Ex Parte Dicks et alDownload PDFPatent Trial and Appeal BoardMay 26, 201612938283 (P.T.A.B. May. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/938,283 11/02/2010 7590 Dr. Gregory J. Gonsalves 2216 Beacon Lane Falls Church, VA 22043 05/27/2016 FIRST NAMED INVENTOR Kent E. Dicks 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. 1001.005.999 3121 EXAMINER LEE, PING ART UNIT PAPER NUMBER 2654 MAILDATE DELIVERY MODE 05/27/2016 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 PATENT TRIAL AND APPEAL BOARD Ex parte KENT E. DICKS, RALPH KENT, TERRY BARTLETT, THOMAS CROSLEY, and ROBERT TRIPP Appeal2014-008248 Application 12/938,283 Technology Center 2600 Before JAMES R. HUGHES, CATHERINE SHIANG, and MELISSA A. RAAP ALA, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-20, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Introduction The present invention relates to voice communication through personal emergency response systems. See generally Spec. 1. Claim 1 is exemplary: Appeal2014-008248 Application 12/938,283 1. A system, comprising: a processor; a microphone in communication with the processor; a speaker in communication with the processor; a data relay transceiver in communication with the processor; and a memory in communication with the processor and storing instructions that, when executed by the processor, cause the processor to: determine a threshold based on an average amplitude of a signal provided to the speaker by the data relay transceiver; sample the amplitude of the signal; and disable the microphone and enable the speaker if the sampled amplitude is greater than the threshold. Korsky Brooks Desai Chan References and Rejections us 4,715,062 us 5,220,677 US 2005/0014535 Al US 2011/0032527 Al Dec. 22, 1987 June 15, 1993 Jan.20,2005 Feb. 10,2011 Claims 1--4, 6, 8-10 and 15-16 are rejected under 35 U.S.C. § 102(b) as being anticipated by Korsky. Claims 1and2 are rejected under 35 U.S.C. § 102(b) as being anticipated by Desai. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Korsky. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Desai. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Desai and Chan. 2 Appeal2014-008248 Application 12/938,283 Claims 11-14 and 17-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Desai and Brooks. ANALYSIS The Anticipation Rejections The Anticipation Rejection over Korsky We have reviewed Appellants' arguments in the Briefs, the Examiner's rejection, the Examiner's response to Appellants' arguments, and the evidence of record. We concur with Appellants' conclusion that the Examiner erred in finding Korsky discloses "determine a threshold based on an average amplitude of a signal provided to the speaker by the data relay transceiver, ... disable the microphone and enable the speaker if the sampled amplitude is greater than the threshold" as recited in independent claim 1 (emphasis added). The Examiner maps the claimed "average amplitude of a signal provided to the speaker" to Korsky's sensed speaker signal S. See Ans. 2, 10; Korsky 6:56. The Examiner finds: determine a threshold (e.g., selected the equation with any one of SMIN, KSSW, KSHI and KSLO in equations 3-5 based on state of S which is determined by an average amplitude of a signal provided to speaker) based on an average amplitude of a signal provided to the speaker (20) by the data relay transceiver (50)[).] Ans. 2 (emphasis added). S is the average amplitude of a signal provide by the data relay transceiver (see Fig. 1, elements 50, 80 and 90). For example, at state 2, equation 5, the average amplitude of S is being compared with threshold SMIN+KSLO to determine whether to 3 Appeal2014-008248 Application 12/938,283 maintain state 2, during which the microphone is disabled and the speaker is enabled. For another example, at state 0, equation 3, the average amplitude of S is being compared with threshold 2M+SMIN+KSSW to determine whether to reach state 4, during which the microphone is disabled and the speaker is enabled. In view of Fig. 4, it is clear that different threshold is being used for comparison depending on state of the speakerphone .... . . . In Korsky, for example, the threshold (e.g. equation 5) is based on the average amplitude of a signal S as the average amplitude of S determines whether the speakerphone is in state 2. Ans. 10-11 (emphasis added). The Examiner also cites a current dictionary for interpreting "determining." See Ans. 11. Appellants argue: ... the Examiner's construction is neither reasonable nor consistent with the specification .... . . . the Examiner's use of a current dictionary definition for "determining" is wrong because a claim must be construed in accordance with how it would be understood