Ex Parte Werner et alDownload PDFPatent Trial and Appeal BoardMar 15, 201711782321 (P.T.A.B. Mar. 15, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/782,321 07/24/2007 Alan J. Werner JR. 1171 002 301 0202 7379 37211 7590 03/17/2017 BASCH & NICKERSON LLP 1751 Penfield Road PENFIELD, NY 14526 EXAMINER LAO, LUNSEE ART UNIT PAPER NUMBER 2655 NOTIFICATION DATE DELIVERY MODE 03/17/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): u sptomail @ bnpatentlaw .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALAN J. WERNER JR. and MALCOLM BUGLER Appeal 2016-004419 Application 11/782,321 Technology Center 2600 Before JASON V. MORGAN, KEVIN C. TROCK, and MICHAEL M. BARRY, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1—7 and 10-21, which constitute all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 Appellants identify the real party in interest as Alan J. Werner, Jr. App. Br. 4. Appeal 2016-004419 Application 11/782,321 Introduction Appellants state the invention is directed to an acoustic control apparatus and method, and more particularly to a “smart earplug” that is capable of selectively adjusting the output of an array of acoustic wave generation elements in response to input signals, wherein at least one of the input signals has been at least partially attenuated. Spec 12. There are three independent claims: 1. An acoustic attenuation control apparatus, comprising: an input sensor for receiving input acoustic signals to be processed, said input sensor including a microphone array, said microphone array consisting essentially of directional microphones for manifesting vibration in response to interaction with the input acoustic signals from a plurality of distinct directions in a user’s surroundings to generate a plurality of input signals, each of said plurality of signals representing an acoustic input from only one of the plurality of distinct directions relative to said input sensor; a processing device for producing, in response to the plurality of distinct input signals, at least one output signal dynamically controllable by a user, said processing device generating the output signal with at least a partially attenuated signal from at least one of the plurality of distinct directions, said signal processing device further including a mixing circuit to enable a mixing of at least two acoustic signals from the plurality of distinct directions; and an acoustic output port for generating the output acoustic signal produced by said signal processing device to protect the user from hearing loss due to excessively loud acoustic signals from the at least one of the plurality of distinct directions. 2 Appeal 2016-004419 Application 11/782,321 6. An acoustic signal processing system for attenuating acoustic signals in accordance with a user preference, comprising: at least one microphone array, said microphone array including directional microphones, mounted on opposite sides of a baffle, for generating a plurality of input signals in response to acoustic vibrations, each input signal representing an acoustic input from one of a plurality of distinct directions in the user’s environment as delineated by said baffle and relative to said microphone array; a signal processing device for producing, in response to the plurality of distinct input signals, at least one output signal, said signal processing device generating the output signal with at least a partially attenuated signal from at least one of the plurality of directions while maintaining a uniform frequency response, said signal processing device further including a mixing circuit, responsive to the user preference, to mix at least two acoustic signals from the plurality of distinct directions; and at least one speaker for generating the output acoustic signal in response to the output signal from said signal processing device. 11. A method for attenuating the sound perceived by a user from at least one direction, comprising: receiving an input acoustic signal from each of a plurality of separate directions, using a micro-electronic microphone array having microphones separated from one another by at least one baffle, where at least a first microphone only receives a first input acoustic signal from a first direction relative to the baffle and a second microphone only receives a second input acoustic signal from a second direction generally opposite the first direction and generating a plurality of input signals representing the respective acoustic input from each of a plurality of separate directions relative to the array; processing the input signals to produce at least one output acoustic signal such that the output acoustic signal level is generally reflective of a combination of the input acoustic 3 Appeal 2016-004419 Application 11/782,321 signals, except that one of said first and second input acoustic signals is attenuated to a lower level in the output acoustic signal; and generating, by an output speaker responsive to the at least one output signal, an acoustic signal directly in the canal of a user's ear. App. Br. 25—27 (Claims App’x). References and Rejections Claims 1—5 and 17 stand rejected under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. Final Act. 2—3. Claims 1—5 and 17 also stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lehr et al. (US 5,793,875; Aug. 11, 1998), Hagen et al. (US 7,369,669 B2; May 6, 2008), and Knorr et al. (US 6,970,571 B2; Nov. 29,2005). Final Act. 4—7. Claims 6, 7, 10, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ach-Kowalewski et al. (US 7,013,014 B2; Mar. 14, 2006) and Lehr. Final Act. 7—10. Claims 11, 14—16, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ach-Kowalewski and Malvar et al. (US 2005/0169483 Al; Aug. 4, 2005). Final Act. 10-12. Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ach-Kowalewski, Malvar, and Lehr. Final Act. 12—13. ANALYSIS Written Description Rejection The Examiner’s rejection of claims 1—5 and 17 under 35 U.S.C. § 112, first paragraph states the Specification, Drawings, and Claims as filed do not 4 Appeal 2016-004419 Application 11/782,321 support that Appellants were in “possession of’ the claim limitation “each of said plurality of signals representing an acoustic input from only one of the plurality of distinct directions relative to said input sensor” at the time of filing their Application. Final Act 3.2 Appellants argue the Examiner errs because paragraphs 22 and 37 of the Specification support the limitation, as do Figures 1 and 3^4. App. Br. 9. We agree with Appellants. Figure 1 shows “directionally oriented microphones 24A, 24B for sensing sound from locations A and B, respectively.” Spec. 122; see also Fig. 3. The Specification states “directionality of the various microphones in the array may be enhanced through the use of baffles or similar means for isolating or separating the microphones in the array.” Spec. 123; see also 137 (discussing Fig. 3 and stating “a baffle 130 (which may be circuit board 23). . . separates the first (24A) and second (24B) microphones of the microphone array”). These portions of the Specification and Drawings explain a directional microphone array in which each microphone receives acoustic input signal from only one direction and, accordingly, Appellants were “in possession of’ the recited limitation for an array of directional microphones that receive acoustic input signals from only one of a plurality of distinct directions, as recited. We do not sustain the Examiner’s 35 U.S.C. § 112, first paragraph rejection of claims 1—5 and 17. Obviousness Rejection of Claim 1 Regarding the 35 U.S.C. § 103(a) rejection of claim 1, Appellants argue the Examiner errs in finding Lehr teaches the recited requirement for 2 We note in passing that claim 11, which does not stand rejected under 35 U.S.C. § 112, first paragraph, also includes a similar “only” requirement. 5 Appeal 2016-004419 Application 11/782,321 microphones that receive input signals from “distinct directions,” because Lehr “shows an array . . . with multiple microphones facing in a common forward direction.” App. Br. 13 (citing Lehr 5:18—26). This argument does not persuade us. The passage of Lehr that Appellants cite states, inter alia, “[tjhese directional arrays are selective in azimuth.” Lehr 5:18—26. An ordinarily skilled artisan understands this to teach an array in which directional microphones receive their input signals from different (i.e., distinct) horizontal directions.3 In view of this, we agree with the Examiner’s finding that Lehr teaches an input sensor with a microphone array “for manifesting vibration in response to interaction with the input acoustic signals from a plurality of distinct directions.” See Final Act. 4. Appellants also argue Lehr shows its “microphone outputs as being combined or summed ... so that the [combined] signal must represent sounds from a plurality of microphones . . . and thus more than one direction.” App. Br. 13 (citing Lehr 4:40—51, Fig. 4). Appellants argue that “[s]uch a teaching is contrary to, and teaches away from, the recited limitations.” App. Br. 13. This does not persuade us. A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The teaching from Fehr that Appellants contend teaches away does not amount to any type of criticism or discouragement from the claimed solution. Instead, as the Examiner finds, and we agree, Fehr’s summing nodes actually teach a 3 See Merriam Webster’s Collegiate® Dictionary (10th ed.), p. 82 (1997) (defining azimuth as “horizontal direction expressed as the angular distance between the direction of a fixed point (such as the observer’s heading) and the direction of the object”). 