, but have not shown that the
Examiner erred in rejecting claims 21-27.

DECISION
The Examiner’s decision rejecting claims 1-27 under 35 U.S.C.
§ 103(a) is affirmed-in-part.
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

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