Ex Parte Xiang et al

Patent Trials and Appeals Board

Apr 17, 2019

12879218 - (D) (P.T.A.B. Apr. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/879,218 09/10/2010
140905 7590 04/19/2019
Schwegman Lundberg & Woessner/ Starkey
P.O. Box 2938
Minneapolis, MN 55402
FIRST NAMED INVENTOR
JuanJuan Xiang
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.
899.240US1 6523
EXAMINER
WOZNIAK, JAMES S
ART UNIT PAPER NUMBER
2657
NOTIFICATION DATE DELIVERY MODE
04/19/2019 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):
uspto@slwip.com
slw@blackhillsip.com
docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUANJUAN XIANG, MARTIN MCKINNEY,
KELLY FITZ, and TAO ZHANG
Appeal2018-007686
Application 12/879 ,218
Technology Center 2600
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
DIRBA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner's rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 This Decision uses the following abbreviations: "Spec." for the original
specification, filed Sept. 10, 2010, claiming the benefit of a U.S. provisional
application; "Final Act." for the Final Office Action, mailed July 19, 2017;
"Br." for Appellants' Appeal Brief, filed Feb. 15, 2018; and "Ans." for
Examiner's Answer, mailed Apr. 3, 2018.
2 According to Appellants, the real party in interest is Starkey Laboratories,
Inc. Br. 2.
Appeal2018-007686
Application 12/879 ,218
BACKGROUND
Appellants' disclosed embodiments and claimed invention relate to a
sound classification system for hearing aids. Spec. ,r 2.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A hearing aid, comprising:
a microphone configured to sense an environmental sound; and
a processor including a sound classification module coupled to
the microphone and configured to classify the sound by
executing a classification algorithm, the processor
configured to process the sound using an outcome of the
classification of the sound for specified hearing
assistance functions, the sound classification module
configured to classify sound from the microphone using
an environment classification scheme of two sequential
stages having classifiers chosen from classifiers that use
a Hidden Markov Model or Gaussian Mixture Model,
feature sets each specific to a chosen classifier of the
classifiers, and features within each of the feature sets,
the classifiers, feature sets, and number of the features
within the each of the feature sets selected for each stage
to enhance classification performance and reduce
associated computational cost.
Br. 13 (Claims App'x).
THE REJECTIONS
RI. Claim 6 stands rejected under pre-AIA 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Final Act. 5-6.
R2. Claims 1, 2, 4---6, 10, 11, and 13-18 stand rejected under pre-
AIA 35 U.S.C. § I03(a) as obvious over Kates (WO 2008/028484 Al,
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Application 12/879 ,218
published Mar. 13, 2008) and Alexandre (Enrique Alexandre, et al., Feature
Selection for Sound Classification in Hearing Aids Through Restricted
Search Driven by Genetic Algorithms, IEEE TRANSACTIONS ON AUDIO,
SPEECH, AND LANGUAGE PROCESSING, Nov. 2007, at 2249). Final Act. 7-10.
R3. Claims 3 and 12 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as obvious over Kates, Alexandre, and Scheirer (US 6,570,991 Bl,
issued May 27, 2003). Final Act. 10-11.
R4. Claims 7-9, 19, and 20 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as obvious over Kates, Alexandre, and Sewall (US 6,708,146 Bl,
issued Mar. 16, 2004). Final Act. 11-12.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). To the extent Appellants have not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Written Description Rejection RI of Claim 6
Claim 6 recites: "wherein the sound classification module comprises a
feature set having at least three features for sound classification." Br. 14
(Claims App'x).
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Application 12/879 ,218
The Examiner rejected dependent claim 6 for lack of written
description, finding the Specification and originally filed claims do not
demonstrate possession of a feature set having "at least three" features.
Final Act. 6. According to the Examiner, the Specification explains the
feature set includes five to seven features in order to balance performance
and computational cost. Id. ( citing Spec. ,r,r 28-30); see Spec. ,r 30
("[U]sing more than seven features only slightly improves the performance
but incurs great computational cost."), Figs. 3, 4 (showing relationship
between error rate and number of features). The Examiner noted the claim
recites the "number of the features ... [is] selected ... to enhance
classification performance and reduce associated computational cost." 3
Final Act. 6. Because the originally filed Specification states these goals are
accomplished with five to seven features, the Examiner found the claim's
recitation of "more than three features" lacked written description support.
Id.
