Ex Parte Xiang et alDownload PDFPatent Trial and Appeal BoardMay 23, 201612629612 (P.T.A.B. May. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/629,612 12/02/2009 23696 7590 05/25/2016 QUALCOMM INCORPORATED 5775 MOREHOUSE DR. SAN DIEGO, CA 92121 FIRST NAMED INVENTOR Pei Xiang 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 091019 8139 EXAMINER TALUKDER, MD K ART UNIT PAPER NUMBER 2648 NOTIFICATION DATE DELIVERY MODE 05/25/2016 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): us-docketing@qualcomm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PEI XIANG and WADE L. HEIMBIGNER Appeal2014-004893 Application 12/629,612 Technology Center 2600 Before JOHN A. JEFFERY, JAMES R. HUGHES, and LINZY T. McCARTNEY, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-22 and 33--46. Claims 23-32 have been indicated as containing allowable subject matter. Ans. 3. 1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellants' invention reproduces mid-side (M-S) audio on mobile handsets by using a multi-channel digital-to-analog converter (DAC) to 1 Throughout this opinion, we refer to (1) the Final Rejection mailed February 7, 2013 ("Final Act."); (2) the Appeal Brief filed September 11, 2013 ("App. Br."); (3) the Examiner's Answer mailed January 2, 2014 ("Ans."); and (4) the Reply Brief filed March 3, 2014 ("Reply Br."). Appeal2014-004893 Application 12/629,612 convert digitized mid and side audio signals of a M-S stereo signal to analog mid and side signals, and outputting the signals to the handset and speakerphone speakers. See generally Abstract; Spec. 45-51. Claim 1 is illustrative: 1. A method of outputting mid-side (M-S) encoded sound at a device, comprising: receiving a digitized mid audio signal of an M-S stereo signal at a digital-to-analog converter (DAC) included in the device; receiving a digitized side audio signal of the M-S stereo signal at the DAC; the DAC converting the digitized mid and side audio signals to analog mid and side audio signals, respectively; outputting mid channel sound at a first transducer included in the device, in response to the analog mid audio signal; and outputting side channel sound at a second transducer included in the device, in response to the analog side audio signal. THE REJECTIONS The Examiner rejected claims 1-5, 7-22,2 33-38, and 40-46 under 35 U.S.C. § 103(a) as unpatentable over Yamada et al. (US 2011/0116639 Al, published May 19, 2011) and Ojanpera (US 2008/0130903 Al, published June 5, 2008). Final Act. 2-38. 2 Because the Examiner withdrew the rejection of claims 23-32 (Ans. 3), we omit those claims from the listing of the rejections here for clarity. 2 Appeal2014-004893 Application 12/629,612 The Examiner rejected claims 6 and 39 under 35 U.S.C. § 103(a) as unpatentable over Yamada, Ojanpera, and Albert (US 2008/0165976 Al, published July 10, 2008). Final Act. 38--42. THE OBVIOUSNESS REJECTION OVERY AMADA AND OJANPERA The Examiner finds that Yamada discloses every recited element of claim 1 except for M-S encoded stereo audio signals, but cites Ojanpera as teaching this feature in concluding that the claim would have been obvious. Final Act. 2-5. Although the Examiner acknowledges that Yamada's multiple DACs receive digitized audio signals, the Examiner nonetheless finds that using a single DAC instead of multiple DA Cs is a design choice, for the same function is said to be performed for either implementation. Ans. 5---6. Appellants argue that the cited prior art does not teach or suggest receiving the digitized mid and side audio signals at the same DAC as claimed, but rather at separate DACs. App. Br. 7-10; Reply Br. 3. Appellants add that modifying Yamada according to Ojanpera as the Examiner proposes would render Yamada inoperable for its intended purpose of providing a greater number of output audio channels-not the same number of channels as would be the case with the Examiner's proposed modification. App. Br. 10-11; Reply Br. 1-3. ISSUES (1) Under§ 103, has the Examiner erred in rejecting claim 1 by finding that Yamada and Ojanpera collectively would have taught or suggested receiving digitized mid and side audio signals at the same DAC? 3 Appeal2014-004893 Application 12/629,612 (2) ls the Examiner's combination supported by articulated reasoning with some rational underpinning to justify the Examiner's obviousness conclusion? This issue turns on whether the Examiner's proposed modification renders Yamada unsuitable for its intended