Ex Parte Boor

Patent Trial and Appeal Board

Apr 16, 2013

10797507 (P.T.A.B. Apr. 16, 2013)

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.
10/797,507 03/10/2004 Steven E. Boor 8354/96255 3966
22242 7590 04/16/2013
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
OLANIRAN, FATIMAT O
ART UNIT PAPER NUMBER
2654
MAIL DATE DELIVERY MODE
04/16/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEVEN E. BOOR
____________________

Appeal 2010-011371
Application 10/797,507
Technology Center 2600
____________________

Before THU A. DANG, JAMES R. HUGHES,
and GREGORY J. GONSALVES, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/797,507

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellant’s invention is directed to a system and method for
modifying the operational characteristics of a hearing aid microphone
subsequent to its placement within a sealed housing; wherein, a modifiable
buffer circuit within the hearing aid for receiving input from the microphone
allows small adjustments in the gain and/or phase of the input to output
transfer function of the circuit (Abstract; Spec.¶¶ [0001] and [0013]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A buffer circuit for use in a microphone assembly
comprising:
a microphone housing;
an input for receiving a signal;
an input buffer coupled to the input;
an output;
a filter network coupled between the input buffer and the output; and
a selector comprising:
a first inputs;
a first output responsive to the first input; and
a tuning circuit coupled to the filter network for adjusting a characteristic of
the filter network, the tuning circuit responsive to the selector and the
characteristic of the filter network is adjusted using the first input;

wherein the buffer circuit is contained in the microphone housing.

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C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Levitt US 4,879,749 Nov. 7, 1989
Advani US 4,926,459 May 15, 1990
Killion US 5,602,925 Feb. 11, 1997
Madaffari US Pat. Pub. 2002/0090102 A1 July 11, 2002

Claims 1-3, 9, 10, 12-17, 19, 20, and 22 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Levitt.
Claims 4-8, 18, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Levitt in view of Killion.
Claims 11 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Levitt in view of Advani.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Levitt in view of Madaffari.

II. ISSUES
The dispositive issues before us are whether the Examiner has erred in
determining that:
1. Levitt at least suggests “a buffer circuit for use in a microphone
assembly, comprising: a microphone housing” “a tuning circuit coupled to
the filter network for adjusting a characteristic of the filter network” (claim
1, emphasis added); and
2. Levitt at least suggests “A hybrid circuit for buffering an audio
signal comprising: a substrate having a first and second portion” (claim 15,
emphasis added).

