Ex Parte Arun

Board of Patent Appeals and Interferences

Apr 7, 2009

10784569 (B.P.A.I. Apr. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte UMA ARUN
____________

Appeal 2009-0804
Application 10/784,569
Technology Center 2600
____________

Decided1: April 7, 2009
____________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and THOMAS S.
HAHN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0804
Application 10/784,569

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 21 and 23-36. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.

STATEMENT OF THE CASE
Appellant invented a method for tuning a hands-free mobile device
used in a motor vehicle. The method uses a noise suppression algorithm to
adjust for ambient noise within the vehicle based on information, such as
vehicle speed, sounds in the vehicle, weather, and surface road conditions.2
Independent claim 21 is reproduced below:
21. A method of tuning a hands-free system in a mobile
vehicle, the method comprising:
receiving a plurality of vehicle condition inputs,
including at least one road input based on global positioning
coordinates, via a vehicle communication bus;
creating a noise parameter based on the vehicle condition
inputs; and
adjusting a noise suppression algorithm of the hands-free
system based on the created noise parameter.

The Examiner relies upon the following as evidence in support of the
rejection:
Tomisawa US 5,850,458 Dec. 15, 1998
Cairns US 2002/0097884 A1 July 25, 2002

2 See generally Spec. 1:10-2:7 and 13:15-18:22.
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Venkatesh US 6,674,865 B1 Jan. 6, 2004
Stankewitz US 2004/0142672 A1 July 22, 2004
(filed Nov. 6, 2003)
Schubert US 6,898,501 B2 May 24, 2005
(filed July 15, 1999)
Grivas US 2005/0130723 A1 June 16, 2005
(filed Dec. 16, 2003)

(1) Claims 21 and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cairns and Schubert (Ans. 3-4).
(2) Claims 23 and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cairns, Schubert, and Venkatesh (Ans. 4).
(3) Claims 25, 28, 30-33, 35, and 36 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Cairns, Schubert, Grivas, and Official
Notice3 (Ans. 6-9).
(4) Claims 29 and 34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cairns, Schubert, Grivas, Official Notice,4 and
Venkatesh (Ans. 9).
(5) Claims 21 and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Stankewitz and Schubert (Ans. 4-5).
(6) Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stankewitz, Schubert, and Tomisawa (Ans. 5-6).
(7) Claims 23 and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Stankewitz, Schubert, and Venkatesh (Ans. 6).

3 While not the heading of the rejection (Ans. 6-7), the body of the rejections
includes taking Official Notice (Ans. 7-9).
4 The rejection of claims 29 and 34 follows from the rejection of claims 28
and 33 (Ans. 9), which includes the taking of Office Notice.
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Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer5 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
Regarding the obviousness rejections including Cairns, we group the
claims as follows: (1) claim 21; (2) claim 26; (3) claims 23 and 27; (4) claim
25; (5) claims 28-32; (6) claims 33, 35, and 36; and (7) claim 34. With
respect to the obviousness rejections citing to Stankewitz, we group the
claims as follows: (1) claim 21; (2) claim 26; (2) claim 24; and (3) claims 23
and 27.

I. OBVIOUSNESS REJECTIONS INVOLVING CAIRNS
(1) Claim 21
Regarding independent claim 21, the Examiner finds that Cairns and
Schubert collectively teach all the recited elements (Ans. 3-4). Appellant
argues: (1) the bumpiness level taught by Schubert is not a road input as
recited in claim 21; (2) there is no motivation to combine Schubert with
Cairns because Cairns teaches away from such a combination; and (3)
Schubert is non-analogous art (App. Br. 9; Reply Br. 2).