purpose of providing more audio output channels than input channels. ANALYSIS We begin by noting that claim 1 's receiving steps refer to the same DAC. That is, a digitized mid audio signal is received at a DAC in the device, and a digitized side audio signal is received at the DAC. Appellants' Specification notes that conventional cellular handsets did not use the handset and speakerphone speakers simultaneously because there was only one DAC to drive either speaker. Spec. i-f 50. But adding another DAC to drive all speakers simultaneously would increase production cost significantly. Id. To overcome this drawback, Appellants' invention reproduces M-S encoded stereo with an existing stereo DAC. Id. Given this context, the Examiner apparently construes claim 1 as limited to a single DAC, but takes the position that using a single DAC instead of multiple DA Cs is a design choice, for the same function is said to be performed for either implementation. Ans. 5---6. We need not reach the merits of this position, however. Even assuming, without deciding, that using a single DAC instead of multiple DA Cs to receive digitized audio signals would have been an obvious variation as the Examiner proposes, we still find the Examiner's proposed modification to Yamada in light of Ojanpera to be problematic on this record. 4 Appeal2014-004893 Application 12/629,612 In short, the Examiner has not responded persuasively to Appellants' contention that the proposed modification would render Yamada unsuitable for its intended purpose of providing a greater number of output audio channels-not the same number of channels as would be the case with the Examiner's proposed modification. App. Br. 10-11; Reply Br. 1-3 (citing Yamada i-fi-f l-2, 37, 110-113; Abstract; Figs. 1-2, 11-12, 23). The Examiner's position that the cited references are (1) reasonably pertinent to Appellants' problem, and (2) in the same field of endeavor (Ans. 3--4) does not squarely address, let alone persuasively rebut, Appellants' position that the proposed modification would render Yamada unsuitable for its intended purpose-unsuitability that is fatal to an obviousness case. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). The Examiner's response to Appellants' arguments in this regard is unpersuasive, for the Examiner's response merely pertains to whether the references are analogous art-not whether the proposed modification would render Yamada unsuitable for its intended purpose. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (noting that prior art is analogous if it is (1) from the same field of endeavor as that of the invention, or (2) reasonably pertinent to the particular problem with which the inventor is involved). Although the Examiner asserts summarily that the technical ability purportedly existed to combine and substitute the elements as claimed (Ans. 5), the Examiner simply fails to squarely address Appellants' argument that the Examiner's proposed modification would render Yamada unsuitable for its intended purpose of providing more audio output channels than input channels. Accord Reply Br. 1-2 (noting that the Examiner ignored this argument). To the extent that the proposed modification would 5 Appeal2014-004893 Application 12/629,612 render Yamada suitable for that intended purpose by, for example, providing at least some ofYamada's output channels as M-S audio channels, such as those driving Yamada's speakers SPl to SP5 in Figure 2, we cannot say on this record. Nor will we speculate in that regard here in the first instance on appeal. What we can say, however, is that the Examiner's articulated position is untenable. Therefore, we are persuaded that the Examiner erred in rejecting claims 1-5, 7-22, 33-38, and 40-46 as unpatentable over Yamada and Ojanpera. Because this combinability issue is dispositive regarding our reversing the rejection of these claims, we need not address Appellants' other arguments. THE REMAINING OBVIOUSNESS REJECTION Because the Examiner has not shown that the additional cited prior art cures the foregoing deficiencies regarding the combinability of Yamada and Ojanpera in the above-noted rejection, we will not sustain the obviousness rejection of dependent claims 6 and 39 (Final Act. 38--42) for similar reasons. CONCLUSION The Examiner erred in rejecting claims 1-22 and 33--46 under§ 103. DECISION The Examiner's decision rejecting claims 1-22 and 33--46 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation