Ex Parte King

Board of Patent Appeals and Interferences

Aug 27, 2009

09968579 (B.P.A.I. Aug. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAY KING
____________

Appeal 2009-003215
Application 09/968,579
Technology Center 2600
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Decided:1 August 27, 2009
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Before KENNETH W. HAIRSTON, ROBERT E. NAPPI, and KARL D.
EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

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).
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-21 (App. Br. 5).2 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appellant’s invention provides a noise suppressed side-tone feed-back
signal to a user’s telephone handset speaker from a reverse audio link in the
handset (i.e. the transmit portion starting at the user’s speaker). The noise
suppressed side-tone fed back to the handset speaker provides a clean queue
to the user indicating the transmitted volume of the user’s voice. The noise
suppression also eliminates environmental noise otherwise transmitted from
the handset. (Spec. ¶¶ 002-5, 017; Abstract; Figs. 3, 4).
Exemplary claim 1 follows:
1. A side-tone circuit, comprising:
a side-tone noise suppressor configured to:
receive a reverse link audio signal based on audio signals
received by no more than one microphone and having environmental
noise components and voice components in an audio band,
differentiate the audio band environmental noise components
and the audio band voice components using microphone-received
audio signals including only audio signals received by no more than
one microphone;

2 Appellant’s Brief (filed Sept. 27, 2007) (“Br.”), Reply Brief (filed Feb. 5,
2008) (“Reply Br.”), Reply Brief to Supplemental Examiner’s Answer (filed
July 14, 2008) (“Reply Supp. Br.”) and the Examiner’s Supplemental
Answer (mailed May 20, 2008) (“Ans.”) detail the parties’ positions.
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suppress the audio band environmental noise components and
pass the audio band voice components in the received reverse link
audio signal to generate a noise suppressed side-tone signal, and
output the noise suppressed side-tone signal; and
a speaker configured to receive the noise suppressed side-tone signal
and communicate it to a user.
The Examiner relies on the following prior art references:

Chan et al. US 5,752,226 May 12, 1998
Stewart WO 99/11045 Mar. 4, 1999
The Examiner also relies upon Appellant’s admitted prior art Figures
1-2, as described more fully in the Specification (Spec.: ¶¶ 0015-25)
(hereinafter “APA”).
The Examiner rejected claims 1-21 as obvious under 35 U.S.C. §
103(a) based on the APA, Stewart, and Chan.

ISSUE
Appellant’s arguments assert a failure of the references to suggest
suppressing noise in the APA side-tone signal using a single microphone
system primarily because Stewart teaches a side-tone noise suppression
system employing two microphones (see Br. 11-14). Appellant’s arguments
focus on independent claims 1, 8, and 16, with the arguments nominally
addressing similar claim limitations (Br. 11-14). Appellant’s arguments
against the rejection of remaining dependent claims rely on the arguments
presented for claims 1, 8, and 16 (Br. 14). Accordingly, all rejected claims
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will be treated as standing or falling with claim 1. In re Nielson, 816 F.2d
1567, 1572 (Fed. Cir. 1987); 37 C.F.R. § 41.37(c)(1)(vii). Therefore, the
issue before us is:
Did Appellant demonstrate that the Examiner erred in finding that
APA, Chan and Stewart collectively teach “using . . . no more than one
microphone . . . [to] suppress the audio band environmental noise
components and . . . generate a noise suppressed side-tone signal” as set
forth in claim 1?

PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “‘On appeal to the Board,
an applicant can overcome a rejection by showing insufficient evidence of
prima facie obviousness . . . .’” In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (citation omitted).
Under § 103,
“there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness” . .
. . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim,
for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting Kahn, 441
F.3d at 988).
“[W]hen . . . the prior art . . . is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” KSR, 550 U.S. at 416. “‘Our suggestion test is in
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actuality quite flexible and not only permits, but requires, consideration of
common knowledge and common sense.’” Id. at 421 (citation omitted).
“‘The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.’”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR, 550 U.S. at 416).

FINDINGS OF FACT (FF)
1. Appellant explains that typical communication handsets employ
“side-tone processing, which transfers a portion of the signal spoken by the
user back into the handset earpiece” (¶ 003). The side-tone provides
feedback to the user so that a user does not talk too loudly (¶¶ 002-04).
2. Appellant depicts known prior art side-one feed-back circuits at
Figures 1 and 2 of the disclosure. The input to the side-tone audio path is
simply “picked off at some point along the reverse link audio path” and
“preferably comprises a single side-tone gain stage” (Spec.: ¶ 0020). This
“reverse link path” constitutes the “transmit portion” of the handset, and
comprises the handset microphone 102 or 202, the audio processor 114, and
the IF/RF circuit 116 (Figs. 1, 2; Spec.: (¶ 017). According to Appellant,
prior art DSP (digital signal processor) 216 (Fig. 2) preferably implements
the side-tone audio path in some prior art embodiments (see Spec.: ¶¶ 0023-
25).
3. Appellant notes that “[u]nfortunately . . . current handsets do not
filter out noise in the side-tone signal” (Spec.: ¶ 004), but they “typically
include some mechanism whereby noise is suppressed in the outgoing
communication” (Spec.: ¶ 005). Appellant describes several problems
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associated with such side-tone noise, including feedback degradation and
noise transmission which results in users speaking too loudly (Spec.: ¶¶ 004-
5).
4. Stewart states: “Sidetone, which is low-volume feedback of the
user’s voice signal to the earpiece of the instrument, is a requirement of
telephone operating authorities and provides reassurance to the user that the
handset is not ‘dead’” (4: 2nd ¶).
5. Stewart teaches suppressing the sidetone noise using an adaptive
filter apparatus “to reduce the detrimental effect of traffic noise being fed to
the user’s ear via instrument sidetone.” (4: 2nd ¶). Stewart’s method uses
two microphones to cancel noise from a reference microphone. In the
method, a noise traffic signal is substantially removed from the sidetone
signal to drive the ear piece of a handset. (4: 3rd ¶; Figs. 1-3). Stewart’s
system increases the speech intelligibility of a telephone handset in a noisy
environment (1: 4th ¶).
6. Chan teaches a technique for removing noise from a speech signal
with minimal operation steps by focusing on certain speech frequencies.
Chan does not use a reference microphone, but rather, processes one speech
input 13 using filtering and processing methods for digital speech and noise
samples. (Col. 2, ll. 13-59; col. 3, ll. 54-60; col. 4, ll. 46-56; Fig. 1).
7. Chan discloses that the technique is applicable in portable
telephones to suppress noise in decoder output signals or in encoding circuits
(col. 13, ll. 41-46).
ANALYSIS
Appellant’s arguments (Br. 11-14, Reply Br. 2-4, Reply Supp. Br. 2-
5) focus primarily on the alleged shortcomings of modifying Stewart’s dual
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microphone system to include Chan’s single microphone system. However,
the Examiner’s rationale includes totally replacing Stewart’s system, using
Stewart’s “concept of suppressing noise on the sidetone of a telephone”
(Ans. 6) (emphasis added). The Examiner provided a “reduced part count”
(Ans. 9) rationale to employ Chan’s simple single microphone system in the
APA system “in lieu of the dual audio signals noise suppression system
disclosed by Stewart” (Ans. 7) (emphasis added).
The record factually supports the Examiner’s rationale (FF 1-7). For
example, Stewart teaches “reduc[ing] the detrimental effect of a traffic noise
being fed to the user’s ear via instrument sidetone” (FF 5). Appellant admits
that sideband signal feedback circuits in handsets were typical (FF 1, 2) and
known to have noise problems due to a lack of filtering thereof, with
filtering provided in the transmission path (FF 3). Stewart bolsters
Appellant’s admissions and describes such handset sideband feedback
circuits as required by civil authorities (FF 4).
Given the known problems of excessive environmental noise in side-
tone speech signals according to Stewart’s teachings and/or Appellant’s
admissions (FF 3, 5), skilled artisans looking for a simple solution would
have implemented Chan’s single microphone filter method of removing
noise from a handset speech signal to accommodate existing handsets (see
FF 6, 7), in lieu of Stewart’s more complicated system involving a second
reference microphone (FF 5). Common sense dictates using a filter to
remove noise from a noisy signal, regardless of its path (i.e., side-tone
feedback path or transmission path). Chan merely reinforces this common
sense approach (FF 6, 7) as the Examiner’s findings indicate (see Ans. 6-7).
The “suggestion test is in actuality quite flexible and not only permits, but
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requires, consideration of common knowledge and common sense.” KSR,
550 U.S. at 421 (citation omitted) (internal quotation marks omitted).
Contrary to Appellant’s assertions that Chan does not teach a single
microphone system (see Br. 13), as the Examiner reasoned and as indicated
supra, Chan teaches using the noise removal technique “on a single audio
signal in a telephone” (Ans. 7, see FF 6, 7). Moreover, the APA handset
systems employ single microphones (FF 1-3). The assertion (Reply Supp.
Br. 6) that the record is devoid of teaching side-tone noise suppression lacks
merit since Stewart teaches such side-tone suppression - also as the
Examiner found and as noted supra (Ans. 4, FF 5).
In response to the Examiner’s rationale of using Chan’s circuit to
replace Stewart’s circuit using Stewart’s concept of eliminating noise from
the sideband, Appellant attempts to characterize the Examiner’s rationale as
one of a modification of Stewart’s dual microphone circuit with Chan’s
circuit (see Reply Supp. Br. 6-7). Based on that characterization, Appellant
concludes a lack of operability of Stewart’s system (Br. 14). However, that
characterization does not address the Examiner’s replacement rationale.3
Similarly, while Appellant couches a response in terms of the
Examiner’s proposed substitution/replacement rationale, Appellant’s
response actually sets up a straw man modification rationale: “The
substitution of a noise reducing apparatus of Chan in a two microphone side
tone circuit is not a ‘predictable use of prior art elements according to their
established functions’” (Reply Supp. Br. 7 (quoting KSR, 550 U.S. at 416)

3 See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . .).
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(emphasis added)). Appellant’s related assertion (Reply Supp. Br. 6) that
Stewart’s noise suppression stage is not a “familiar element” according to
KSR because it is a subject of Stewart’s patent lacks a legal foundation.
KSR’s familiar elements were inter alia, subjects of prior art patents.
Appellant’s further arguments (Br. 13-14) alleging a lack of a
reasonable expectation of success and motivation are not persuasive. Chan’s
proven noise removal technique evidences a reasonable expectation of
success based on common filtering techniques to remove unwanted noise
from any speech channel (FF 6-7), including the APA channel and its feed
back side-tone channel, especially where the former channel already
employs a noise suppression filter (see FF 3). As the Examiner found,
employing Stewarts’s concept of filtering side-tone noise using Chan’s
single microphone filter system in the known APA system predictably and
beneficially would have provided a clearer side-tone, filtered out
environmental noise, and increased the noise suppression (see Ans. 4-5, FF
1-7).
As such, Appellant has failed to demonstrate error in the Examiner’s
rationale involving a “mere substitution.” “[W]hen . . . the prior art . . . is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. at 416 (citation omitted).
Therefore, we will sustain the Examiner’s rejection of independent
claims 1, 8, and 16, and also of dependent claims 2-7, 9-15, and 17-21,
which were not separately argued, and which fall with the independent
claims.

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CONCLUSION
Appellant did not demonstrate that the Examiner erred in finding that
APA, Chan and Stewart collectively teach “using . . . no more than one
microphone . . . [to] suppress the audio band environmental noise
components and . . . generate a noise suppressed side-tone signal” as set
forth in claim 1.

DECISION
We affirm the Examiner’s decision rejecting claims 1-21.
No time 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
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Kyocera Wireless Corp.
Attn: Patent Department
PO Box 928289
San Diego, CA 92192-8289