5 Throughout this opinion, we refer to (1) the most recent Appeal Brief filed
December 11, 2006; (2) the Examiner’s Answer mailed September 11, 2006
and supplemented August 20, 2007; and (3) the Reply Brief filed October 5,
2006.
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ISSUES
The following issues have been raised in the present appeal:
(1) Under § 103, has Appellant shown the Examiner erred in
finding that the bumpiness level taught by Schubert is a road input based on
global positioning coordinates as recited in claim 21?
(2) In rejecting claim 21 under § 103, has Appellant shown that
Cairns teaches away from combining Schubert’s bumpiness level with
Cairns’ disclosure of using only the vehicle’s mechanical and electrical
conditions to determine the noise parameter?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Cairns
1. Cairns discloses a vehicle 10 (e.g., car, truck, bus, boat, or plane) that
has a mobile terminal 20 and a hands-free adapter 30 mounted on
vehicle 10. (Cairns, ¶ 9; Fig. 1).
2. Cairns discloses vehicle 10 includes a noise reduction device 40,
coupled to the hands free adapter 30, that processes the input from a
microphone array 14 and uses a noise reduction algorithm to reduce
the background audio noise. (Cairns, ¶¶ 2, 4, 10, and 11; Fig. 1).
3. More specifically, various parameters are supplied to the noise
reduction algorithm. These parameters include characteristics related
to the physical mechanical/electrical condition of the vehicle (e.g.,
vehicle speed, motor rpm, radio on/off status, open/closed status of
the windows) and exclude characteristics not related to
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mechanical/electrical condition of the vehicle (i.e., direct
measurements of the ambient noise level) (Cairns, ¶¶ 4 and 11-13).
4. Cairns detects the vehicle conditions at 210, determines the
parameters based on the conditions 230, and applies the parameters to
the noise reduction algorithm 240. (Cairns, ¶ 14; Fig. 3).
5. Cairns discloses that the vehicle includes tires. (Cairns, ¶ 9; Fig. 1).

Schubert
6. Schubert teaches a vehicle with a positioning control system that uses
geo-reference maps 350 stored on memory card 306 that are
transferable from an office or a computer 304 to the memory card
306. (Schubert, col. 17, ll. 7-19 and 56-61; Fig. 12).
7. Schubert’s geo-reference map 350 includes longitude and latitude
coordinates, altitudes, and bumpiness levels for each point or location.
For example, the road 352 has a bumpiness level 1 (e.g., point nos. 1-
4), a portion 356 of the field 354 has a bumpiness level 2 (e.g., point
no. 5), and another portion 358 of the field 354 has a bumpiness level
3. (Schubert, col. 17, l. 61-col. 18, l. 37; Figs. 13-14).
8. Schubert teaches the bumpiness level affects vibrations within a car
and uses the bumpiness level data to adjust the performance
parameters of a vehicle system. (Schubert, col., 1, ll. 19-29 and col.
18, ll. 8-37)

Specification
9. The Specification states various road conditions change the ambient
noise level within a vehicle, including the type and condition of the
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road, such as a paved road, highway, or a dirt road (Spec. 14:1-12).

PRINCIPLES OF LAW
Discussing the question of obviousness of a patent that claims a
combination of known elements, KSR Int’l v. Teleflex, Inc., 550 U.S. 398,
127 S. Ct. 1727 (2007), explains:
When 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. For the same reason, if 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. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black
Rock[, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740.

