Sound United, LLC

Patent Trials and Appeals Board

Oct 13, 2021

2020004671 (P.T.A.B. Oct. 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.
16/259,700 01/28/2019 Bradley M. Starobin 28852US03 8973
23446 7590 10/13/2021
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
EXAMINER
HUBER, PAUL W
ART UNIT PAPER NUMBER
2687
NOTIFICATION DATE DELIVERY MODE
10/13/2021 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRADLEY M. STAROBIN, MATTHEW LYONS,
STUART W. LUMSDEN and MICHAEL DITULLO
____________

Appeal 2020-004671
Application 16/259,700
Technology Center 2600
____________

Before CAROLYN D. THOMAS, ADAM J. PYONIN, and
AMBER L. HAGY, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 23–25, 27–33, 35–38, 40–42.2 See
Claims App. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Sound
United, LLC. Appeal Br. 1.
2 The Examiner withdraws the rejection of claims 26, 34, 39 under 35 U.S.C.
§ 103 as being unpatentable over Shridhar, Di Censo, and Ono (US
2012/0039495 A1, Feb. 16, 2012). Ans. 3; see also Final Act. 6–8.
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The present invention relates generally to quieting unwanted sound.
See Spec. Abstr.
Claim 23, reproduced below with disputed limitations emphasized, is
representative:
23. An audio system comprising:
at least one module operable to, at least:
characterize a relationship between a sound signal and a
received sound utilizing a microphone that is positioned outside a
target zone of sound cancellation, where the sound signal is used to
cause a loudspeaker to output an output sound and the received sound
is the output sound as received at a location;
identify a sound at the location;
determine, based at least in part on the characterized
relationship, a cancellation signal that, when used to cause the
loudspeaker to output a counteracting sound, will quiet the identified
sound at the location; and
generate the cancellation signal to cause the loudspeaker
to output the counteracting sound,
wherein the at least one module is operable to determine
the cancellation signal by, at least in part, operating to, independent of
user input, set a magnitude of the cancellation signal to a level below
that determined for ideal cancellation.

