Ex Parte Garey

Board of Patent Appeals and Interferences

Oct 16, 2003

09144842 (B.P.A.I. Oct. 16, 2003)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KENNETH E. GAREY
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Appeal No. 2002-0076
Application No. 09/144,842
____________
ON BRIEF
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Before FLEMING, RUGGIERO, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
A patent examiner rejected claims 1-4, 12, and 13. The appellant appeals
therefrom under 35 U.S.C. § 134(a). We affirm.
BACKGROUND
The invention at issue on appeal relates to "speakerphones." A speakerphone is
a telephone equipped with a loud speaker and a microphone that allows a person to
converse on a telephone without using his hands. Freeing the hands facilitates note-
taking; decreases neck, arm, and shoulder fatigue; and allows the person to move
about the room during the conversation. (Spec. at 1.)
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Application No. 09/144,842
The appellant explains that a speakerphone may be designed to operate in
either a half-duplex ("HDX") mode or a full-duplex ("FDX") mode. In the HDX mode,
only one party of a telephone call can have his voice transmitted at a time. "If both
parties try to speak simultaneously, a choppy sound effect known as clipping results.
Having to speak in turn can be unnatural and can make conversation difficult and
laborious." (Id.) Thus, he expalins, many speakerphones are designed to operate in
the FDX mode. The FDX mode "allows incoming and outgoing parties' voices to be
simultaneously transmitted so that there is no clipping or choppyness [sic]. This results
in much more natural and spontaneous flowing conversation." (Id.)
The appellant asserts that the conventional FDX speakerphone 100 shown in
Figure 1 of his specification operates under constraints that impede the audio quality of
a telephonic conversation conducted therewith. More specifically, the speakerphone's
speaker 108 and microphone 110 are colocated in a base station 102. Such closeness
results in "acoustic coupling" between the speaker and the microphone, by which sound
emanating from the speaker is picked-up by the microphone. This causes an echo
signal to be transmitted by the speakerphone to a listener connected to the
speakerphone via over a telephone network. The effect becomes more pronounced
when a talker is much farther from the microphone than he is from the speaker. In such
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Application No. 09/144,842
a situation, the microphone receives the sound emanating from the speaker as a loud
signal, while receiving the voice of the talker as a quiet signal. (Id. at 2.)
In contrast, the appellant's FDX speakerphone features a base station and a
remote microphone. For its part, the base station includes a network connection, a
speaker, and a wireless receiver. The network connection receives a first network
signal from a telephone network, and the speaker emits an audible signal derived from
the first network signal. For its part, the remote microphone includes a wireless
transmitter. The microphone receives an audio signal, and the wireless transmitter
transmits the audio signal over the air to the wireless receiver in the base station. In
turn, the base station converts the audio signal into a second network signal and sends
the second network signal to the network.
A further understanding of the invention can be achieved by reading the following
claim.
1. A full-duplex speakerphone that is coupled to a network,
comprising:
a. a base station having a network connection, a speaker, and
a wireless receiver, the base station for receiving a first network signal
from the network, and the speaker for delivering an audible signal derived
from the first network signal; and
b. a wireless remote microphone apparatus having a
microphone and a wireless transmitter, the microphone for receiving an
Appeal No. 2002-0076 Page 4
Application No. 09/144,842
audio signal, and the wireless transmitter for transmitting the audio signal
over the air to the wireless receiver in the base station, the base station
converting the audio signal into a second network signal and sending the
second network signal to the network, the base station and wireless
remote microphone apparatus operating in full-duplex mode.
Claims 1-4, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as obvious over
U.S. Patent No. 5,664,015 ("Ford"); U.S. Patent No. 4,053,717 ("Snider"); and U.S.
Patent No. 5,138,651 ("Sudo").
OPINION
"[T]o assure separate review by the Board of individual claims within each group
of claims subject to a common ground of rejection, an appellant's brief to the Board
must contain a clear statement for each rejection: (a) asserting that the patentability of
claims within the group of claims subject to this rejection do not stand or fall together,
and (b) identifying which individual claim or claims within the group are separately
patentable and the reasons why the examiner's rejection should not be sustained." In
re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002) (citing 37
C.F.R. §1.192(c)(7) (2001)). "Merely pointing out differences in what the claims cover is
not an argument as to why the claims are separately patentable." 37 C.F.R.
§ 1.192(c)(7). "If the brief fails to meet either requirement, the Board is free to select a
single claim from each group of claims subject to a common ground of rejection as
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Application No. 09/144,842
representative of all claims in that group and to decide the appeal of that rejection
based solely on the selected representative claim." McDaniel, 293 F.3d at 1383, 63
USPQ2d at 1465.
Here, although the appellant alleges, "[t]he claims on appeal do not stand or fall
together and are believed to be separately patentable," (Appeal Br. at 5), he fails to
satisfy the second requirement. His pointing out differences in what claims 2-4, 12, and
13 cover, (id. at 14, Reply Br. at 7), is not an argument as to why the claims are
separately patentable. Therefore, claims 2-4, 12, and 13 stand or fall with
representative claim 1.
With this representation in mind, rather than reiterate the positions of the
examiner or the appellant in toto, we address the four points of contention
therebetween in the following order:
• omission of Ford
• additions of Ford
• problems solved by the appellant
• motivation to combine.
Omission of Ford
The examiner finds, "Ford discloses . . . a base unit (150) having . . . a
speaker (182). . . ." (Final Rejection at 2.) The appellant argues, "[a]lthough Ford
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Application No. 09/144,842
shows a speaker in the base unit, it fails to disclose any circuitry whereby the speaker
in the base unit can be used with the microphone in the housing 16." (Reply Br. at 4.)
"Analysis begins with a key legal question -- what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). In answering the question, "the Board must give claims their broadest
reasonable construction. . . ." In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664,
1668 (Fed. Cir. 2000). "Moreover, limitations are not to be read into the claims from the
specification." In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed.
Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989)).
Here, claim 1 specifies in pertinent part the following limitations: "a base station
having . . . a speaker . . . and . . . a wireless remote microphone apparatus having a
microphone. . . ." Giving the representative claim its broadest, reasonable construction,
the limitations require a base station to have a speaker and a remote unit to have a
microphone. The claim does not require, however, that the speaker in the base station
be used with the microphone in the remote unit.
Appeal No. 2002-0076 Page 7
Application No. 09/144,842
Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious. The question of obviousness is
"based on underlying factual determinations including . . . what th[e] prior art teaches
explicitly and inherently. . . ." In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693,
1697(Fed. Cir. 2001) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966); In re Dembiczak, 175 F.3d 994, 998, 50 USPQ 1614, 1616 (Fed. Cir.
1999); In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995)). "'A
prima facie case of obviousness is established when the teachings from the prior art
itself would . . . have suggested the claimed subject matter to a person of ordinary skill
in the art.'" In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993)
(quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
Here, Ford discloses "[a] shower speaker telephone system 10. . . ." Col. 4,
l. 24. "The shower telephone system has a base unit 150 (FIGS. 4 and 5) providing a
base." Col. 7, ll. 56-57. As aforementioned, the appellant admits, "Ford shows a
speaker in [its] base unit. . . . " (Reply Br. at 4.) Furthermore, the reference adds that
the "speaker 182 [is] mounted along the base housing for hands-free telephone
discussions from the base unit." Col. 8, ll. 52-53.
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Application No. 09/144,842
Ford's shower speaker telephone system 10 further "comprises a portable
cordless shower speaker telephone 12 providing a light weight waterproof
handset 14. . . ." Col. 4, ll. 25-27. The portable handset is "a hands-free
speakerphone. . . ." Abs., l. 1. We find that the portable handset, which can be used
remotely from the base unit, includes a microphone, viz., "an amplified microphone 76."
Col. 5, l. 24.
Additions of Ford
The examiner finds, "Ford discloses a cordless telephone including a
speakerphone coupled to a network comprising a base unit (150) having a connection
to the telephone line (reads on network connection) of a user's home, office, etc., . . .
and telephone circuitry (164) including a transmitting and receiving circuitry." (Final
Rejection at 2.) The appellant argues, "[t]he telephone circuitry 164 of Ford includes
both transmitting circuitry and receiving circuitry. Ford fails to disclose any
modifications to this circuitry whereby the transmitting circuitry does not operate. Thus,
Ford requires an additional element which the invention of claim 1 does not." (Appeal
Br. at 9.) He further argues, "[l]ikewise, the invention of claim 1 does not require echo
cancelers, which would be required by Ford. . . ." (Id.)
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“A transitional term such as ‘comprising’ or . . . ‘which comprises,’ does not
exclude additional unrecited elements, or steps. . . .” Moleculon Research Corp. v.
CBS, Inc., 793 F.2d 1261, 1271, 229 USPQ 805, 812 (Fed. Cir. 1986). Here, because
claim 1 uses the transitional term “comprising,” it excludes neither operative transmitting
circuitry nor echo cancelers. We are unpersuaded by the appellant's argument.
Problems Solved by the Appellant
The appellant asserts, "problems solved by the invention of claim 1 are that it
provides flexibility that does not limit the talker's mobility and that it would not include a
cable 310 that could become entangled with furniture." (Reply Br. at 5.) He argues,
"[o]ne of ordinary skill in the art would not consider the teachings of Ford to be relevant
to either of these two problems." (Id. at 6.) The examiner responds, "the environment
which the Appellant is arguing has not be incorporated into the limitation of the claims."
(Examiner's Answer at 5.)