ANALYSIS
Cairns discloses a hands-free system 30 in a mobile vehicle 10
with a noise reduction device 40 (FF 1-2). Cairns discloses receiving
a plurality of vehicle condition inputs at location 210, such as vehicle
speed and whether the window is open or closed (FF 3), creating a
noise parameter based on the vehicle conditions at step 230, and
adjusting a noise suppression algorithm based on the noise parameter
at step 240 (FF 4). Since reducing the audio background noise of a
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hands-free system 30 in a vehicle 10 involves adjusting parameters
(FF 3-4), Cairns also discloses a method for tuning a hands-free
system 30 in a mobile vehicle 10 to the noise environment (FF 1-4).
The Examiner admits (Ans. 3), however, that Cairns does not disclose
a vehicle condition input used to create the noise parameter that also
includes a road input based on global positioning coordinates. The
Examiner relies on Schubert’s disclosure of a geo-reference map 350
to teach this missing limitation in claim 21 (Ans. 3-4).
Appellant first argues that the bumpiness level data in
Schubert’s geo-reference map 350 is not the same as the claimed
“road input” that is based on global positioning coordinates. We are
not persuaded. For each data point (e.g., data point no. 1) on the geo-
reference map 350, there is a corresponding longitude and latitude
coordinate and a bumpiness level (FF 7). For example, points 1
through 4 are located on road 352 at given longitudes and latitudes
and have a bumpiness level of 1, while point 5 of field region 356 has
another longitude and latitude and a bumpiness level of 2. (Id.) The
Specification similarly describes one such road input based on global
positioning coordinates to include the type of road surface the driver
is on, such as a paved or dirt road (FF 9). Thus, each bumpiness level
correlates to or is based on global positioning coordinates (e.g.,
longitude/lateral coordinates), and Schubert teaches a road input based
on global positioning coordinates as recited in claim 21.
Appellant further argues that the bumpiness level of the road is
not a physical, mechanical, or electrical vehicle condition that Cairns
uses to adjust the noise suppression algorithm (App. Br. 9). Cairns
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discusses using only the vehicle’s physical, mechanical and electrical
conditions to adjust a noise suppression algorithm of an audio
background noise reduction device 40 (FF 2-4) and excludes direct
measurements of the vehicle’s ambient noise (FF 3). Clearly, the
bumpiness level is not a direct measurement of the ambient noise.
Moreover, the bumps in the road come in contact with a vehicle’s tires
(FF 5) and, thus, affect a mechanical condition of the vehicle.
Schubert explains that the mechanical condition resulting from the
bumpiness level of the road is vehicle vibrations (FF 8). Additionally,
anyone, including an ordinarily skilled artisan, who has driven from a
paved road to a dirt road, knows that the dirt road creates more vehicle
vibrations, which translate into more noise within the vehicle. Similar
to Cairns’ recognition that vehicle speed and motor rpm affect noise
within a vehicle due to the vibrations (see FF 2-3), one of ordinary
skill in the art would have recognized that considering the road
surface type, such as Schubert’s consideration of the bumpiness level,
improves application of Cairns’ noise suppression algorithm (FF 2-4)
by factoring in another mechanical property affecting noise within a
vehicle. See KSR, 127 S. Ct. at 1740.
Additionally, Cairns teaches the hands-free system 40 can be
used with many different types of vehicles, including trucks, boats,
and planes (FF 1). Cairns, therefore, suggests placing its hands-free
noise reduction system 40 within many types of vehicles, including
the vehicle disclosed in Schubert. See FF 6. In such a vehicle,
Schubert identifies the bumpiness of the road as causing vibrations
within the vehicle (FF 8) and uses the information to adjust the
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vehicle performance. (Id.) An ordinarily skilled artisan would have
recognized that a mechanical property of a Schubert vehicle would
include vibrations generated by a road’s bumpiness level and that
factoring such a characteristic into Cairns’ hands-free system 30
located within Schubert’s vehicle would certainly improve Cairns’
audio noise reduction device 40 (FF 2-3). Thus, we are not convinced
that Cairns’ discussion of using only vehicular mechanical and
electrical conditions teaches away from a combination with Schubert.
Appellant also contends that Schubert is non-analogous art
(Reply Br. 2). This argument was not timely raised in the Appeal
Brief, but rather was brought up for the first time in the Reply Brief.
As such, this argument is waived.6 Furthermore, we are persuaded
that Schubert is reasonably pertinent to the problem addressed by
Appellant. The Specification identifies many road conditions that
change the ambient noise within a vehicle, including type and
condition of the road (FF 9). Schubert similarly recognizes that road
condition affects vibrations (FF 8) and noise within a vehicle.
For the above reasons, Appellant has not shown the Examiner
erred in rejecting claim 21 under 35 U.S.C. § 103(a) as being
unpatentable over Cairns and Schubert.

6 See Optivus Tech., Inc. v. Ion Beam Appls. S.A., 469 F.3d 978, 989 (Fed.
Cir. 2006) (“[A]n issue not raised by an appellant in its opening brief … is
waived.”) (citations and quotation marks omitted).
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(2) Claim 26
Claim 26 recites an additional step of determining a change in a type
of road input based on the received road input and adjusting the noise
suppression algorithm in response to the change in the road input type. The
Examiner finds that the combination of Cairns and Schubert teaches all the
recited elements of claim 26 (Ans. 3-4). Appellant contends that the
Examiner uses hindsight and provides no evidence to conclude that changing
global coordinates would result in a change in a bumpiness level or adjust
the noise suppression algorithm appropriately (App. Br. 9-10). Therefore,
has Appellant shown that the Examiner erred in rejecting claim 26 under §
103 by relying on impermissible hindsight to teach Cairns and Schubert
collectively determine a change in the road input and adjust a noise
suppression algorithm in response to the road input change.
Schubert demonstrates that when the driver moves from a road 352
(e.g., data point nos. 1-4) to the field 354 (e.g., data point no. 5), the
bumpiness level changes from level 1 to level 2 (FF 7). By incorporating
Schubert’s geo-reference maps with Cairns’ noise suppression algorithm, the
combined Cairns/Schubert device would include determining the change in
road type when the user moves from data point nos. 1 through 4 to data point
no. 5. (Id.) Additionally, for the reasons discussed above in connection with
claim 21, we find that the combination of Cairns and Schubert provide
ample reason to include a bumpiness level as an additional mechanical
condition characteristic of the vehicle’s noise suppression algorithm in order
to improve Cairns’ audio noise reduction device 40. Therefore, we are not
persuaded that the Examiner has engaged in impermissible hindsight in
rejecting claim 26.
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For the above reasons, Appellant has not shown the Examiner erred
in rejecting claim 26 under 35 U.S.C. § 103(a) as being unpatentable over
Cairns and Schubert.

(3) Claims 23 and 27
Representative claim 237 recites that the vehicle input conditions
include an external vehicle climate input based on the weather outside the
vehicle. The Examiner finds that the combination of Cairns, Schubert, and
Venkatesh teaches this limitation (Ans. 4). Appellant argues that there is no
motivation to combine Venkatesh with Cairns because Cairns teaches away
from such a combination. Specifically, Appellant states Cairns’ noise
reduction algorithm excludes using characteristics which are not related to
the physical, mechanical/electrical condition of the vehicle and that the
external climate is not a physical, mechanical/electrical condition of the
vehicle (App. Br. 10; Reply Br. 2).

ISSUE
The following additional issue has been raised in the present appeal:
Has Appellant shown the Examiner erred in rejecting claim 23 under
§ 103 by arguing Cairns teaches away from combining Venkatesh’s teaching
of using weather conditions as a noise characteristic with Cairns’ disclosure
of using only mechanical and electrical conditions of the vehicle to reduce
audio background noise?

7 Appellant argues claims 23 and 27 as a group (App. Br. 10-11; Reply Br.
2). Accordingly, we select independent claim 23 as representative. 37
C.F.R. § 41.37(c)(1)(vii).
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FINDINGS OF FACT
The record supports the following additional findings of fact (FF) by a
preponderance of the evidence.
10. Venkatesh discloses a noise reduction system within a moving
vehicle (e.g., car, truck, airplane, helicopter, or boat) that includes a
filter. The filter depends on noise characteristics, including vehicle
speed, road surface, and weather. (Venkatesh, col. 1, l. 6 - col. 2, l.
42).

ANALYSIS
As explained above in the context of claim 21, factors that are not an
immediate part of the vehicle can affect the mechanical conditions within the
vehicle. Cairns recognizes that outdoor sounds (e.g., open window status)
can affect the noise parameters within the vehicle and are accounted for in a
noise reduction algorithm (FF 2-3). The road’s bumpiness is another
condition identified by Schubert that creates vibrations within the vehicle
(FF 8) and, in turn, creates noises within the vehicle. Venkatesh also
identifies that the road surface has an effect on the noise within a vehicle and
is considered in a noise reduction system so as to improve the clarity of
sounds within a vehicle (FF 10). These references recognize characteristics
that are not directly part of the vehicle but still affect the vehicle’s physical,
mechanical, and electrical condition as disclosed by Cairns (FF 3).
Venkatesh further teaches using factors such as weather or external
vehicle climate as an input to filter or reduce the noise within the vehicle (FF
10). Again, while the weather is outside or external to a vehicle, we agree
that different weather conditions can impact conditions within the vehicle.
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For example, rain drops tap on a vehicle’s body and windows, and wind
blows against a vehicle’s body. These conditions translate into sounds or
noises within the vehicle. Similar to the bumps on the road, each of these
weather conditions has an impact on the condition of the vehicle.
Furthermore, one skilled in the art would appreciate that a driver may use
windshield wipers (i.e., a mechanical condition) in the rain. As the wipers
produce sounds within a vehicle, an ordinarily skilled artisan would
appreciate that Cairns’ noise reduction device 40 would be improved by
including an external vehicle climate input, such as rainy weather, into the
noise reduction algorithm (FF 3) since climate inputs affect conditions of the
car. For these reasons, Cairns’ teaching to exclude characteristics unrelated
to physical and mechanical conditions of the vehicle does not teach away
from including an external weather climate input based on the weather
outside the vehicle as taught by Venkatesh.
Appellant also contends Venkatesh teaches a volume control system
and not a method for tuning a hands-free system in a mobile vehicle (App.
Br. 11). The Examiner has relied on Cairns, not Venkatesh, to teach a
hands-free tuning system (FF 1-4). Additionally, the portions of Venkatesh
cited by the Examiner discuss prior art approaches to filtering out noise
within the confines of a moving vehicle (FF 10) and do not relate to a
volume control system. As stated previously, Venkatesh teaches that one
skilled in the art would have recognized that weather is a characteristic that
affects noise within a moving vehicle. Lastly, to the extent that Appellant is
arguing that Venkatesh is non-analogous art, we disagree. Venkatesh is
reasonably pertinent to the problem with which the inventor is concerned,
such as techniques for addressing noise within a moving vehicle. (Id.)
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For the above reasons, Appellant has not shown the Examiner erred in
rejecting claims 23 and 27 under 35 U.S.C. § 103(a) as being unpatentable
over Cairns, Schubert, and Venkatesh.