by a person of ordinary skill in the art at the time of the invention, not how it would be understood by such person today. None ofSMIN, KSSW, KSHI and KSLO disclosed in Korsky is "a threshold based on an average amplitude of a signal provided to the speaker," as recited in claim I. ... Reply Br. 5-7; see also App. Br. 10-12. We have reviewed the cited Korsky sections, and agree with Appellants that the Examiner does not sufficiently establish or explain how any of the cited Korsky elements discloses the claimed "threshold based on 4 Appeal2014-008248 Application 12/938,283 an average amplitude of a signal provided to the speaker." See Reply Br. 5- 7. Further, the Examiner's mapping is difficult to decipher. For example, the Examiner appears to map the claimed threshold to Korsky's "inequality" 5 (Korsky 8: 14--15) (or alternatively, inequality 3 or 4). But the Examiner has not explained how one skilled in the art would interpret the claim limitation "disable the microphone and enable the speaker if the sampled amplitude is greater than the threshold" under that mapping. Specifically, the Examiner has not explained how one skilled in the art would determine whether the sample amplitude is greater than an inequality 5 (or alternatively, inequality 3 or 4). As a result, we agree with Appellants that the Examiner's interpretation of the claimed threshold is unreasonable. See Reply Br. 5. Because the Examiner fails to provide sufficient evidence to support the anticipation rejection over Korsky, we are constrained by the record to reverse the Examiner's rejection of claim 1, and dependent claims 2--4, 6, 8- 10 and 15-16 for similar reasons. The Anticipation Rejection over Desai The Examine concedes Desai does not disclose a memory in communication with the processor and storing instructions that, when executed by the processor, cause the processor to: determine a threshold based on an average amplitude of a signal provided to the speaker by the data relay transceiver; sample the amplitude of the signal; and 5 Appeal2014-008248 Application 12/938,283 disable the microphone and enable the speaker if the sampled amplitude is greater than the threshold, as recited in claim 1 (emphasis added). See Ans. 4. However, the Examiner cites Desai's Figure 11 for the above steps, and asserts "a memory in communication with the processor and storing instructions that, when executed by the processor, cause the processor to" is inherently disclosed by Desai, because Desai discloses elements of Figure 1 may be implemented using hardware, software, or other means. See Ans. 11-12. Inherency can only be established when "prior art necessarily functions in accordance with, or includes, the claimed limitations." In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). The Examiner's finding that some elements of Figure 1 may be implemented in hardware, software, or other means is insufficient to show the claimed "determine ... sample ... disable ... "steps described in Figure 11 (not Figure 1) are necessarily implemented in "software that is inherently stored in a memory" (Ans. 12), as asserted by the Examiner. See App. Br. 13-15. Similarly, the Examiner's general assertion that "a cellular telephone inherently includes a memory with instructions for performing the claimed functions" (Ans. 12) is inadequate for establishing the required inherency. See Reply Br. 9-11. Because the Examiner fails to provide sufficient evidence to support the anticipation rejection over Desai, we are constrained by the record to reverse the Examiner's rejection of claim 1, and dependent claim 2 for similar reasons. 6 Appeal2014-008248 Application 12/938,283 The Obviousness Rejections The Examiner rejects dependent claim 7 as being obvious over Korsky, and dependent claims 3--4 as being obvious over Desai. See Ans. 5---6. The Examiner cites additional references for the obviousness rejection of dependent claims 5, 11-14 and 17-20. See Ans. 7-9. The Examiner relies on Korsky and Desai in the same manner discussed above in the context of claim 1, and does not rely on the additional references in any manner that remedies the deficiencies of the underlying anticipation rejections. See Ans. 5-9. Accordingly, we reverse the Examiner's obviousness rejection of claims 3-5, 7, 11-14 and 17-20. DECISION We reverse the Examiner's decision (1) rejecting claims 1--4, 6, 8-10 and 15-16 under 35 U.S.C. § 102 as being unpatentable over Korsky, (2) rejecting claims 1-2 under 35 U.S.C. § 102 as being unpatentable over Desai, and (3) rejecting claims 3-5, 7, 11-14 and 17-20 under 35 U.S.C. § 103 as being unpatentable over references including Korsky and/or Desai. REVERSED 7 Copy with citationCopy as parenthetical citation