LISNR, Inc.

Patent Trials and Appeals Board

Sep 13, 2021

2021002988 (P.T.A.B. Sep. 13, 2021)

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.
15/519,990 04/18/2017 William Knauer LISNR 04US 4502
26875 7590 09/13/2021
WOOD, HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
EXAMINER
ARMSTRONG, JONATHAN D
ART UNIT PAPER NUMBER
3645
NOTIFICATION DATE DELIVERY MODE
09/13/2021 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):
usptodock@whe-law.com
wjacobs@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM KNAUER
Appeal 2021-002988
Application 15/519,990
Technology Center 3600
Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and
JEREMY M. PLENZLER, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–37. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing was conducted August
23, 2021.
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as LISNR, Inc. Appeal
Br. 2.
Appeal 2021-002988
Application 15/519,990
2
CLAIMED SUBJECT MATTER
The claims are directed to an inaudible signaling tone. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of decoding a human-inaudible acoustic signal
embedded within audio content in the processor of a decoding
device, comprising:
a. receiving samples of a digitized version of the audio
content including the human-inaudible acoustic signal into the
processor of a decoding device;
b. correlating the audio content within said samples with a
prefix template for a prefix of the human-inaudible acoustic
signal to identify candidate samples potentially associated with
the start of said human-inaudible acoustic signal;
c. repeatedly performing a frequency domain
transformation of samples of the candidate samples and
comparing frequency domain transformations thereof to
frequency characteristics associated with four or more candidate
symbols, each symbol encoding two or more logical bits and
associated with frequency characteristics
d. based upon the comparing, identifying a symbol
sequence in which each candidate symbol is represented by two
or more logical bits encoded thereby;
e. performing an error correction decoding upon the
symbol sequence to determine the validity of the symbol
sequence; and
f. upon identifying a valid symbol sequence, transmitting
the symbol sequence as the decoded equivalent of the human-
inaudible acoustic signal.
Appeal 2021-002988
Application 15/519,990
3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Atsmon US 7,383,297 B1 June 3, 2008
Chitode, “Communication Theory” Technical Publication, Prune 5−28,
section 5−6 (2002)
Kuhn, “Digital Signal Processing” University of Cambridge Computer
Laboratory (2011), http://www.cl.cam.ac.uk/teaching/1011/DSP/ (last
visited Sept. 1, 2021)
REJECTION
Claims 1–37 are rejected under 35 U.S.C. § 103 as being unpatentable
over Atsmon, Kuhn and Chitode. Final Act. 2.
OPINION
“[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall be
entitled to a patent unless,’ concerning novelty and unobviousness, clearly
places a burden of proof on the Patent Office which requires it to produce
the factual basis for its rejection of an application under sections 102 and
103.” In re Warner 379 F.2d 1011, 1016 (CCPA 1967). The key to
supporting any prima facie conclusion of obviousness under 35 U.S.C. § 103
is the clear articulation of the reason(s) why the claimed invention would
have been obvious. The Court in KSR Int’l. v. Teleflex, 550 U.S. 398, 418
(2007) noted that the analysis supporting a rejection under 35 U.S.C.§ 103
should be made explicit. The Federal Circuit has stated that “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l. v.
Teleflex, 550 U.S. 398, 418 (2007). The Patent Trial and Appeal Board is
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Application 15/519,990
4
primarily a tribunal of review. See Ex Parte Frye, 94 USPQ2d 1072, 1075-
1077 (PTAB 2010) (precedential). For that review to be meaningful it must
be based on some concrete evidence in the record to support the Examiner’s
factual findings and legal conclusions. See, e.g., In re Zurko, 258 F.3d 1379,
1386 (Fed. Cir. 2001). A rejection must be set forth in sufficiently articulate
and informative manner as to meet the notice requirement of § 132, such as
by identifying where or how each limitation of the rejected claims is met by
the prior art references. In re Jung, 637 F. 3d 1356, 1363 (Fed. Cir. 2011);
see also 37 C.F.R. § 1.104(c)(2) (“When a reference is complex or shows or
describes inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable. The pertinence of
each reference, if not apparent, must be clearly explained and each rejected
claim specified.”); Gechter v. Davidson 116 F.3d 1454, 1460 (Fed. Cir.
1997) (PTO must create a record that includes “specific fact findings for
each contested limitation and satisfactory explanations for such findings.”).
Neither the Board nor Appellants should be required to speculate as to the
basis for rejecting claims. In re Stepan, 660 F. 3d 1341, 1345 (Fed. Cir.
2011) (It is the PTO’s obligation to provide timely notice to the applicant of
all matters of fact and law asserted.)
In the Final Action the Examiner began by relying on Atsmon as
disclosing the basic method of claims 1, 20, and 29. The Examiner seemed
to indicate that Kuhn and not Atsmon was relied on regarding the “encoding
the binary message into a sequence of symbols selected from a group of two
or more symbols, each symbol associated with frequency characteristics.”
Final Act. 4. The Examiner appeared to rely on page 132 of Kuhn in this
regard. Id. The Examiner did not provide any further clarification on this
Appeal 2021-002988
Application 15/519,990
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subject when explaining why the proposed combination would have been
obvious (Final Act. 5) or elsewhere in the Final Action.
Appellant challenged the Examiner’s determination that the cited prior
art discloses or renders obvious the claimed subject matter including “each
symbol encoding two or more logical bits and associated with frequency
characteristics” App. Br. 6–7.
In response, the Examiner appears to now rely on a portion of Atsmon
purportedly providing a more general description of the recited relationship
between frequency and bits, citing portions of Atsmon mentioning (without
detailed discussion) Frequency-shift keying (FSK) or other modulation
techniques. Ans. 3–4 (citing Atsmon col. 13, ll. 35–40, col. 25, ll. 35–40).
The Examiner then states “it is not necessary for Chitode to also teach
frequency encoding because this has already been done by Atsmon” Ans. 4.
Thus, the Examiner and Appellant appear to at least agree that Chitode
generally discloses a relationship between a number of bits and number of
symbols but does not associate either of those “with frequency
characteristics.” App. Br. 6.
The Examiner then cites an additional reference for the first time that
appears related to the Examiner’s position regarding FSK. Ans. 5 (citing
Laurent EP 0273815 A1) The Examiner also appears to rely on aspects of
Kuhn different from those that appear to be relied upon in the Final Action
and mentioned above. Ans. 8 (citing Kuhn slide 61).
Based on the variation in the Examiner’s position and the introduction
of new evidence without complete explanations, it is ultimately not exactly
clear on the record presently before us precisely what the Examiner’s
position is regarding the subject matter in question. Although the limitation
in question is broadly worded, particularly in comparison to the associated
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disclosure in the Specification (Spec. paras. 47–49), it is not clear precisely
what subject matter the Examiner relies upon regarding how the symbols
encoding two or more logical bits are “associated with frequency
characteristics.” It is critical for us to be advised of that in order to conduct
any meaningful appellate review. Because the Examiner has failed to clearly
articulate the facts and reasoning relied upon in reaching the conclusion that
the claimed subject matter would have been obvious, we do not sustain the
Examiner’s rejection on the record presently before us for review.
CONCLUSION
The Examiner’s rejection is REVERSED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–37 103 Atsmon, Kuhn,
Chitode
1–37

REVERSED