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Levitt
1. Levitt discloses a host controller for producing phase shift and
gain control data from a computer for a programmable filter of a hearing aid
to cancel feedback; wherein, the hearing aid includes a microphone 57
coupled to a programmable automatic gain control (AGC) circuit 58 that
couples to a programmable filter 64 (Abstract; Fig. 2; col. 4, ll. 65-68).
2. The host controller couples to an EEPROM 84 to supply the
filter coefficients and limit parameters to the programmable filter 64 and an
amplitude limiting means in the hearing aid to cause the hearing aid to adjust
automatically to the optimum set of parameter values for the speech level,
room reverberation, and type of background noise then obtaining (Figs. 1
and 2; col. 2, ll. 49-54, col. 5, ll. 34-40, and col. 8, ll. 25-29).
Advani
3. Advani discloses a Zener diode 106 which limits the voltage on
line 55 to less than 110-volts (col. 7, ll. 46-47).
Madaffari
4. Madaffari discloses a hearing aid enclosure having a backplate
12 that is acoustically and electrically sealed to the cover 40 of hearing aid
enclosure (having a large diameter opening 52 for passage of sound) by a
conductive cement, such as, epoxy (Fig. 2; ¶ [0015]).
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IV. ANALYSIS
Claims 1-3, 9, 10, 12-14, and 22
Appellant contends that Levitt’s disclosure of “the host controller 20,
the EEPROM 74, the filter 64, and the amplifier of Levitt cannot be said to
be the microphone buffer circuit” (App. Br. 12). Appellant argues that
“[t]here is nothing in Levitt, in its entirety … that mentions or suggests a
microphone housing, of any kind” (App. Br. 13). Appellant contends further
that “the Levitt components have nothing to do with adjusting the gain
and/or phase of the frequency response of a microphone assembly” and “the
Levitt components are not designed for use in the microphone” (id.).
However, the Examiner finds that although “not all the elements of
the Levitt buffer circuit are in a microphone housing”, “some of the
elements of the Levitt buffer circuit are in a microphone housing” (Ans. 12).
The Examiner also finds that “Levitt buffer circuit clearly provides gain and
frequency adjustments” (Ans. 13).
Appellant’s argument that “the Levitt components have nothing to do
with adjusting the gain and/or phase of the frequency response of a
microphone assembly” and “the Levitt components are not designed for use
in the microphone” is not commensurate in scope with the specific language
of claim 1 (App. Br. 13). In particular, claim 1 does not recite such
“adjusting the gain and/or phase of the frequency response of a microphone
assembly” or “designed for use in the microphone” as Appellant argues.
We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
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With reference to the effect of the preamble on the broadest
reasonable interpretation, our reviewing Court has held that
“[i]f … the body of the claim fully and intrinsically sets forth the
complete invention, including all of its limitations, and the preamble
offers no distinct definition of any of the claimed invention's
limitations, but rather merely states, for example, the purpose or
intended use of the invention, then the preamble is of no significance
to claim construction because it cannot be said to constitute or explain
a claim limitation.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
F.3d 1298, 1305 (Fed. Cir. 1999).
“Whether to treat a preamble term as a claim limitation is ‘determined on the
facts of each case in light of the claim as a whole and the invention
described in the patent.’” Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d
823, 831 (Fed. Cir. 2003). The Court of Appeals for the Federal Circuit has
held generally that “the preamble does not limit the claims.” Allen Eng’g
Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002).
Particularly, the Court has held that the preamble has no separate limiting
effect if, for example, “the preamble merely gives a descriptive name to the
set of limitations in the body of the claim that completely set forth the
invention.” IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434-
35 (Fed. Cir. 2000).
Contrary to Appellant’s contention, we find the preamble phrase, “for
use in a microphone assembly”, does not modify the circuit, but rather it
represents an intended use of the circuit. An intended use will not limit the
scope of the claim because it merely defines a context in which the invention
operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp.,
320 F.3d 1339, 1345 (Fed. Cir. 2003). Since the body of claim 1 fully and
intrinsically sets forth all of the limitations of the claimed invention, the
intended use in the preamble is not considered a limitation and is of no
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significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999); see also Rowe v. Dror,
112 F.3d 473, 478 (Fed. Cir. 1997).
Claim 1 does not place any limitation on what “microphone housing”
means, includes, or represents other than the buffer circuit is contained
within the microphone housing. We also note that the claim does not
include a microphone. The Specification discloses a microphone assembly
housing and a housing that houses the modifiable buffer circuit (Fig. 1 and
5; Spec. ¶¶ [0003] and [0021]). We note that the term “microphone” does
not change the functionality of or provide an additional function to the
housing. Rather, this term merely describes the housing. When descriptive
material is not functionally related to the claimed medium, the descriptive
material will not distinguish the invention from the prior art in terms of
patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) and In re
Gulack, 703 F.2d 1381, 1385 (Fed. Circ. 1983). We therefore interpret “a
microphone housing” its broadest reasonable interpretation as any housing,
as consistent with the Specification and claim 1.
Levitt discloses a host controller for producing phase shift and gain
control data for a programmable filter of a hearing aid to cancel feedback and
to cause the hearing aid to adjust automatically to the optimum set of
parameter values for the speech level, room reverberation, and type of
background noise then obtaining (FF 1 and 2). In particular, the host
controller couples to an EEPROM connected to a programmable filter that
receives an input from a microphone (through a programmable AGC circuit)