Appellants allege the Examiner failed to present a prima facie case
that the claims were not enabled, but do not address the written description
requirement. Br. 10-11. Appellants contend the Specification "enable[ s ]"
the claim because the range provided by claim 6 includes the embodiment
disclosed in the Specification. Id. at 11 ( citing Spec. ,r,r 25-30). In the
Answer, the Examiner responds by reiterating the rejection "is not one of
enablement as argued by the appellants, but one of written description."
Ans. 15. Appellants elected not to file a Reply Brief to respond to the
Examiner's findings and explanation.
3 This language is located in claim 1, from which claim 6 depends.
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Application 12/879 ,218
Appellants' arguments do not persuade us of error. First, the written
description requirement "is separate and distinct from the enablement
requirement." Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
1991 ). Accordingly, Appellants' arguments regarding enablement do not
respond to the Examiner's rejection.
In addition, Appellants' statements do not demonstrate error in the
written description rejection. The Examiner found the Specification does
not describe an environment classification scheme that "enhance[ s]
classification performance and reduce[ s] associated computational cost" by
selecting less than five or more than seven features. Final Act. 6.
Appellants do not dispute this finding (Br. 11 ), and we perceive no error in it
(see Spec. ,r,r 24--30, Figs. 3, 4). From this, the Examiner found the
Specification does not support claim 6. Final Act. 6; see also Ariad Pharm.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) (The
test for compliance with the written description requirement is "whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date."). Accordingly, the Examiner presented a prima facie case,
which shifted the burden of coming forward with argument or evidence to
Appellants. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (Ifan
Examiner presents a prima facie case in support of a rejection, "the burden
of coming forward with evidence or argument shifts to the applicant.").
Appellants allege the claim should not be rejected because the
Specification's disclosed embodiment is within the range recited by the
claim. Br. 11. But this fact, by itself, does not show that the Specification
conveys possession of the claimed range. See Gentry Gallery, Inc. v.
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Application 12/879 ,218
Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998) (Although a claim is
not necessarily limited to the preferred embodiment, "the scope of the right
to exclude may be limited by a narrow disclosure."); see also Regents of the
Univ. of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997)
(rejecting party's contention "that a description of a species always
constitutes a description of a genus of which it is a part"). Appellants do not
provide any further explanation or evidence to indicate that the Specification
demonstrates possession of the claimed invention.
Accordingly, Appellants do not persuade us of Examiner error, and
we sustain the written description rejection RI of dependent claim 6.
Obviousness Rejection R2 of Claims 1, 2, 4-6, 10, 11, and 13-18
Appellants argue claims 1, 2, 4---6, 10, 11, and 13-18 together as a
group. See Br. 7-9. Therefore, consistent with the provisions of 37 C.F.R.
§ 4I.37(c)(l)(iv), we limit our discussion to independent claim 1.
Independent claim 10 and dependent claims 2, 4--6, 11, and 13-18 stand or
fall with claim 1.
Appellants argue the references fail to teach or suggest the limitations
of claim 1 because "Kates does not use a sequential two-stage classification"
and "Alexandre does not include classifiers that use the Hidden Markov
Model." Br. 7. However, as explained by the Examiner, this argument does
not address the rejection as articulated. See Ans. 9-10. The Examiner found
Alexandre (not Kates) teaches two-stage classification, and Kates (not
Alexandre) teaches classifiers that use the Hidden Markov Model. Final
Act. 4, 7-8. Appellants elected not to file a Reply Brief to respond to the
Examiner's findings and conclusions. Accordingly, we are not apprised of
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error based on this argument. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.").
Appellants next argue the references fail to "select a number of the
features within the each [sic] of the feature sets for each stage to enhance
classification performance and reduce associated computational cost." 4
Br. 7-8 ( emphasis added). The Examiner found these claimed aspects are
taught by Alexandre (Final Act. 8), but Appellants address neither the
Examiner's factual findings nor the teachings of Alexandre (see Br. 8). In
addition, the Examiner reiterates and expands on these findings in the
Answer (see Ans. 12-13), but Appellants elected not to respond in a Reply
Brief. Appellants' conclusory argument fails to identify error in the
Examiner's findings, and based on our review of the reference, we perceive
no such error. See, e.g., Alexandre§ II.B (Alexandre's "goal is the
implementation of an efficient, resource saving automatic sound
classification system that can be programmed in a DSP-based hearing aid.").
Accordingly, we are not apprised of error based on this argument.
