Ex Parte Mcelvaney

Board of Patent Appeals and Interferences

Mar 31, 2003

08734857 (B.P.A.I. Mar. 31, 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written for publication and is not binding precedent of the Board.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 DAVID MCELVANEY
_____________
Appeal No. 2001-1944
Application No. 08/734,857
______________
ON BRIEF
_______________
Before THOMAS, DIXON and GROSS, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board from the examiner’s
final rejection of claims 1 through 7.
Representative claim 1 is reproduced below:
1. A digital network telephony device comprising:
a telephone handset comprising a microphone and a
speaker, said microphone being connected to at least
two microphone wires and said speaker being connected
to at least two speaker wires;
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Application No. 08/734,857
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a computer system comprising a computer sound card
having an input jack and an output jack and means for
receiving and transmitting digital audio signals, means
for compressing and decompressing said audio signals,
means for transmitting compressed audio signals to a
digital network, means for receiving compressed audio
signals from said digital network; and
means for connecting the microphone wires to the
input jack and for connecting the speaker wires to the
output jack.
The following reference is relied on by the examiner:
Schindler et al. (Schindler) 5,675,390 Oct. 07, 1997
(filed Jul. 17, 1995)
Claims 1 through 7 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness, the examiner relies upon Schindler
alone.
Rather that repeat the positions of the appellant and the
examiner, reference is made to the brief and the answer for the
respective details thereof.
OPINION
Since we have concluded that the examiner has failed to
establish a prima facie case of obviousness within 35 U.S.C.
§ 103, we reverse.
As appellant’s disclosed invention in the Summary of the
Invention at pages one and two of the brief made clear, it was
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well known in the art to utilize a separate microphone and
speaker connected to the sound card of a PC for purposes of
implementing internet telephony. As expressed at the top of page
two of the principal brief on appeal, “the invention differs in
that a telephone handset is used and is connected only to the
system’s sound card.”
Schindler’s Fig. 1 shows a home entertainment system 110
which is based upon personal computer 118 in the figure. The
system utilizes plural remote control devices 124, 126. These
are shown in Figs. 9 and 10 respectively. Fig. 3 shows the
input/output to a personal computer 118 in Fig. 1, and the
input/outputs consist of two sound cards 320, 321 as well as an
RF input/output element 324. The sound card 320 in Fig. 3 is
shown in more detail in Fig. 6 and, as noted by the examiner in
the answer, includes a microphone input 620 and speaker line
output 618. The input/output connections themselves from Fig. 3
are shown in Fig. 7 and the sound card is also shown there with
the same speaker line output 618 and the microphone input 620 as
a part of the sound card. Figs. 6 and 7 are discussed at column
12 of Schindler.
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Of Figs. 9A-9C, Fig. 9C illustrates and column 13, line 45
begins a discussion of a cordless telephone as depicted. This is
one variation of remote control input 124, shown in Fig. 1. The
discussion at column 14 beginning at line 15 indicates that this
unit interconnects with the personal computer 118 by the use of
RF circuitry 324 in Fig. 3 and a similar discussion was
introduced at the initial portion of column 9 as well. The
keyboard embodiment in Fig. 10 is also discussed at the bottom of
column 13 and intercommunicates with the personal computer 118 in
Fig. 1 by the use of RF element 1040 in Fig. 10 by means of the
RF input/output portion 324 in the Fig. 3 showing of the personal
computer 118. Part of the remote control 124 from Fig. 9C is
shown in Fig. 12 to emphasize that it communicates with the
personal computer by means of the radio frequency capability.
Note the discussion beginning at column 16, line 11.
Column 17, lines 26 through 41, noted by the examiner in the
answer, emphasizes that the implementation of the telephone
capability in these earlier figures of Schindler focuses upon
portable phones and speakerphones, the latter of which charac-
terization is consistent with appellant’s assessment of the prior
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art in the specification as filed. As emphasized here, both
speaker phone and cordless telephone approaches in the early
figures of Schindler all use the interconnectability of these
remote devices 124, 126 with the personal computer 118 by the use
of RF element 324 in Fig. 3 and not by the use of the sound card
320 as is required by the claims on appeal.
The discussion of Fig. 14 beginning at the bottom column 18
of Schindler indicates a Windows-based environment for imaging
various functionalities by the use of icons shown initially in
Fig. 14A. What has not been recognized by both appellant and the
examiner is the icon showing of a conventional telephone to the
right center of this figure. The information services icon 1412
is shown in Fig. 14B and the information services menu in Fig.
14D includes the ability for voice messages and interconnections.
The discussion at the middle of column 19 at lines 32 through 36
indicates the information services menu includes the capability
of a telephony function, but it is noted that it is tied to the
modem for voice messages. Thus, again, there is no teaching
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or suggestion of the use of the sound card within the PC 118 in
Figs. 1 and 3 for telephony purposes.
The speakerphone and cordless telephone approaches discussed
at column 17, lines 26 through 42 are based upon
interconnectabilities utilizing the modem only and do not appear
to teach or suggest the use of the PC 118 and its sound card 320
to implement this telephone functionality.
Figs. 15 and 16 of this reference are two different versions
of the video conferencing system. The Fig. 15 system utilizes
the ability to have microphone and speaker inputs connected to
the public telephone network PSTN generally shown as element 1510
in Fig. 15. Again, this approach does not utilize the sound card
320 of personal computer 118 in Figs. 1 and 3.
Finally, the alternative video conferencing approach unit
Fig. 16 is that portion of Schindler most relied upon by the
examiner as the basis for the telephone handset capability. The
discussion of this figure begins at the bottom half of column 20.
The dashed item 1622 in Fig. 16 is stated at column 20, lines 52
through 57 as indicating a voice capability as an optional
advanced feature.
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When the entirety of Schindler’s disclosure is considered in
conjunction with labeled element 1622 depicting a dashed
rectangular block stating “PHONE VOICE I/O” fulfilling a
very brief discussion in the noted portions of column 20, we are
constrained to conclude, like appellant and the substance of the
affidavit from Mr. Bogley (submitted as an attachment to paper
no. 9 received on March 15, 1999) that Schindler does not teach
or suggest the use of the claimed telephone handset. Consistent
with our earlier noted discussion with respect to the speaker-
phone and portable telephone approaches in the earlier figures of
Schindler, it appears to us that the depiction of the outgoing
arrowhead from element 1622 feeding directly the modem is
consistent with the prior approaches. Thus, to the extent that a
phone is suggested as part of element 1622, that is, a
conventional telephone handset, it is fed directly into the modem
322 and not into the sound card 320. Correspondingly, however,
any received audio in any form would appear to enter from a
public telephone line 1612 through the modem 322 to the bus 312
and outputted correspondingly to the sound card 320 to the phone
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Application No. 08/734,857
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according to the depiction of the arrowhead to the element 1622.
The manner in which appellant argues and the manner in which the
affidavit of Mr. Bogley conveys to us that Schindler’s system
appears to work is straightforward according to the showings in
Fig. 16.
The examiner indicates at the bottom of page 7 of the answer
that “Schindler teaches in Figure 16 that two way communication
is performed using element 1622 (voice capability), sound card
and a modem. One output goes to modem 322 for transmission and
one input goes to sound card 320 for reception.” The examiner
goes on to indicate that “[t]his teaching supports the conclusion
that element 1622 could be interpreted as a telephone handset
which is used to provide voice communications that is separate
from a video conference.”
Although we agree with these general assessments of the
examiner as to these teachings and showings, the claimed
invention requires that both the microphone of the telephone
handset input be to the sound card and the output from the sound
card feed the speaker of the handset. By the examiner’s own
admission, even if we consider the designation of element 1622 in
Fig. 16 as indicating a conventional telephone handset, it is not
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Application No. 08/734,857
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connected in the manner required by the claims on appeal.
Appellant’s remarks at the bottom of page 4 of the Reply brief
are consistent with this understanding as well as the substance
of paragraphs 5, 6 and 7 of the affidavit of Mr. Bogley.
Thus, if we were to consider the teachings and suggestions
of Schindler and any inferences that the artisan would have
reasonably derived therefrom in a light most favorably to the
examiner, the subject matter of the claimed invention still would
not have been met. The weight of the evidence before us in the
form of Schindler as well as the affidavit of Mr. Bogley leads us
to conclude that it would not have been obvious for the artisan
to have connected a telephone handset in the manner claimed to
the sound card of a personal computer.
In order for us to sustain the examiner’s rejection under
35 U.S.C. § 103, we would need to resort to speculation or
unfounded assumptions to supply deficiencies in the factual basis
of the rejections. In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968), reh’g
denied, 390 U.S. 1000 (1968). This we decline to do. Here,
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Application No. 08/734,857
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simply put, more evidence is needed to convince us of the
obviousness of the subject matter of the claims on appeal than
for the examiner to rely upon Schindler and the examiner’s own
arguments.
Our reviewing court has made it clear in In re Lee, 277 F.3d
1338, 61 USPQ2d 1430 (Fed. Cir. 2002), and In re Zurko, 111 F.3d
887, 42 USPQ2d 1476 (Fed. Cir. 1997) that rejections must be
supported by substantial evidence in the administrative record
and that where the record is lacking in evidence, this Board
cannot and should not resort to unsupported speculation. As
indicated in Lee, 277 F.3d at 1343-44, 61 USPQ2d at 1433-34, the
examiner's finding of whether there is a teaching, motivation or
suggestion to combine the teachings of the applied references
must not be resolved based on "subjective belief and unknown
authority," but must be "based on objective evidence of record."
In view of the foregoing, since we are constrained to
reverse the rejection of independent claims 1 and 7 on appeal, we
must also reverse the rejection of dependent claims 2 through 6.
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Therefore, the decision of the examiner rejecting claims 1
through 7 under 35 U.S.C. § 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
JDT/vsh
Appeal No. 2001-1944
Application No. 08/734,857
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MAX STUL OPPENHEIMER
P.O. BOX 50
STEVENSON, MD 21153