(4) Claim 25

Claim 25 recites that the road input is received from a call center
using at least a wireless carrier system, a communication network, and a
land network. The Examiner finds that the combination of Cairns, Schubert,
Grivas, and Official Notice teaches all the limitations in claim 25 (Ans. 6-7).
Appellant asserts the same arguments made with respect to claim 21 (Br.
15).

ISSUE
The following additional issue has been raised in the present appeal:
Has Appellant shown the Examiner erred in rejecting claim 25 under
§ 103 by finding Cairns, Schubert, Grivas, and Official Notice collectively
teach the road input is received from a call center?

FINDINGS OF FACT
The record supports the following additional findings of fact (FF) by a
preponderance of the evidence.
11. Grivas teaches a vehicle-based telematics unit 208 communicating
with an emergency call center (e.g., a Public Safety Answering Point
(PSAP), such as when an air bag deploys (Grivas, ¶ 34; Fig. 2).
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12. Grivas teaches the emergency notification application 278, the hands-
free module 275, and the noise cancellation module 276 are connected
(Grivas, ¶ 36; Fig. 2).

ANALYSIS
Neither Cairns nor Schubert discloses receiving road input from a call
center. See generally Cairns and Schubert. At best, Schubert teaches the
map 350, which includes bumpiness levels, is stored on memory card 306,
and can be transferred from a centralized computer 304 to the memory card
306 (FF 6). Thus, while Schubert discloses receiving road input from a
remote computer, Schubert does not receive road input from a call center.
The Examiner relies on Grivas and Official Notice to teach the road input is
received from a call center (Ans. 7).
Grivas teaches a telematics unit 208 communicating with an
emergency call center, such as when an air bag deploys (FF 11). This
portion of Grivas does not disclose the telematics unit 208 receiving any
road input from the call center. Moreover, while we can see the “emergency
notification application” 278 as suggesting a call center, this “call center”
interacts with the hands-free and noise cancellation modules 275 and 276
(FF 12). Grivas does not discuss any details of how the modules interact,
including receiving a road input from a call center. Finally, the taking of
Official Notice that telematics units transmit and receive information from a
call center for unlocking doors, remotely accessing doors, and starting a
vehicle does not support a conclusion that an ordinarily skilled artisan would
have recognized a call center would send road input information that is used
to adjust a noise parameter for a hands-free system. See KSR, 127 S. Ct. at
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1739-41. Thus, Cairns, Schubert, Grivas, and Official Notice collectively
do not provide an adequate rational underpinning to teach that the road input
is received from a call center as required by claim 25.
For the above reasons, Appellant has shown the Examiner erred in
rejecting claim 25 under 35 U.S.C. § 103(a) as being unpatentable over
Cairns, Schubert, Grivas, and Official Notice.

(5) Claims 28-32

Independent claim 28 recites a method of tuning a mobile vehicle’s
hands-free system that includes the step of receiving a road input from the
call center that is commensurate in scope to claim 25. The Examiner finds
that the combination of Cairns, Schubert, Grivas, and Official Notice teaches
these limitations (Ans. 7-9). For the reasons discussed above in connection
with claim 25, we are persuaded that Cairns, Schubert, Grivas, and Official
Notice collectively do not provide an adequate rational underpinning to
teach the step of receiving a road input from the call center in response to
the sending required by claim 28.
Independent claim 31 includes limitations commensurate in scope to
claim 28, and we are also persuaded the relied-upon combination does not
teach the limitations of claim 31 for the reasons disclosed above in
connection with claim 25.
For the foregoing reasons, Appellant has shown the Examiner erred in
rejecting independent claims 28 and 31 and dependent claims 29, 30, and 32
under 35 U.S.C. § 103(a) as being unpatentable over Cairns, Schubert,
Grivas, and Official Notice.

