Ex Parte Cao et al

Patent Trial and Appeal Board

May 26, 2016

13472780 (P.T.A.B. May. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/472,780 05/16/2012
57299 7590 05/31/2016
Kathy Manke
A vago Technologies Limited
4380 Ziegler Road
Fort Collins, CO 80525
FIRST NAMED INVENTOR
Qinghong Cao
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.
Cao 2-2-ll-l l-6-Q-US3 4790
EXAMINER
LY,NGHIH
ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
05/31/2016 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):
kathy.manke@broadcom.com
patent.info@broadcom.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QINGHONG CAO, LIANG JIN, WENZHE LUO, JIAN WU, and
ZHIGANGMA
Appeal2014-007101
Application 13/472,780
Technology Center 2600
Before CARLA M. KRIVAK, ADAM J. PYONIN, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Agere Systems LLC.
App. Br. 2.
Appeal 2014-007101
Application 13/472,780
THE INVENTION
Appellants' invention relates to:
A cordless telephone which allows a user to play MP3
digital audio bit stream music, using the remote handset of a
cordless telephone to control the functions of the MP3 player.
The cordless telephone remains usable as a typical cordless
telephone with all the features and conveniences of a cordless
telephone including, but not limited to, connection of a telephone
call between a calling party and a called party, caller ID
information, voice messaging features, etc. MP3 digital audio bit
stream music may be downloaded from a remote source through,
e.g., the Internet and a PC.
Abstract.
Exemplary independent claim 1 is reproduced below:
1. A cordless telephone, comprising:
a remote handset;
a base unit matched to said remote handset; and
an MPEG audio player integrated within at least one of
said remote handset and said base unit; and
a summer to digitally sum a digitally synthesized ring tone
with an MPEG audio bit stream to allow a user of said cordless
telephone to hear said cordless telephone ringing along with
mUSlC.
REFERENCES and REJECTION
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Borland (US 6,556,965 Bl, Apr. 29, 2003) and Young (US 5,694,467,
Dec. 2, 1997).
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Application 13/472,780
ANALYSIS
We agree with and adopt as our own the Examiner's findings of facts
and conclusions as set forth in the Answer and in the Action from which this
appeal was taken. We have considered Appellants' arguments, but do not
find them persuasive of error. We provide the following explanation for
emphasis.
I. Claims 1 and 11
A. Examiner Estoppel and Waiver
Appellants argue
the rejection of claim 1 based on Borland and Young is improper
and should be withdrawn, because it is duplicative of a rejection
that the Applicant already overcame and that the Examiner
already withdrew during the extensive and exhaustive
prosecution of the grandparent application of the present
application, i.e., Application Serial No. 09/447,284.
App. Br. 17.
We find no authority supporting any legal theory of Examiner
estoppel by actions in a related case, and Appellants have cited none. 2
Assuming, arguendo, the Examiner did change positions in this case as
compared to the related case, the Examiner is permitted to do so as
prosecution progresses or as warranted by the evidence. See In re Ruschig,
379 F.2d 990, 992-993 (CCPA 1967); In re Ellis, 86 F.2d 412, 414 (CCPA
2 Appellants cite to Hyatt v. Dudas, 551F.3d1307, 1313-14 (Fed. Cir.
2008) for the proposition that the doctrine of waiver may be applied to
arguments in a patent reexamination. We have reviewed Hyatt and find it to
be inapposite. The waiver issues raised in Hyatt relates to arguments made
by patent applicant, not the Examiner. Id. Thus, Appellants' reliance on
Hyatt is unpersuasive.
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Application 13/472,780
1936), In re Becker, 101F.2d557, 560 (CCPA 1939). Accordingly, we are
not persuaded that the Examiner is estopped in this case.
B. A Summer to Digitally Sum a Digitally Synthesized Ring Tone
with an MPEG Audio Bit Stream to Allow a User of Said
Cordless Telephone to Hear Said Cordless Telephone Ringing
Along With Music
Appellants argue "that [the] cited portions of Young [do not] teach g
summer adapted to digitally sum a digitally synthesized ring tone with an
audio bit stream." App. Br. 21. According to Appellants, "Young discloses
an analog mixer that inputs an analog ring tone, not a digital synthesized
ring tone, as recited by claim 1. App. Br. 21-22 (citing Young, Figs. 1 and
2, and 4:7-10). Appellants therefore conclude "Young fails to teach or even
suggest digital summing." App. Br. 22.
We are unpersuaded by Appellants' arguments. The Examiner finds
Young teaches a "digital mixer that inputs a digital synthesized ring tone."
Ans. 3 (citing Young 3:18-21("Phone10 is a standard analog or digital
telephone" (emphasis added), 4:39--40; and 5:31-34 ("the present invention
would operate identically with digital or other type telephones but would
require the appropriate modifications to the system design to compensate for
the differences in phone operation" (emphasis added)). We agree with the
Examiner that Young's disclosure of a mixer that mixes a ring tone from a
phone with audio from a music source, along with statements that that
system would work with a digital telephone so long as appropriate
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Application 13/472,780
1•,..... '. 1 1. ' 1 ' ' ,.. 1• 1 •11 • ."1 momncanons were maae, J teacnes or suggests to one or oramary SKlll m me
art a summer that digitally sums a digital ring tone with an audio stream.
C. Whether Young Provides an Enabling Disclosure
Appellants further argue "Young fails to provide any enabling
disclosure concerning the physical hardware and connections that would be
required to enable a person of ordinary skill in the art 'to digitally sum a
digitally synthesized ring tone with an MPEG audio bit stream,' as recited
by claim 1." App. Br. 22.