6 Appeal 2016-004419 Application 11/782,321 portion of the claimed solution: the recited “mixing circuit to enable a mixing of at least two acoustic signals from the plurality of distinct directions.” See Final Act. 4. Appellants further argue Lehr does not teach the claim 1 limitation of “generating the output signal with at least a partially attenuated signal from at least one of the plurality of directions while maintaining a uniform frequency response, said signal processing device further including a mixing circuit” because Lehr’s summing nodes “do not act to attenuate.” App. Br. 13. This argument does not persuade us. An ordinarily skilled artisan understands that Lehr’s bandpass filters provide attenuation of the mixed input signals, which are then gain-controlled and combined to generate an output signal to a hearing aid speaker. See Lehr Fig. 4, 5:36—5:17. This teaches the requirement for generating the output signal “with at least a partially attenuated signal from at least one of the plurality of distinct directions,” as recited. Furthermore, Appellants do not persuasively explain how or why the Examiner errs in finding that Knorr separately teaches all elements of this generating requirement. See Final Act. 5—6 (citing Knorr 1:50—2:67, Figs. 1A, 2) (specifically finding Knorr teaches attenuation of a signal from at least one direction, as recited.). Accordingly, this argument is unpersuasive of Examiner error. Appellants also argue the combination of Lehr, Hagen, and Knorr does not teach claim 1 ’s requirement for “at least one output signal dynamically controllable by a user.” App. Br. 14. Appellants contend “like Lehr, Hagen similarly teaches the summing of signals . . . and the use of an omni-directional microphone . . . which is further believed to be contrary to the limitations of the rejected claims for the same reasons discussed relative 7 Appeal 2016-004419 Application 11/782,321 to Lehr.” App. Br. 14 (citing Hagen 8:65—9:2, 9:19-61). We find this contention regarding summing of signals unpersuasive for the same reason discussed supra for Lehr. We also note Appellants’ argument fails to address Hagen’s teaching of switching between directional and omni directional microphones. See, e.g., Hagen 8:30-9:67, Fig. 8. Regarding the claim 1 “at least one output signal dynamically controllable by a user” limitation, Appellants argue Knorr “does not identify any description of the attenuation of a signal from only one of a plurality of distinct directions, nor does the recited section of Knorr support the specific limitation recited.” App. Br. 14. “Knorr, alone or in combination with Lehr and/or Hagen, therefore, does not appear to be directed to the control or attenuation of volume from a particular direction.” App. Br. 14. This argument does not persuade us. The “at least one output signal” that is “dynamically controllable by a user” in claim 1 is generated “in response to the plurality of distinct input signals.” As discussed supra, Figure 4 of Lehr illustrates summing (mixing) of multiple distinct input signals, bandpass filters that attenuate the signals, gain controls for the filtered signals, and then a single output signal to a hearing aid speaker. See Lehr 4:36—5:17. Thus, Lehr teaches at least one controllable output signal generated in response to multiple distinct input signals, as recited. Knorr teaches user control of output signals, such as for volume and balance control, thus teaching the recited “output signal dynamically controllable by a user” requirement. See Knorr 2:18—33. Appellants do not persuade us the Examiner errs in finding the combination of Lehr and Knorr teach all recited “processing device” requirements, 8 Appeal 2016-004419 Application 11/782,321 including the requirement for dynamic user control of an output signal. See Final Act. 4—6. Appellants also contend the Examiner errs because Knorr “does not appear to be directed to the control or attenuation of volume from a particular direction.” App. Br. 14. This contention is not commensurate with the scope of the claim. Claim 1 requires “generating the output signal with at least a partially attenuated signal from at least one of the plurality of distinct directions.” This does not require dynamic user control or attenuation of volume from only one of the distinct directions. See, e.g., E- Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (properties of preferred embodiments described in the specification not recited in a claim do not limit the reasonable scope of the claim); see also In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“The invention disclosed . . . may be outstanding in its field, but the name of the game is the claim.”). As discussed supra, Lehr’s bandpass filters at least partially attenuate the mixed input signals from the microphone array prior to gain control and output to a speaker. See Lehr, Fig. 4. Knorr teaches user control of gain. See Knorr 1:51—2:42. Appellants do not persuade us the Examiner errs in finding the combination of Lehr and Knorr teaches all requirements of the recited processing device. Accordingly, we sustain the rejection of claim 1 under 35 U.S.C. § 103(a). In doing so, we adopt the findings and reasons of the Examiner. See Final Act. 4—6, Ans. 5—9. Obviousness Rejections of Claims 2—5 and 17 Claims 2—5 and 17 depend, directly or indirectly, from claim 1. Appellants separately argue the merits of claims 4 and 17. App. Br. 15—18. 9 Appeal 2016-004419 Application 11/782,321 Appellants provide no substantive arguments for claims 2 and 3 separate from claim 1. Accordingly, we sustain their rejection. In rejecting claim 4, the Examiner finds Lehr, as modified by Knorr, teaches the recited “wherein said acoustic output port includes at least one speaker and where the apparatus further comprises at least one ear bud housing at least said microphone array, amplifier and speaker” requirement. Final Act. 6—7 (citing Lehr 4:36—5:67, Figs. 4, 5). Appellants argue the Examiner errs because Lehr’s earbud does not contain the microphone array, which is in a separate housing worn around the neck. App. Br. 15. The Examiner answers by pointing to Lehr’s Figure 2, stating Lehr teaches a “hearing aid inherently including [a] microphone array, amplifier and speaker.” Ans. 9 (also citing the same portions of Lehr as the Final Action). Appellants persuade us. Lehr’s Figure 2 is similar to Figure 4—both show a microphone array contained in a separate housing worn around the neck. There is no basis for a finding that Lehr’s hearing aid, which uses microphones worn around the neck, teaches or suggests an earbud housing a microphone array. Accordingly, we do not sustain the 35 U.S.C. § 103(a) rejection of claim 4. We also, therefore, do not sustain the rejection of claim 5, which depends from claim 4. In rejecting claim 17, which depends from claim 1, the Examiner finds Lehr, as modified by Knorr, teaches the requirement that “said partially attenuated signal is perceived as being lower than an ambient sound from the same direction.” Final Act. 7. Appellants argue that although Knorr discloses “‘attenuating or enhancing sounds exceeding a predetermined level[]’ such a disclosure is not believed to result in one of ordinary skill in the art understanding the limitations of the claim relative to a partially 10 Appeal 2016-004419 Application 11/782,321 attenuated signal perceived as being lower than an ambient sounds [sic] from the same direction.” App. Br. 16. Appellants do not persuade. An ordinarily skilled artisan understands that conditions will routinely arise so that the attenuated signals of Lehr’s Figure 4, discussed supra, may be lower than ambient sound coming from the same direction as the attenuated sound. Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of claim 17.4 Obviousness Rejection of Claim 6 In rejecting independent claim 6, the Examiner finds an ordinarily skilled artisan would have been motivated to combine the teachings of Ach- Kowalewski and Lehr “to improve speech comprehension.” Final Act. 9. Appellants argue this finding is erroneous because “such an ‘improvement’ is contrary to the objective of the instant invention.” App. Br. 17. This is unpersuasive. “As long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). Improving speech comprehension is a sufficient reason, with rational underpinning, for combining the teachings of Ach-Kowalewski and Lehr. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); KSRIntI Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). 4 We also note there appears to be no written description support in the Specification for this claim requirement, and it is unclear how to determine ambient sound relative to the attenuated signal. In the event of further prosecution of this claim, the Examiner should consider rejections under 35 U.S.C. § 112, first and second paragraphs for this claim. 11 Appeal 2016-004419 Application 11/782,321 Appellants also argue the Examiner errs in finding Ach-Kowalewski teaches the recited baffle of claim 6. App. Br. 17—18. The Examiner responds by supplementing the finding made in the rejection (that the head of the user 4 in Ach-Kowalewski teaches the recited baffle) with the additional finding: the baffle corresponds to the sub-configuration from the motherboard (inherent) of hearing aid device 1 to the motherboard (inherent) of hearing aid device 2 and everything in between, including the space occupied by user 4. See fig. 1 and col 4, lines 25-42. This sub-configuration prevents interference between sound waves/inputs entering device 1 and device 2. Ans. 10. Appellants do not rebut this finding with any explanation for how or why claim 6 does not encompass Ach-Kowalewski’s microphones arranged on both sides of a user’s head, with the intermediate elements providing the recited baffle. Accordingly, Appellants do not persuade us the Examiner errs in this finding. Appellants further argue that construing Ach-Kowalewski to include a baffle results in a teaching that is contrary to the teachings of Lehr, because Lehr teaches summing microphone signals, and that the references “teach away from the particular limitations” of claim 6. App. Br. 18. This argument is unpersuasive. As discussed supra, in order to teach away, a reference must criticize, discredit, or otherwise discourage the claimed solution. In re Fulton, 391 F.3d at 1201. “A finding that two inventions were designed to resolve different problems ... is insufficient to demonstrate that one invention teaches away from another.” Nat 7 Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). 