Ex Parte Wihardja et al

Patent Trial and Appeal Board

Jun 28, 2016

12712108 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121712,108 02/24/2010
27683 7590 06/30/2016
HA YNES AND BOONE, LLP
IP Section
2323 Victory A venue
Suite 700
Dallas, TX 75219
FIRST NAMED INVENTOR
James Walter Wihardja
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
70548.24US01 2012
EXAMINER
LAO,LUNSEE
ART UNIT PAPER NUMBER
2655
NOTIFICATION DATE DELIVERY MODE
06/30/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ExparteJAMES WALTER WIHARDJA, HARRYK. LAU,
TRAUSTI THORMUNDSSON, and Y AIR KERNER
Appeal2014-007080
Application 12/712, 108
Technology Center 2600
Before ST. JOHN COURTENAY III, TERRENCE W. McMILLIN, and
KAMRAN JIVANI, Administrative Patent Judges.
JIV ANI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's non-final decisions rejecting claims 1-21, which are all the
claims pending in the present patent application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify Conexant Systems, Inc. as the real party in interest.
App. Br. 2.
Appeal2014-007080
Application 12/712, 108
STATEMENT OF THE CASE
The present application relates to reducing distortion caused by
speakers. Spec. i-f 2.
Claim 1 is illustrative (disputed limitations emphasized):
1. A playback system comprising:
an equalizer configured to selectively
attenuate a vulnerable frequency band in an input
audio signal; and
a control module operable to adjust the
attenuation of the equalizer when a signal intensity
of the vulnerable frequency band in the input audio
signal exceeds a predetermined distortion power
threshold associated with the vulnerable frequency
band.
The Rejections
1. Claim 16 stands rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
2. Claims 1and9 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Avayu (WO 2007 /07 6299 A2; July 5, 2007).
3. Claims 1, 5-9, and 12-15 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Bayley (US 2006/0147049 Al; July 6, 2006).
4. Claim 16 stands rejected under 35 U.S.C. § 102(b) as
anticipated by Shioda (JP 2007243804 A; Sept. 20, 2007).
5. Claims 2, 10, and 11 stand rejected under 35 U.S.C. § 103(a)
over Bayley and Jaffe (US 4,061,876; Dec. 6, 1977).
6. Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) over
Bayley and Yoshino (US 2004/0071299 Al; Apr. 15, 2004).
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Application 12/712, 108
7. Claims 16, 18, and 19 stand rejected under 35 U.S.C. § 103(a)
over Shioda and Prakash (US 6,405,227 Bl; June 11, 2002).
8. Claim 21 stands rejected under 35 U.S.C. § 103(a) over Bayley
and Christoph (US 2008/0285775 Al; Nov. 20, 2008).
9. Claims 17 and 20 stand rejected under 35 U.S.C. § 103(a) over
Prakash, Shioda, and Bayley.
ANALYSIS
Rejection 1: Written Description
Claims 16 recites in relevant part, "A playback system
comprising: ... a control module operable to adjust the attenuation of the
equalizer based on ... configuration parameters, and without receiving a
signal from a microphone." The Examiner rejects claim 16 as failing to
comply with the written description requirement of 35 U.S.C. § 112, first
paragraph. Non-Final Act. 3. More particularly, the Examiner finds, "the
specification does not clearly disclose the 'without receiving a signal from a
microphone' (such as without receiving a[n] input signal from a microphone
or without receiving a feedback signal from a microphone)." Id. (emphasis
omitted). Appellants contend paragraphs 32 and 44 of the corresponding
published patent application US 2010/0215193 Al, published on August 26,
2010, disclose the disputed claim limitation.
We agree with the Examiner. We find Appellants' cited support does
not identify a description of "a reason to exclude the relevant limitation."
Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir.
2012) ("Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation. Such
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Application 12/712, 108
written description support need not rise to the level of disclaimer. In fact, it
is possible for the patentee to support both the inclusion and exclusion of the
same material."). See also MPEP 2173.05(i) ("Any negative limitation or
exclusionary proviso must have basis in the original disclosure . . . . The
mere absence of a positive recitation is not basis for an exclusion.").
Accordingly, we sustain the Examiner's 35 U.S.C § 112, first paragraph
rejection for failing to comply with the written description requirement.
Rejection 2: Anticipation over Avayu
The Examiner rejects claim 1 as anticipated by Avayu. Non-Final
Act. 4. Appellants contend, inter alia, Avayu fails to anticipate claim 1
because Avayu applies a gain to an entire input signal, rather than selectively
attenuating a vulnerable frequency band in such an input signal, as claimed.
App. Br. 6. The Examiner fails to respond to this argument. See generally,
Ans. 3-1 7. A claim is anticipated only if each and every element as set forth
in the claims is found, either expressly or inherently described in a single
prior art reference. Verdegaal Bros., Inc. v. Union Oil. Co. of Cal., 814 F.2d
628, 631 (Fed. Cir. 1987). The elements must be arranged as required by the
claim, but this is not an ipsissimis verb is test, i.e., identity of terminology is
not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Accordingly,
on the record before us, we do not sustain the Examiner's 35 U.S.C. §
102(b) rejection of claim 1 as anticipated by Avayu.
The Examiner rejects claim 9 as anticipated by Avayu. Non-Final
Act. 4. Appellants contend, inter alia, Avayu fails to anticipate claim 9
because Avayu applies a gain to an entire input signal, rather than selectively
attenuating a vulnerable frequency band in such an input signal, as claimed.
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Application 12/712, 108
App. Br. 6. The Examiner fails to respond to this argument. See generally,
Ans. 3-1 7. A claim is anticipated only if each and every element as set forth
in the claims is found, either expressly or inherently described in a single
prior art reference, and arranged as required by the claim. Verdegaal Bros.,
814 F .2d at 631; Bond, 910 F .2d at 832. Accordingly, on the record before
us, we do not sustain the Examiner's 35 U.S.C. § 102(b) rejection of claim 9
as anticipated by A vayu.
Rejection 3: Anticipation over Bayley
As alternative grounds from those discussed above, the Examiner
rejects claim 1 as anticipated by Bayley. Non-Final Act. 4--5. Appellants
"object to the use of multiple references to reject" claim 1. App. Br. 7.
Appellants' objection is of no moment. The Examiner does not improperly
combine multiple references in a single anticipation rejection, but rather
separately rejects claim 1 first as fully-disclosed and thus anticipated by
Avayu, and second as fully-disclosed and thus anticipated by Bayley. Non-
Final Act. 4--5. Finding that multiple prior art references each contain an
anticipatory disclosure of a single claim is not Examiner error.
Appellants further contend the Examiner errs because in Bayley, "if a
sound would 'startle' a listener, it is modified, regardless of whether the
sound would cause distortion, and a distorted sound that does not 'startle' a
listener would not be modified." App. Br. 8. Appellants elaborate,
The Examiner's construction of the term startle as being a sudden
noise or sharp movement is thus different from the definition for
distortion that would be understood by one of ordinary skill,
because a sudden noise is not an undesired change in a
waveform, and because an undesired change in a waveform
might be something other than a sudden noise.
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Application 12/712, 108
Reply Br. 2. Finally, Appellants contend, "there is no predetermined
distortion power threshold associated with a vulnerable frequency band
disclosed in Bayley, as shown in the figures of Bayley, because the amount
of SPL increase in the various graphs could theoretically be infinite,
assuming that it does not cross the 'startle' threshold." Reply Br. 3. See
Verdegaal Bros., 814 F.2d at 631; Bond, 910 F.2d at 832.
We agree with Appellants. The Examiner fails in the record before to
identify with particularity Bayley's precise disclosure of a "predetermined
distortion power threshold associated with a vulnerable frequency band," as
claimed. 2 Further, we agree with Appellants that, contrary to the
Examiner's findings (Ans. 5), the broadest reasonable interpretation of the
claimed "distortion" does not necessarily encompass the "startle" described
in Bayley. Although we agree with the Examiner the two terms may be
correlated (i.e., sound distortion may startle the listener), we conclude the
claim term "distortion" does not necessarily read on Bayley's "startle"
sound (e.g., Fig. 9), because we find a sufficiently loud but undistorted
sound would also startle a listener in Bayley.3 Thus, we find a high sound
pressure level (SPL) sound in Bayley (e.g., Fig. 9) that "startles" is not
inherently a distorted sound that "exceeds a predetermined distortion power
2 Appellants' Specification defines (1-2): "For the purposes of this
disclosure, the distortion power threshold for a given frequency band is the
amount of power in the given frequency band the speaker can tolerate before
the distortion becomes unacceptable for a particular audio application."
3 "Inherency . . . may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient." In re Robertson, 169 F.3d 743, 745, (Fed. Cir. 1999).
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Application 12/712, 108
threshold associated with the vulnerable frequency band," as claimed (Claim
1; see similar language claim 9). See n.3 supra.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 102(b)
rejections of independent claims 1 and 9, nor associated dependent claims 5-
8 and 12-15, also rejected under §102 over Bayley.
Rejection 4: Anticipation over Shioda
The Examiner rejects claim 16 as anticipated by Shioda. Non-Final
Act. 4. Appellants contend, inter alia, Shioda recites the presence of a
microphone and thus fails to disclosure the claimed system including "a
control module operable ... without receiving a signal from a microphone."
We agree with Appellants that the embodiment of Shioda cited by the
Examiner discloses a system including the receipt of signals from a
microphone. Shioda, i-f 17. Thus the system of Shioda is not "arranged as in
the claim under review." Bond, 910 F.2d at 832. Accordingly, on the record
before us, we do not sustain the Examiner's 35 U.S.C. § 102(b) rejection of
claim 16 as rejected by Shioda.
Rejections 5-9: Obviousness
Because the Examiner has not shown the additional cited secondary
references overcome the aforementioned deficiencies regarding the base
Bayley and Shioda references relied on to (separately) show anticipation of
the aforementioned independent claims, we do not sustain the Examiner's 35
U.S.C. § 103(a) rejections of the remaining dependent claims on appeal. .
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Appeal2014-007080
Application 12/712, 108
DECISION
We affirm the Examiner's decision rejecting claim 16 under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the written description
requirement. .
We reverse the Examiner's decisions rejecting claims 1, 5-9, and 12-
16 under 35 U.S.C. § 102.
We reverse the Examiner's decisions rejecting claims 2--4, 10, 11, and
16-21under35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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