We disagree. The Examiner has cited sections of Young disclosing a
mixer for mixing a ring tone with audio from a music source along with
sections describing that the system can also operate with a digital telephone
with appropriate modifications. Final Act. 22-23; see also Ans. 3. The
corresponding figures in Young depict the hardware components, their
connections, and the location of the mixer relative to the inputs for mixing
the ring tone with audio. See Young, Figs. 1-3. Appellants do not
sufficiently show why one of ordinary skill in the art with knowledge of
mixing ring tones with music, along with knowledge of digital telephones,
3 Although we do not rely on the following in our decision, we note that,
even assuming, arguendo, Young discloses only an analog mixer, as
Appellants argue, and does not include statements directed to an
embodiment with a digital telephone, Appellants have not presented
sufficient evidence to show why mixing a digital ring tone and music signals
was "uniquely challenging or difficult for one of ordinary skill in the art" or
"represented an unobvious step over" mixing an analog ring tone and music
signals, as admittedly taught by Young. See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'!
Co. v. Teleflex, Inc., 550 U.S. 398, 418-19 (2007)).
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Application 13/472,780
both of which are disclosed in Young, would not be enabled to digitally sum
a ring tone and audio stream. 4
D. Whether the Examiner Erred in Combining Borland and Young
Appellants argue "the Examiner failed to identify any sufficient
reason to combine Borland with Young to reach the claimed invention."
App. Br. 22. In particular, Appellants argue "the Examiner has failed to
explain how or why adding the control box and headset of Young to the
cordless telephone of Borland would actually serve to 'improve in sound
headset systems and telephone headset systems."' App. Br. 23. Similarly,
Appellants argue "a person of ordinary skill in the art would not be
motivated to combine Borland with Young, because the system of Young is
incompatible with the cordless telephone of Borland" because Young
discloses a corded phone that rests on a mechanical lifter which would fail to
operate with Borland's cordless phone with a remote handset. App. Br. 23.
We disagree. We find the Examiner has articulated a reason with
sufficiently rational underpinning for combining Borland and Young,
namely improving the sound in headset systems and telephone headset
systems. Final Act. 23; Ans. 4. Moreover, the Examiner's findings of a
digital telephone with a remote handset, base unit, and an MPEG audio
4 Indeed, Appellants' own Specification provides very little detail of how a
digital ring tone would be summed with an MPEG audio bit stream. The
Specification merely states that a synthesized ring tone can be digitally
summed with an MP3 bit stream within a DSP but does not describe the
details of how the summation occurs. See Spec. 12:26-13:3; see also Spec.
11:20-25; 13:19--27. The DSP disclosed in the Specification appears to be a
commercially available DSP manufactured by Lucent, further indicating that
the hardware for digital summing was readily available. Spec. 9:9-14.
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player integrated with the handset, as taught in Borland (see Final Act. 22),
along with a phone system, which can include a digital telephone, with a
summer to sum a ring tone with a music audio stream so that the user of the
phone system can hear the ringer along with the music (see Final Act. 22-
23), indicates that the claimed elements were known in the prior art and that
combining these known prior art elements would have yielded the
predictable results claimed in claim 1. See KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007) ("The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results").
Finally, Appellants' arguments that Young is incompatible with
Borland because Young teaches a corded phone, while Borland teaches a
cordless phone, is unpersuasive because the Examiner is not required to
show that the systems of Borland and Young can be bodily incorporated.
"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." In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
II. Claims 6, 7, 16, 17, and 18
Appellants argue that none of the portions of Borland and Young cited
by the Examiner, in fact, teach or even suggest the limitations of claims 6, 7,
16, 17, and 18. App. Br. 26-27.
We are not persuaded by these arguments because they are
conclusory. Appellants offer no persuasive explanation or reasoning as to
how or why the summarized portions of Borland and Young fail to teach or
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suggest the disputed limitations of claims 6, 7, 16, 17, and 18. See 37 C.F.R.
§ 41.3 7 ( c )( 1 )(iv) ("The arguments shall explain why the examiner erred as
to each ground of rejection contested by appellant) (emphasis added); see
also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art").
To the extent Appellants argue that the Examiner has not met the
burden of establishing a prima facie rejection, we disagree. See Reply Br.
5---6. The Examiner has explained the theory of invalidity (obviousness),
identified the prior art basis for the rejection (Borland and Young), and
identified where each limitation of the claim is shown in the prior art
references. Final Act. 25-28. We find this sufficient to meet the burden of
establishing a prima facie case of obviousness. See In re Jung, 637 F.3d
1356, 1362---63 (Fed. Cir. 2011).
CONCLUSION
For the foregoing reasons, we sustain the Examiner's rejection of
claims 1, 6, 7, 11, 16, 17 and 18. We also sustain the Examiner's rejection
of claims 2-5, 8-10, 12-15, and 19-20 for which no arguments for separate
patentability are presented. See App. Br. 25.
DECISION
The Examiner's rejection of claims 1-20 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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