Appellant appeals the following rejections:
R1. Claims 23, 24, 27–32, 35–37, and 40–42 are rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Shridhar
(US 8,270,626 B2, Sept. 18, 2012) and Di Censo (US 2015/0195641 A1,
July 9, 2015). Final Act. 2–5.
R2. Claims 25, 33, and 38 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Shridhar, Di Censo, Magrath
(US 2010/0310086 A1, Dec. 9, 2010), and DeFranks (US 2017/0053637 A1,
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Feb. 23, 2017). Final Act. 5–6.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Claims 23–25, 28–33, 36–38, 41, and 42
First, Appellant contends that in Di Censo “[t]he alleged ‘set[ting] a
magnitude of the cancellation signal’ is NOT ‘independent of user input’ as
claimed . . . [because] ¶ [0062] of Di Censo discusses a [] case in which the
user ‘decides to keep hearing the traffic noise to avoid being hit by a vehicle,
however, she chooses to dim it down.’” Appeal Br. 5. In other words,
Appellant appears to concede that although Di Censo teaches setting a
magnitude of the cancellation signal level below ideal cancellation (i.e.,
merely dim down the level), in Di Censo the user chooses this level, instead
of this level being independent of user input.
However, we point out that the Examiner relies upon Shridhar, not Di
Censo, to teach determining a cancellation signal, independent of user input
(see Final Act. 3, citing Shridhar 3:14–22), and merely imports Di Censo to
teach setting a magnitude below that determined for ideal cancellation.
See Final Act. 3. Specifically, Shridhar discloses “[t]he ANC system 100
may generate an anti-noise signal 110, . . . approximately 180 degrees out of
phase with the undesired sound 104 present in the target space 102.”
Shridhar 3:14–19; see also 6:25–27. Therefore, Appellant’s aforementioned
argument against Di Censo not allegedly showing being independent of user
input, is off the mark because Appellant fails to rebut Shridhar’s teaching,
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which we find sufficiently teaches determining a cancellation signal, to
eliminate or reduce unwanted noise, independent of user input. In fact,
Appellant seemingly admits that Shridhar teaches generating a cancellation
signal which does not provide for user control/input. See Appeal Br. 5,
citing Di Censo ¶ 3. (“Di Censo criticizes the systems like the Shridhar
system, which do not provide for user control.”).
In any case, Appellant’s argument against Di Censo separately from
Shridhar does not persuasively rebut the combination made by the Examiner.
One cannot show non-obviousness by attacking references individually,
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d
413, 425–26 (CCPA 1981).
Secondly, Appellant contends that Di Censo fails to overcome the
deficiencies of Shridhar because “Di Censo requires an inverted sound
signal (alleged cancellation signal) at the level for ideal cancellation”
(Appeal Br. 6), whereas claim 23 requires “a level below that determined for
ideal cancellation.” Id. As noted above, Appellant concedes (when making
a different argument) that Di Censo teaches a magnitude . . . a level below
(see Appeal Br. 5), but is now attempting to argue the reverse. However, we
agree with Appellant’s aforementioned admission that Di Censo teaches a
magnitude . . . a level below that determined for ideal cancellation when Di
Censo discloses dimming down traffic noise. See Di Censo ¶ 62; see also ¶
37 (“to lower or cancel a specific external sound event”). As such, we find
unavailing Appellant’s aforementioned argument given Appellant’s prior
admission and Di Censo’s specific teachings.
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Thirdly, Appellant contends that “Di Censo criticizes the systems like
the Shridhar system, which do not provide for user control” (Appeal Br. 5,
citing Di Censo ¶ 3), specifically because “Di Censo touts [the] user-control
based system” (id.), “[t]hus Di Censo clearly and indisputably teaches that
his system . . . is superior to the Shridhar-type systems.” Id. We disagree
with Appellant.
Although Di Censo discloses in the Background section that “[n]oise
cancelling systems usually cancel or enhance the overall sound field . . .
[but] the cancellation or enhancement is not selective and cannot be finely
tuned by the user” (see Di Censo ¶ 3), Appellant fails to show that Di Censo
“teaches away” from automated systems determining the magnitude of a
cancellation signal. Here, Di Censo is merely being relied upon to teach that
it is known to set a magnitude of the cancellation signal to a level below that
determined for ideal cancellation. See In re Keller, 642 F.2d 413, 425
(CCPA 1981)(“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”) (citations omitted). This reasoning is applicable
here.
However, we highlight that both Shridhar and Di Censo teach
generating a cancellation signal to reduce or dim down an undesired noise,
which reads on the claimed set a magnitude . . . to a level below that
determined for ideal cancellation. See Shridhar 6:25–27 (“the ANC system
400 may be configured to generate anti-noise to eliminate or reduce an
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undesired noise in a target space 402”); Di Censo ¶ 37 (“to lower or cancel a
specific external sound event, the system has to create an active inverted
sound signal to counteract the actual ambient sound signal”). Further, as
noted above, Shridhar is being relied upon to teach generating the
cancellation signal, independent of user input. Thus, it is not necessary that
Di Censo also disclose this feature.
In any case, we do not find, and Appellant does not sufficiently
establish, that Di Censo criticizes, discredits, or otherwise discourages
determining magnitude of cancellation signals independent of user input.
“[T]he prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternative because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed . . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). At most
it can be argued that Di Censo’s system merely provides more “flexibility
and fine grained dynamic control” for cancellation levels. See Di Censo ¶ 3.
However, we find that being more flexible is not a teaching away.
Accordingly, we sustain the Examiner’s rejection of independent
claims 23, 30, and 36 under 35 U.S.C. § 103 as being unpatentable over
Shridhar in view of Di Censo, likewise with the rejection of the dependent
claims, which are not argued separately with particularity.

Claims 27, 35, and 40
Regarding the claimed magnitude of the cancellation signal is
6–10 dB lower than the level determined for ideal cancellation (see claim
27), Appellant contends that the Examiner “uses hindsight rather than any
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prior art to show these claim elements, by [merely] stating . . . for design
purposes.” Appeal Br. 9. We disagree with Appellant.
Here, the Examiner finds that Di Censo teaches “that the magnitude of
the cancellation signal can be set to various levels below that determined for
ideal cancellation.” Ans. 5. For example, Di Censo discloses various sound
level values, i.e., various attenuation/gain values including “to an attenuation
value of -20 decibels (dB).” See Di Censo ¶¶ 51–52. Appellant fails to
rebut these findings in the Reply Brief.
Furthermore, we note “[t]he law is replete with cases in which the
difference between the claimed invention and the prior art is some range or
other variable within the claims.” In re Woodruff, 919 F.2d 1575, 1578
(Fed. Cir. 1990) (citations omitted). “In cases involving overlapping ranges
. . . even a slight overlap in range establishes a prima facie case of
obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Here,
Di Censo teaches various ranges, including an attenuation range of 0–20 dB,
which encompasses the claimed 6–10 dB attenuation range. See claim 27.
Accordingly, we affirm the Examiner’s rejection of claims 27, 35, and
40.

CONCLUSION
The Examiner’s rejections are affirmed.

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In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
23, 24, 27–
32, 35–37,
40–42
103 Shridhar, Di Censo 23, 24, 27–32,
35–37, 40–42

25, 33, 38 103 Shridhar, Di
Censo, Magrath,
DeFranks
25, 33, 38
Overall
Outcome
23–25, 27–33,
35–38, 40–42

No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED