Ex Parte Lowles

Board of Patent Appeals and Interferences

Dec 9, 2008

10956018 (B.P.A.I. Dec. 9, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT JAMES LOWLES
____________

Appeal 2008-4055
Application 10/956,018
Technology Center 2600
____________

Decided: December 9, 2008
____________

Before KENNETH W. HAIRSTON, MAHSHID D. SAADAT,
and KARL D. EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-12, 15-17 and 19-29. No other claims are pending.
(App. Br. 5). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Appellant discloses and generally claims a mobile communication
device including an audio output device, a sensor system for detecting a state
of an environment of the communication device from among at least two
states and an adjustment system for selecting an intensity of output for the
audio output device based on the state detected by the sensor. (Spec. ¶
0005). By sensing such environmental conditions, such as when a mobile
telephone device is either in a noisy environment, a holster case, or neither,
Appellant’s system overcomes auditory discomfort problems associated with
prior art telephones producing excessive volumes. (Spec. ¶ ¶ 0002, 0003,
and 0028).
Claim 1 is representative of the claims on appeal:
1. A mobile communication device comprising:
an audio output device;
a user interface adapted for inputting a first audio intensity to be
associated with a first environmental state and for inputting a second audio
intensity to be associated with a second environmental state;
a memory for storing said first audio intensity in association with said
first environmental state and said second audio intensity in association with
said second environmental state;
a sensor system for detecting a state of an environment of said
communication device from between said first environmental state and said
second environmental state; and
an adjustment system for selecting between said first audio intensity
and said second audio intensity for said audio output device based on said
state detected by said sensor.
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The Examiner relies on the following prior art references to show
unpatentability:
Finch US 5,542,105 Jul. 30, 1996
Murray US 5,646,589 Jul. 8, 1997
Kaschke US 5,956,626 Sept. 21, 1999

1. Claims 1-3, 15, 19-29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the collective teachings of Finch and Murray.
2. Claims 4-12, 16 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the collective teachings of Finch, Murray, and
Kaschke.
The Appeal Brief (filed May 7, 2007) (“App. Br.”), Reply Brief (filed
November 12, 2007) (“Reply Br.” and the Answer (mailed October 17,
2007) (“Ans.”) detail Appellant’s and the Examiner’s positions.
ISSUES
In response to Appellant’s separate arguments, we group the
Examiner’s rejections of claims 1-3, 15, and 19-29 based on the collective
teachings of Finch and Murray into three distinct groups of claims: 1)
claims 1-3, 15, 19, 20, 28, and 29; 2) claims 21-24; and 3) claims 25-27.
(See App. Br. 10-11). Appellant does not present separate patentability
arguments for dependent claims 4-12, 16 and 17 (App. Br. 12-13).1 The
several issues presented each are addressed separately below.