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(6) Claims 33, 35, and 36
Independent claim 33 differs in scope from independent claims 28 and
31. Claim 31 recites receiving a GPS location at a telematics unit,
determining a road input based on the GPS location and a geographic
information system database, and adjusting a noise parameter for the
hands-free system based on the road input. The Examiner finds Cairns,
Schubert, Grivas, and Official Notice collectively teaches these limitations
(Ans. 7-9). Appellant presents the same arguments for claims 28, 31 and 33
(App. Br. 15-17). Therefore, has Appellant shown the Examiner erred in
rejecting claim 33 by arguing that Cairns teaches away from the combination
with Schubert, Grivas, and Official Notice to determine a road input based
on the GPS location and geographic information system database that is used
to adjust a noise parameter of a hands-free system?
We are not persuaded by Appellant’s argument for the reasons
indicated above in connection with claim 21. This argument also fails to
persuasively rebut the Examiner’s prima facie case of obviousness – a
position we find reasonable. Schubert teaches transferring geo-reference
map 350 from a computer to a memory card 306 of the positioning control
system or telematics unit (FF 6). As the geo-reference map 350 includes
longitude and latitude coordinates (e.g., GPS location) (FF 7), Schubert
teaches receiving a GPS location at the telematics unit. Schubert also
discloses the geo-reference map 350 includes other information or a
geographic information systems database, such as altitudes and bumpiness
levels (FF 7). As previously discussed, the combined method of Cairns and
Schubert uses the GPS location and road input (i.e., the bumpiness level) in
order to adjust the noise parameter. Thus, the combined Cairns/Schubert
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method teaches the steps of determining a road input based on the received
GPS location and a geographic information systems database and adjusting a
noise parameter for the hands-free system based on the determined road
input.
Since Cairns and Schubert teach all the limitations of claim 33, Grivas
and the taking of Official Notice are cumulative. Additionally, we note the
Examiner’s statement that “[c]laims 28, 30, 33, 35 and 36 are met” follows
an explanation of how each of these claims limitations is met. Thus,
contrary to Appellant’s assertions (App. Br. 16), Appellant has been
provided with an adequate explanation of the rejection for these claims.
For the above reasons, Appellant has not shown the Examiner erred in
rejecting independent claim 33 and dependent claims 35 and 36 under 35
U.S.C. § 103(a) as being unpatentable over Cairns, Schubert, Grivas, and
Official Notice.

(7) Claim 34
Claim 34 has been rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cairns, Schubert, Grivas, Official Notice, and Venkatesh
(Ans. 9). Appellant contends that claim 34 is allowable for the same reasons
as claim 33 (App. Br. 17). We are not persuaded by Appellant’s argument
for the reasons discussed above in connection with claim 33. This argument
also fails to persuasively rebut the Examiner’s prima facie case of
obviousness – a position we find reasonable.
For the above reasons, Appellant has not shown the Examiner erred in
rejecting claim 34 under 35 U.S.C. § 103(a) as being unpatentable over
Cairns, Schubert, Grivas, Official Notice, and Venkatesh.
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II. OBVIOUSNESS REJECTIONS INVOLVING STANKEWITZ
(1) Claim 21

With respect to representative independent claim 21, the Examiner
also finds that the combination of Stankewitz and Schubert teaches all the
limitations of this claim (Ans. 4-5). Appellant argues: (1) there is no
motivation to combine Stankewitz’s noise suppressing system with
Schubert’s device for reducing vibrations within an active cab suspension
system; (2) the Examiner does not provide evidence or reason to support the
combination; and (3) Stankewitz teaches away from the combination with
Schubert (App. Br. 11-12; Reply Br. 3).

ISSUES
The following additional issues have been raised in the present appeal:
(1) Under § 103, has the Appellant shown the Examiner erred in
failing to provide a motivation to combine Stankewitz and Schubert in
rejecting claim 21?
(2) Under § 103, has the Appellant shown that Stankewitz teaches
away from combining Schubert’s bumpiness level with Stankewitz’s interest
to avoid any major technological expense in rejecting claim 21?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Stankewitz
13. Stankewitz discloses a noise suppressing method for a hands-free
system of a moving vehicle. (Stankewitz, ¶2, 5, 10, 12; The Figure).
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14. Stankewitz’s method includes detecting vehicle parameters (e.g.,
vehicle speed, rotational speed, load, current window position,
convertible position) at step 11, obtaining starting parameters for
noise suppression from the characteristic map at step 12, and further
optimizing the noise suppression at step 14. (Stankewitz, ¶12; The
Figure).
15. Stankewitz’s system is supposed to “shorten[] the period of time for
creating optimum call conditions and does not necessitate any major
technological or computational expense.” (Stankewitz, ¶5).