4 In the event of further prosecution, the Examiner may consider a rejection
of independent claims 1 and 10 under pre-AIA 35 U.S.C. § 112, second
paragraph, as being indefinite. The claims recite: "to enhance classification
performance and reduce associated computational cost." Br. 13 (Claims
App'x). The meets and bounds of this phrase appear to be unclear, and we
are not aware of an objective standard for determining whether this
limitation is satisfied. See Berkheimer v. HP Inc., 881 F.3d 1360, 1364
(Fed. Cir. 2018) (holding term "minimal redundancy" indefinite because
term lacked objective boundary). Although the Board is authorized to reject
claims under 37 C.F.R. § 4I.50(b), no inference should be drawn when the
Board does not elect to do so. See MPEP § 1213.02 (9th ed. 2018).
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Third, Appellants allege error in the Examiner's motivation to
combine Kates and Alexandre. Br. 8. Appellants assert one skilled in the art
would not have combined these references because Kates already includes
an approach for classifying listening situations that is not a multistage
approach. Id. This argument also does not persuade us of error. The
Examiner found it would have been obvious to modify Kates' approach to
include Alexandre's multi-stage approach in order to "better minimize
power consumption." Final Act. 8. The Examiner also finds the
combination of Alexandre and Kates "provides clear predictable results,"
and Alexandre provides explicit motivation for the proposed combination.
Ans. 12-13 (quoting Alexandre§ II.Bas detailing some advantages of
multi-state approach). We determine the Examiner provided a "rational
underpinning to support the legal conclusion of obviousness." In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398,418 (2007).
Appellants do not respond to the reasoning or findings presented by
the Examiner. See In re Oetiker, 977 F .2d at 1445 (If an examiner presents a
prima facie case, "the burden of coming forward with evidence or argument
shifts to the applicant."). Appellants only argue that Kates' disclosure of
one classification approach means it would not have been obvious to modify
Kates with a different approach; 5 however, the Examiner explained why a
5 Appellants also assert "such a modification would be contrary to the
teachings of Kates," but provide no explanation or evidence in support.
Br. 8. We are not persuaded by any argument that Kates teaches away from
the claimed combination because Appellants identify ( and our review of the
reference reveals) no portion of Kates that criticizes, discredits, or otherwise
discourages the proposed combination. See In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994) (A reference teaches away "when a person of ordinary skill,
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person of ordinary skill would have been motivated to modify Kates to
include a different, better approach, as taught by Alexandre. See KSR, 550
U.S. at 420 ("[A]ny need or problem known in the field ... can provide a
reason for combining the elements in the manner claimed."). Appellants do
not contend this modification is beyond the level of skill of one of ordinary
skill in the art, and Appellants do not assert the modification is more than the
use of known elements to yield predictable results. In short, Appellants have
not explained why a person of ordinary skill in the art would not have
reached the conclusions reached by the Examiner. Accordingly, Appellants
do not persuade us of error in the Examiner's rationale.
Finally, Appellants contend "neither Kates nor Alexandre perform the
features at each stage of the classification scheme, as recited." Br. 8. This
argument does not apprise us of error because Appellants fail to identify a
claim limitation requiring "perform[ance of] the features at each stage," as
alleged, and because Appellants include no explanation or support for the
conclusion that this aspect is lacking from the references. See 37 C.F.R.
§ 4I.37(c)(l)(iv) ("The arguments shall explain why the examiner erred as
to each ground of rejection contested by appellant."). Accordingly, we are
not apprised of error based on this argument.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner's resulting legal conclusion of obviousness. We
upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant.").
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sustain the Examiner's obviousness rejection of independent claim 1 and
grouped claims 2, 4---6, 10, 11, and 13-18, which fall therewith.
Obviousness Rejections R3 and R4 of Claims 3, 7-9, 12, 19, and 20
The Examiner rejects claims 3, 7-9, 12, 19, and 20 over a
combination of Kates, Alexandre, and either Scheirer or Sewall. Final
Act. 10-12. For these claims, Appellants rely on the same arguments made
with respect to independent claims 1 and 10. Br. 9-10. These arguments,
however, are not persuasive for the reasons discussed above. Consequently,
we find Appellants' arguments do not show error in the Examiner's factual
findings and the conclusion of obviousness of claims 3, 7-9, 12, 19, and 20.
DECISION
We affirm the Examiner's decision rejecting claims 1-20.
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
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