1 “A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.” 37 C.F.R.
§ 41.37(c)(1)(vii).
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FINDINGS OF FACT (FF)
Finch
1. Finch generally teaches automatically rendering louder audio volume for
alert purposes and telephone interaction as a radio device speaker to user
distance increases. Finch specifically discloses a telephone device that
automatically converts to a high volume for DTMV tones and audio when a
Hall switch 14 determines that the device is aligned with a magnet 38 in a
hip holster case 30. (Col. 1, ll. 11-27, col. 2, ll. 18-43, Fig. 2).
2. Finch’s mobile radio includes a housing 12 with various buttons,
switches and displays “to allow the user to operate the radio’s options and
features.” (Col. 1, l. 66 to col. 2, l. 1). The only buttons and/or switches
depicted and described on the housing 12 include the DTMF tone buttons
13, specifically disclosed “to interface with a telephone system” and the Hall
sensor 14. (Col. 2, ll. 1-3, Fig. 1). Finch also teaches a need to easily and
inexpensively incorporate into a radio: “a means by which various radio
functions such as audio level, DTMF tone level, light brightness, telephone
hang-up or mode of operation can be easily switched and/or controlled
depending on the user conditions.” (Col. 1, ll. 42-47).
3. A microprocessor 52 ultimately controls the volume of the DTMF tone
pad and/or speaker volume of the radio based upon its Hall sensor alignment
with the magnet in the holster carrying case. The speaker and/or DTMF
volume respectively increases and decreases when the telephone is inserted
into and removed from the holster case. (Col. 2. ll. 12-36).
4. “Thus, the radio senses its position within carrying case 30 freeing the
user from the burden of constantly adjusting the radio’s control functions
such as audio output.” (Col. 2, ll. 39-42).
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Murray
5. Murray discloses a pager which automatically alerts a user of an
incoming page via two distinct types of alerts: audible (speaker) or tactical
alert (vibrator). (Abstract, col. 2, ll. 21-27). The choice of alert type is
based on the level of ambient background noise (e.g., traveling car with
radio playing), the user’s choice, and/or the pager location (i.e., on the user
or not). (Abstract, col. 3, ll. 10-57).
6. An ambient sound level detector 19 includes a transducer (e.g.,
microphone), a sample and hold circuit, and an analog to digital converter,
and compares the background noise to a threshold value stored in memory
14. (Col. 2, ll. 46-53).
7. A desired alert mode setting (tactile or audible) is also stored in memory
14 and set by a user entering commands via controls 18 to a controller 16.
(Col. 2, ll. 40-45; Fig. 1).
8. The device also automatically presents contents of received messages
visibly or audibly. (Col. 2, ll. 28-34, col. 2, ll. 65-67).
9. The same transducer 25 used to determine ambient noise (i.e.,
microphone function –see FF 6) can be used to playback audio messages
and/or generate an audio alert (i.e., speaker function). (Col. 2, ll. 61-67).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, the Examiner must first
establish a factual basis to support the legal conclusion of obviousness. See
In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). If the Examiner meets the
burden, it then shifts to the Appellant to overcome the prima facie case with
argument and/or evidence. Obviousness is then determined on the basis of
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the evidence as a whole and the relative persuasiveness of the arguments.
See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). As to the conclusion of
obviousness:
[W]hen a patent claims a structure already known in the prior
art that 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….
….
…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 and
Anderson’s-Black Rock 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 Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740 (2007).

ANALYSIS
Claims 1-3, 15, 19, 20, 28, and 29
Appellant argues that the Examiner erred in finding (Ans. 4-7) that
Finch and Murray collectively teach the user interface and memory as
recited in claim 1. (App. Br. 10, Reply Br. 4). Thus, the issue before us is:
Did Appellant demonstrate that the Examiner erred in finding that Finch and
Murray collectively teach the claimed user interface and memory?
Appellant acknowledges that Murray teaches a memory 14, but
contends that Murray’s memory does not store the first and second audio
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intensities as required by claim 1. (App. Br. 10). To buttress the argument,
Appellant points out that Murray’s memory stores a user mode and a
threshold intensity. (Id.) Appellant then concludes that the Examiner has
failed to establish a prima facie case of obviousness (Id.).
We generally agree with Appellant that Murray’s memory stores the
user mode and threshold intensity (FF 6-7), but disagree as to the
conclusion. The Examiner generally found that it would have been obvious
to employ Murray’s memory 14 in Finch’s system to provide a means for
providing separate audio alert levels (Ans. 5).
We agree with the Examiner. It is clear that the rejection was based
on the collective teachings of Finch and Murray. Appellant improperly
addresses each reference individually. In re Keller, 642 F.2d 413, 426
(CCPA 1981) (“one cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references”).
Appellant does not dispute, and we find, that Finch teaches a
microprocessor providing two distinct audio level intensities based on the
two distinct environmental states of a holstered and hand-held (unholstered)
radio (FF 1, 3, 4). While Finch is silent regarding where such audio
intensity levels are stored for use by the microprocessor, we find that the
audio intensity levels effectively must be stored somewhere, either in a
memory or an equivalent software or hard-wired logic device of some type.
In any case, Murray generally teaches a memory 14 to store threshold data
associated with an environmental audio noise threshold intensity for use by a
controller in a similar page warning system employing different types of
warning alerts based on different environmental conditions (FF 5-7). Under
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KSR, combining Murray’s familiar memory element and Finch’s familiar
microprocessor system to store first and second audio intensities as recited in
claim 1 would have involved no “more than the predictable use of prior art
elements according to their established functions.” KSR, 127 S. Ct. at 1740.
With respect to the user interface, Appellant disputes the Examiner’s
finding (Ans. 4) that Finch’s DTMF interface constitutes the user interface
as claimed (Reply Br. 4-5).2 Appellant’s argument appears to be directed to
an asserted lack of an explicit teaching in Finch that the DTMF interface can
be used to input the first and second audio intensities. (Id.). Appellant’s
argument focuses too narrowly on Finch’s broad teaching.
The only buttons and/or switches Finch discloses and depicts include
those in the DTMF pad and the Hall sensor, yet Finch also describes various
buttons and/or switches to control various options and/or functions of the
radio (FF 2). Thus, we infer that the DTMF pad, or some other set of
buttons/switches on the housing, necessarily must constitute a user interface
to control such options. Appellant’s assertion that the DTMF pad is used
only to interface with the telephone system (Reply Br. 4) does not address
Finch’s broad teaching regarding buttons and/or switches to control various
functions of the telephone. Accordingly, we find that Finch’s buttons and/or
switches, whether inclusive of the DTMF pad or not, constitute a user
interface that controls the audio intensity and buttress our finding as follows.