ANALYSIS
Stankewitz discloses a noise suppressing method for a
hands-free system in a mobile vehicle (FF 13). Stankewitz discloses
receiving a plurality of vehicle condition inputs at step 11, such as
vehicle speed and whether the window is open or closed (FF 14),
creating a starting noise parameter based on the vehicle conditions at
step 12, and adjusting a noise suppression algorithm based on the
created noise parameter at step 14. (Id.) As suppressing the noise of a
hands-free system in a vehicle involves adjusting parameters (id.),
Stankewitz also discloses a method of tuning a hands-free system in a
mobile vehicle 10 based on the noise environment (FF 13-15).
As the Examiner admits (Ans. 3), Stankewitz does not disclose
one of the vehicle inputs includes a road input based on global
positioning coordinates. The Examiner relies on Schubert’s
disclosure of a geo-reference map 350 to teach this missing limitation
(Ans. 4-5). With regard to claim 21, we have addressed how Schubert
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teaches a road input based on global positioning coordinates and
provides ample reason for combining with Cairns. We therefore
incorporate that discussion by reference. This explanation is equally
applicable to Stankewitz. That is, Stankewitz is concerned with
filtering noise within a moving vehicle (FF 13-14), and Schubert
identifies vibrations produced by a road surface, which in turn
produce noises within a vehicle. Thus, similar to Stankewitz’s
recognition that vehicle and rotational speed (FF 14) affect noises
within the vehicle, one of ordinary skill in the art would have
recognized that the Schubert’s bumpiness level teaches another
property that affects noise and should be included in an algorithm, like
Stankewitz’s, to improve the noise suppression process (FF 13). See
KSR, 127 S. Ct. at 1740.
Additionally, as discussed above, Schubert identifies the
bumpiness of the road creates vibrations within the vehicle (FF 7-8).
Thus, if Stankewitz’s hands-free system was used within Schubert’s
vehicle, an ordinarily skilled artisan would have recognized the
vibrations from the road surface would produce noise within the
vehicle and should be factored into the combined Stankewitz/Schubert
noise reduction algorithm to improve the noise suppression algorithm
(FF 13-14). Thus, there is ample reason to combine Stankewitz and
Schubert in rejecting claim 21.
We are also not convinced that Stankewitz teaches away from
combining with Schubert (App. Br. 12-13). First, Stankewitz only
discusses that the resulting design shortens the time period for
creating optimum call conditions without necessitating any major
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technological or computational expense (FF 15). Thus, this is not
necessarily Stankewitz’s goal, but the design’s by-product. Second,
Stankewitz states an interest in not necessitating any major
technological or computational expense. (Id.) Including one more
parameter into a method that already includes many variables would
not require any major technological or computational expense. Third,
Appellant fails to provide evidence that such a change would result in
a major technological or computation expense. Instead, Appellant
only argues that the inclusion could defeat the desire to shorten the
period of time for creating optimum call conditions and could defeat
the aim to avoid any major technological and computational expense
(App. Br. 13). This argument that Stankewitz results could be
defeated is insufficient to show the results are actually defeated such
that there is no reasonable expectation of success in the combination.
Moreover, arguments made by counsel do not take the place of
evidence in the record. In re Schulze, 346 F.2d 600, 602 (CCPA
1965); see also In re Geisler, 116 F.3d 1465 (Fed. Cir. 1997).
For the above reasons, Appellant has not shown the Examiner
erred in rejecting claim 21 under 35 U.S.C. § 103(a) as being
unpatentable over Stankewitz and Schubert.

(2) Claim 26
The Examiner finds that the combination of Stankewitz and Schubert
teaches all the recited elements of claim 26 (Ans. 4-5). Appellant
specifically contends with regard to claim 26 that the Examiner uses
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hindsight and provides no evidence to conclude that changing global
coordinates would result in a change in a bumpiness level and adjust the
noise suppression algorithm appropriately (App. Br. 13). We disagree for
the reasons previously discussed with regard to claim 26 in connection with
the Cairns/Schubert combination. Additionally, for the same reasons
discussed above in connection with claim 21, we find that the combination
of Stankewitz and Schubert provides ample reason to include a bumpiness
level as a mechanical characteristic of a vehicle that improves the noise
suppression technique of Stankewitz’s hands-free system.
Based on the foregoing, Appellant has not shown the Examiner erred
in rejecting claim 26 under 35 U.S.C. § 103(a) as being unpatentable over
Stankewitz and Schubert.