12 Appeal 2016-004419 Application 11/782,321 The relevant inquiry is whether the claimed subject matter would have been obvious to one of ordinary skill in the art in light of the combined teachings of the references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants’ arguments do not persuade us that combining the teachings of Lehr’s directional hearing aids that use microphones worn around the neck with the teachings of Ach-Kowalewski’s hearing aids that use microphones worn behind each ear, as set forth by the Examiner, was “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419); see also KSR, 550 at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Accordingly, we sustain the rejection of claim 6. In doing so, we adopt the findings and reasons of the Examiner. See Final Act. 7—9, Ans. 10-12. Obviousness Rejections of Claims 7, 10, 18, and 19 Claims 7, 10, 18, and 19 depend from claim 6. Appellants separately argue the Examiner errs in rejecting claims 10, 18, and 19. App. Br. 18—20. Appellants provide no substantive arguments for claim 7 separate from claim 6. Accordingly, we sustain its rejection. Regarding claim 10, the Examiner finds Ach-Kowalewski teaches its recited “wherein said baffle is a circuit board having the microphones mounted on opposite sides thereof’ requirement. Final Act. 9 (citing Ach- Kowalewski 4:25—5:25, Fig. 1). Appellants argue, inter alia, it is “unclear what the Examiner relies upon over a column of referenced description.” App. Br. 18. The Examiner responds that the findings for how Ach- 13 Appeal 2016-004419 Application 11/782,321 Kowalewski teach the recited baffle of claim 6 also teach the requirements of claim 10. Ans. 12. We disagree with the Examiner. Claim 10 requires, in essence, microphones mounted on opposite sides of a circuit board that is the baffle of claim 6. While the Examiner’s findings for claim 6 include circuit boards (“motherboards”) for the two hearing aids inserted in the ears of a user as part of the baffle (i.e., two circuit boards: one for each hearing aid), which also includes various other components, see Ans. 10, there is no explanation for how or why this teaches or suggests claim 10’s more limited requirement of mounting microphones on opposite sides of a (as in one) circuit board, as recited. Accordingly, we do not sustain the rejection of claim 10. Regarding claim 18, the Examiner finds Ach-Kowalewski teaches its recited requirement for two directional microphones that receive acoustic vibrations from two directions that are opposite each other. Final Act. 9 (citing Ach-Kowalewski 4:25—5:25, Fig. 1). Appellants argue “it is unclear what the Examiner relies in columns 4 and 5 of Ach-Kowale[wski] (or Lehr for that matter) that would result in a teaching of detecting sounds from opposite directions when the disclosure supports the detection of sound from a line of sight direction.” App. Br. 19. The Examiner responds that the microphone arrays in Figure 1 of Ach-Kowalewski, which are arranged on opposite sides of a user’s head, receive acoustic input from opposite directions. Ans. 12. We disagree with the Examiner. An ordinarily skilled artisan understands that, although hearing aid devices arranged in opposite ears will be subject to sound from opposite directions, the directional microphones in 14 Appeal 2016-004419 Application 11/782,321 Ach-Kowalewski are configured to receive acoustic signals from a substantially forward direction. See, e.g., Ach-Kowalewski 4:15—53, Fig. 1 (also discussing that conventional hearing aid devices are typically aligned between 25° and 45° laterally outward from the forward direction). There is no basis for the Examiner’s finding that the directional microphones in the arrays of Ach-Kowalewski receive acoustic signals from opposite directions, as recited. Accordingly, we do not sustain the rejection of claim 18. Obviousness Rejections of Claims 11—16, 20, and 21 Appellants argue the Examiner errs in rejecting independent claim 11 because neither Ach-Kowalewski nor Malvar teach its recited requirement for “delineation of generally opposite sound.” App. Br. 20. We agree. Claim 11 recites “a first microphone only receives a first input acoustic signal from a first direction relative to the baffle and a second microphone only receives a second input acoustic signal from a second direction generally opposite the first direction.” The Examiner finds Ach- Kowalewski teaches this requirement for the same reasons as for claim 18. See Ans. 15—16. For the same reasons discussed supra for claim 18, we disagree with the Examiner.5 Accordingly, we do not sustain the rejection of claim 11. We also do not sustain the rejection of its dependent claims 12—16, 20, and 21. 5 For the purpose of our analysis of whether Ach-Kowalewski teaches the recited requirements, there is no meaningful distinction between claim 18’s two recited “directional microphones” that receive “acoustic vibrations” from opposite directions and claim 11 ’s two “microphones” that “only receive” their “input acoustic signals” from opposite directions. 15 Appeal 2016-004419 Application 11/782,321 DECISION For the above reasons, we: reverse the Examiner’s rejection under 35 U.S.C. § 112, first paragraph of claims 1—5 and 17; affirm the Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1—3, 6, 7, 17, and 19; and reverse the Examiner’s rejection under 35 U.S.C. § 103(a) of claims 4, 5, 10-16, 18, 20, and 21. On the record before us, claims 1—3, 6, 7, 17, and 19 are unpatentable, and claims 4, 5, 10—16, 18, 20, and 21 are patentable. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 16 Copy with citationCopy as parenthetical citation