2 Appellant’s make this argument for the first time in their Reply Brief, and
also regroup claims 15 and 20 under a separate heading from that of claim 1
(Reply Br. 4-5). Despite the separate headings, we find the arguments
directed to the same or similar limitations involved in claims 1, 15, and 20 –
the user interface – and do not constitute separate patentability arguments.
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Appellant’s argument, carried to its logical conclusion, results in the
unlikely scenario whereby all users of Finch’s radio, regardless of
differences in hearing ability, would lack any initial volume control over the
initial settings at each environmental position (i.e., holstered, unholstered).
This argument must fail because we find that Finch’s system improves upon
prior art systems having volume control to accommodate different
environmental conditions and hearing abilities (see FF 1, 2, 4). That is, we
find that Finch’s statement that a user is freed from “constantly adjusting the
radio’s control functions such as audio output” (FF 4, emphasis supplied)
discloses, or at a minimum, suggests, at least one initial volume control
adjustment. Additionally, Finch describes a need for an existing radio
system volume to be easily and inexpensively “switched and/or controlled”
(FF 2, emphasis added) – further implying volume user input control with
Hall switching.
Finally, even if Finch lacks a specific disclosure of buttons/switches
to control the initial volume settings for the two environmental states
(holstered, unholstered), under KSR, combining Finch’s familiar and existing
prior art option control buttons additionally to control the initial volume
setting at each of Finch’s two environmental conditions would have
involved no “more than the predictable use of prior art elements according to
their established functions.” KSR, 127 S. Ct. at 1740.
Under an alternative interpretation of claim 1 and reading of Fitch, we
first note that activation and deactivation of the Hall switch upon
radio/holster insertion and removal respectively creates a greater and lesser
audio output from the radio speaker and/or the DTMF tone pad. (FF 1, 3).
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Therefore, we find that upon such Hall activation/deactivation, a signal from
the microprocessor accompanies a user inputted DTMF tone pad key
depression to create a greater/lesser tone pad volume input and output to and
from an audio tone emitting device (either the speaker and/or other audio
device specific to the tone pad) based upon first (holstered) and second
environmental (unholstered) states. (See FF 1-3, Fig. 4). Thus, for this
additional reason, Fitch’s DTMF key pad constitutes “a user interface
adapted for inputting a first audio intensity associated with a first
environmental state and for inputting a second audio intensity to be
associated with a second environmental state” as required by claim 1.
In conclusion, the Examiner did not err in finding that Finch and
Murray collectively teach the user interface and memory as recited in claim
1. Accordingly, for the reasons described above, we sustain the Examiner’s
rejection of claims 1-3, 15, 19, 20, 28 and 29.