"'[T]he main purpose of the examination, to which every application is subjected,
is to try to make sure that what each claim defines is patentable. [T]he name of the
game is the claim. . . .'" In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523,
1529 (Fed. Cir. 1998) (quoting Giles S. Rich, The Extent of the Protection and
Interpretation of Claims --American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright
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Application No. 09/144,842
L. 497, 499, 501 (1990)). Here, the appellant admits that the aforementioned problems
"are not additional claim limitations. . . ." (Reply Br. at 6.) Although we have
considered the problems in our determination of obviousness vel non, we refuse to read
the problems into the claim.
Motivation to Combine.
The examiner finds, "[i]t would have been obvious to one of ordinary skill in the
art at the time of the invention, to provide circuitry implementing and operating both the
base unit and the shower speaker telephone of Ford in full-duplex mode as shown in
Sudo for the purpose of providing simultaneous bidirectional conversation and
eliminating problems relating to signal path switching which occur in half-duplex
speakerphones." (Final Rejection at 4.) The appellant alleges, "the Examiner has
impermissibly used the pending application as a blueprint, and is reconstructing the
invention of Claim 1 from Ford when there is no suggestion to do so." (Reply Br. at 6.)
"[A]ny obviousness inquiry necessarily involves some hindsight." Radix Corp. v.
Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989). More specifically, "[a]ny judgment on
obviousness is . . . necessarily a reconstruction based on hindsight reasoning, but so
long as only knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned from applicant's
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Application No. 09/144,842
disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395,
170 USPQ 209, 212 (CCPA 1971).
"The presence or absence of a motivation to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203 F3d 1305,
1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000) (citing In re Dembiczak, 175 F.3d 994,
1000, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). "'[T]he question is whether there is
something in the prior art as a whole to suggest the desirability, and thus the
obviousness, of making the combination.'" In re Beattie, 974 F.2d 1309, 1311-12, 24
USPQ2d 1040, 1042 (Fed. Cir. 1992) (quoting Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir.
1984)). "[E]vidence of a suggestion, teaching, or motivation to combine may flow from
the prior art references themselves, the knowledge of one of ordinary skill in the art, or,
in some cases, from the nature of the problem to be solved. . . ." Dembiczak, 175 F.3d
at 999, 50 USPQ2d at 1617 (citing Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996); Para-Ordnance Mfg. v.
SGS Imports Int'l, Inc., 73 F.3d 1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995)).
Here, a suggestion, teaching, or motivation to combine flows from the references
themselves. We find that Ford emphasizes that its invention is not limited by the
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"embodiments of the invention . . . shown and described," col. 8, ll. 66-67, therein. To
the contrary, the reference invites changes to its shower speaker telephone, specifying
"that various modifications and substitutions, as well as rearrangements of parts and
components can be made by those skilled in the art. . . ." Col. 8, l. 67 - col. 9, l. 2.
Turning to Sudo, we find that the reference recognizes a problem facing
speakerphones operating in an HDX mode. Specifically, "an alternately-talking system
actuated by a voice control switch . . . causes the received voice to vanish at its start
and end. . . ." Col. 1, ll. 50-52. Regarding this problem, the appellant admits, "[i]f both
parties try to speak simultaneously, a choppy sound effect known as clipping results.
Having to speak in turn can be unnatural and can make conversation difficult and
laborious." (Spec. at 1.) We further find that Sudo solves the problem by using the
FDX mode. Specifically, "a main device 1 and a sub-device 2 are arranged to enable
same-time talking through a radio line." Col. 3, ll. 13-15. As admitted by the appellant,
such a FDX mode "allows incoming and outgoing parties' voices to be simultaneously
transmitted so that there is no clipping or choppyness [sic]. This results in much more
natural and spontaneous flowing conversation." (Id.) Because Ford invites changes to
its shower speaker telephone, which includes a speakerphone, and Sudo solves a
problem facing speakerphones, we find that a suggestion, teaching, or motivation to
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combine flows from the references themselves. Therefore, we affirm the obviousness
rejection of claim 1 and of claims 2-4, 12, and 13, which fall therewith.
CONCLUSION
In summary, the rejection of claims 1-4, 12, and 13 under § 103(a) is affirmed.
"Any arguments or authorities not included in the brief will be refused consideration by
the Board of Patent Appeals and Interferences. . . ." 37 C.F.R. § 1.192(a).
Accordingly, our affirmance is based only on the arguments made in the briefs. Any
arguments or authorities not included therein are neither before us nor at issue but are
considered waived. No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a).
Appeal No. 2002-0076 Page 14
Application No. 09/144,842
AFFIRMED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 2002-0076 Page 15
Application No. 09/144,842
CHRISTOPHER J. ROURK
AKIN, GUMP, STRAUSS, HAUER & FELD, L.L.P.
P O BOX 688
DALLAS, TX 75313-0688