(3) Claims 23 and 27
Representative claim 238 recites that vehicle condition inputs include
an external vehicle climate input based on the weather outside the vehicle.
The Examiner finds the combination of Stankewitz, Schubert, and
Venkatesh teaches this limitation (Ans. 6). Appellant repeats the argument
that Stankewitz teaches away from being combined with Schubert or
Venkatesh because each reference’s teaching will increase the technological
and computational expense and thus defeat the purpose of the teachings of
Stankewitz (App. Br. 15; Reply Br. 3-4). For the reasons previous discussed
above regarding the Examiner’ rejection of claim 21 based on Stankewitz,

8 Appellant argues claims 23 and 27 as a group (App. Br. 14-15).
Accordingly, we select independent claim 23 as representative. 37 C.F.R. §
41.37(c)(1)(vii).
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we disagree that including Schubert or Venkatesh’s teachings with
Stankewitz would create a major technological or computational expense so
as to teach away from the combination.
For the above reasons, Appellant has not shown the Examiner erred in
rejecting claims 23 and 27 under 35 U.S.C. § 103(a) as being unpatentable
over Stankewitz, Schubert, and Venkatesh.

(4) Claim 24

Claim 24 recites the vehicle condition inputs include an audio-device
input based on the type and intensity level of the ambient noise. The
Examiner finds that the combination of Stankewitz, Schubert and Tomisawa
teaches the recitations in claim 24 (Ans. 5-6). Appellant relies on the
arguments of claim 21 and additionally repeats the argument that Stankewitz
teaches away from being combined with Schubert or Tomisawa because
each will increase the technological and computational expense and thus
defeat the purpose of Stankewitz (App. Br. 14; Reply Br. 3). For the reasons
previously discussed above regarding claim 21 and Stankewitz’s teachings,
we disagree.
Based on the foregoing, Appellant has not shown the Examiner erred
in rejecting claim 24 under 35 U.S.C. § 103(a) as being unpatentable over
Stankewitz, Schubert, and Tomisawa.

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CONCLUSIONS
For the foregoing reasons:
(1) Under § 103, Appellant has not shown the Examiner erred in
finding that the bumpiness level taught by Schubert is a road input based on
global positioning coordinates as recited in claim 21.
(2) For the rejection of claim 21 under § 103, Appellant has not
shown that Cairns teaches away from combining Schubert’s bumpiness level
with Cairns’ disclosure of using only the vehicle’s mechanical and electrical
conditions to determine the noise parameter.
(3) Appellant has not shown that the Examiner erred in rejecting
claim 26 under § 103 by relying on impermissible hindsight without
providing evidence that Cairns and Schubert or Stankewitz and Schubert
collectively teach determining a change in the road input and adjusting a
noise suppression algorithm in response to the road input change.
(4) Under § 103, Appellant has not shown Cairns teaches away
from combining Venkatesh’s teaching of using weather condition as a noise
characteristic with Cairns’ disclosure of using only physical, mechanical and
electrical conditions of the vehicle to reduce audio background noise in
rejecting claims 23 and 27.
(5) Under § 103, Appellant has shown the Examiner erred in
finding Cairns, Schubert, Grivas, and Official Notice collectively teach the
road input is received from a call center as recited in claim 25 or receiving
road input from the call center in response to the sending as recited in claims
28-32.
(6) Under § 103, Appellant has not shown Cairns teaches away
from the combination with Schubert, Grivas, and Official Notice to
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determine a road input based on the GPS location and geographic
information system database that is used to adjust a noise parameter of a
hands-free system as recited in claims 33-36.
(7) Appellant has not shown the Examiner erred in rejecting claims
21, 23, 24, 26, or 27 under § 103 by failing to provide a motivation to
combine Stankewitz and Schubert.
(8) Appellant has not shown the Examiner erred in rejecting claims
21, 23, 24, or 27 under § 103 by arguing Stankewtiz teaches away from
combining Schubert’s bumpiness level with Stankewitz’s interest not to have
any major technological expense.

DECISION
The Examiner’s decision (1) to reject claims 21, 23, 24, 26, 27, and
33-36 is sustained and (2) to reject claims 25 and 28-32 is not sustained.
Accordingly, we affirm-in-part the Examiner’s rejections of claims 21 and
23-36.
No 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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gvw

GENERAL MOTORS CORPORATION
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300 RENAISSANCE CENTER
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