Claims 21-24
Appellant’s arguments directed to claims 21-24 merely involve an
assertion that the combination of Finch and Murray fails to teach the
following recited limitations of claim 21: “a processor adapted to, when in a
voice communication mode, send signals from said microphone for
transmission, and when not in a voice communication mode, use signals
from said microphone as an indication of ambient noise and select an
intensity of output for said audio output device based on said indication of
ambient noise.” (App. Br. 11). The Examiner generally found that Murray
teaches claims 22-23 (Ans. 6, citing Murray, Abstract, col. 2, ll. 1-67). The
limitations of claims 22-23 are similar to those argued with respect to claim
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21, as Appellant submits (App. Br. 11). The issue: Did Appellant
demonstrate error in the Examiner’s findings with respect to claim 21?
Appellant’s mere recitation of claim limitations does not demonstrate
error in the Examiner’s position nor meets Appellant’s burden on appeal.
Accordingly, we have no basis upon which to find error in the Examiner’s
position. Moreover, we separately find that employing Murray’s
microphone and ambient noise detection system in combination with Finch’s
microprocessor system meets claim 21. That is, Murray’s system sends
signals for transmission in a voice communication mode, by sending and
transmitting audio voice recordings through a speaker/microphone to the
user’s ear, and when not in such a mode, the same microphone/speaker
indicates ambient noise levels to the controller of Murray (FF 6, 9). Under
KSR, combining Murray’s familiar microphone ambient detector/voice
transmitter alert control system with Finch’s similar microprocessor
environmental detection and audio control system would have involved no
“more than the predictable use of prior art elements according to their
established functions.” KSR, 127 S. Ct. at 1740.
In conclusion, Appellant did not demonstrate that the Examiner erred.
Accordingly, we sustain the Examiner’s rejection of claims 21-24.
Claims 25-27
Appellant argues, for representative claim 25, that neither Finch nor
Murray contemplates changing the level of call annunciation and incoming
message annunciations based on environmental conditions, and, therefore,
the Examiner failed to make out a prima facie case of obviousness. (App.
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Br. 11-12). The issue: do Finch and Murray collectively teach the claimed
elements in dispute?
Appellant acknowledges that Finch generally teaches automatically
controlling, based on environmental states, various radio functions such as
audio output level in the speaker and the DTMF tone generator, as well as
light brightness in the display (App. Br. 11). We concur and also find that
Finch generally teaches making the output louder as the device to user
distance increases so that a user can hear a conversation or alert (FF 1, 3, 4).
Finch and Murray each teach an incoming call annunciation system. (FF 1,
7). Murray also teaches an incoming audio or visible message annunciation
system (FF 8). Under KSR, supplementing Finch’s familiar microprocessor
based, environmentally controlled, volume adjustment call alert and voice
communication system (FF 1) with Murray’s message annunciation system,
thereby also producing a comfortably audible annunciation and underlying
message, would have involved no “more than the predictable use of prior art
elements according to their established functions.” KSR, 127 S. Ct. at 1740.
In conclusion, Finch and Murray collectively teach the claimed
elements in dispute. Accordingly, we sustain the Examiner’s rejections of
claims 25-27.
Claims 4-12, 16 and 17
With respect to claims 4-12, 16 and 17 which ultimately depend from
claims 1 or 15, Appellant restates the argument for claims 1 and 15 (App.
Br. 12) and submits that the addition of Kaschke does not teach the
limitations thereof. No separate issue arises.
Having found that the combination of Murray and Finch teaches the
disputed limitations, and for reasons we explained supra with regard to
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claims 1 and 15, we also sustain the Examiner’s rejection of claims 4-12, 16
and 17.

DECISION
We affirm the Examiner’s decision rejecting claims 1-12, 15-17 and
19-29.
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

KIS

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