to supply the filter coefficients and limit parameters to the programmable
filter (id.). We find that the host controller, EEPROM, programmable filter,
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AGC circuit and microphone comprise the microphone assembly having an
housing; wherein, the host controller, EEPROM, programmable filter, AGC
circuit comprise the buffer circuit. We find further that the programmable
filter comprises a turning circuit that couples to the AGC for the purpose of
adjusting the phase shift and gain. We also adopt the Examiner’s finding that
the hearing aid of Levitt inherently has a housing to encapsulate the hearing
aid/microphone assembly shown in Figure 2 (Ans. 12-13).
Accordingly, we find no error in the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a) over Levitt. Further, independent claim 20 having
similar claim language and claims 2, 3, 9, 10, 12-14, and 22 (depending
from claims 1 and 20) which have not been argued separately, fall with
claim 1.
Claims 15-17 and 19
Appellant contends that “[t]here is nothing in Levitt, in its entirety,
that mentions or suggests a hearing aid circuit and a host controller circuit
built on a same circuit (substrate)” (App. Br. 15).
However, the Examiner finds that “Levitt discloses two circuits [:] the
hearing aid circuit … and the host controller circuitry [which are]
connectable by a programming slot” (Ans. 13-14). The Examiner notes that
“a hybrid circuit is a circuit comprising of different types of circuitry” (Ans.
13).
As noted supra, Levitt discloses a host controller that couples to an
EEPROM to supply the filter coefficients and limit parameters to the
programmable filter and an amplitude limiting means to cause the hearing
aid to adjust automatically to the optimum set of parameter values (FF 2).
We find that when the host controller couples to the EEPROM, the
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combined circuits represent a circuit substrate having a first portion and a
second portion. That is, we find that Levitt’s hearing aid comprises “a
substrate having a first and second portion” (claim 15).
Accordingly, we find no error in the Examiner’s rejection of claim 15
under 35 U.S.C. § 103(a) over Levitt. Further, claims 16, 17, and 19
(depending from claims 15) which have not been argued separately, fall with
claim 15.
Claims 11 and 24
Appellant contends that “it would not make any sense to include the
zener-diode 106 of the A[d]vani circuit 24 in the Levitt device” (App. Br.
19) and “[t]here is no motivation to combine the references as presented in
the action because the resulting combination would render the modified
device unsatisfactory for its intended purpose” (App. Br. 20).
However, the Examiner finds that “[a] zener-diode is a well[-]known
biasing element in electronic circuits” and “it would make sense to use a
zener-diode in a hearing aid circuit” (Ans. 13-14).
As noted supra, Levitt discloses a buffer circuit for a microphone
assembly (FF 1 and 2). In addition, Advani discloses a Zener diode that is
used to bias the voltage (FF 3). We find that the Zener diode comprises a
biasing element that is a Zener-zap diode.
We also agree with the Examiner’s explicit motivation that combining
the references would be obvious since “one ordinarily skilled in the art at the
time the invention was made to modify the circuit of Levitt with a zener-zap
diode in order to utilize the breakdown characteristic of diodes” (Ans. 11).
The Supreme Court has stated that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
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than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007).
Thus, we find no error in the Examiner’s finding that the combination
of Levitt’s circuit with the Zener diode that biases the voltage, as disclosed
in Advani, produces a buffer circuit coupled to a Zener diode as a biasing
element which would be obvious (Ans. 11; FF1-3).
Accordingly, we find no error in the Examiner’s rejection of claim 11
under 35 U.S.C. § 103(a) over Levitt in view of Advani. Further, claims 24
(depending from claim 20) which have not been argued separately, fall with
claim 1.
Claim 21
Appellant contends that “[t]he concept of assembling the buffer circuit
in an acoustically sealed housing and yet allowing accessibility from outside
the microphone housing is completely missing from Madaffari” and “[t]here
is no motivation to combine the references as presented in the action at least
because the resulting combination would render the modified device
unsatisfactory for its intended purpose” (App. Br. 21).
However, the Examiner finds that
[s]ealed housing for assembling electronics are well known in
the art at the time of the invention it would have been obvious
to one of ordinary skill in the art at the time of the invention to
assemble a buffer circuit in a specially sealed housing in order
to protect delicate circuitry from various external harmful
effects
(Ans. 14-15).
As noted supra, Levitt discloses a modifiable buffer circuit for a
microphone assembly (FF 1 and 2). In addition, Madaffari discloses a
hearing aid enclosure having a backplate that is acoustically and electrically
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sealed to the cover of the hearing aid enclosure having a large diameter
opening for the passage of sound (FF 3). We find that the acoustically
sealed hearing aid enclosure comprise an acoustically sealed housing having
a portion of hearing aid that is accessible from outside the housing.
We also agree with the Examiner’s explicit motivation that combining
the references would be obvious since “one ordinarily skilled in the art at the
time the invention was made to modify the circuit of Levitt with the housing
of Madaffari in order to protect the circuit from EMI and other
interferences” (Ans. 12).
Accordingly, we find that the combined teachings of Levitt and
Madaffari at least suggest “assembling the buffer circuit in an acoustically
sealed housing, a portion of the buffer circuit accessible from outside the
housing” (claim 21).
Accordingly, we find no error in the Examiner’s rejection of claim 21
under 35 U.S.C. § 103(a) over Levitt in view of Madaffari.
Claims 4-8, 18, and 23
Appellant argues that claim 4-8, 18, and 23 are patentable over the
cited prior art for the same reasons asserted with respect to claim 1, 15, and
20 (App. Br. 17-18).
As noted supra, however, we find that Levitt at least suggests all the
features of claims 1, 15, and 20. We therefore affirm the Examiner’s
rejection of claims 4-8, 18, and 23 under 35 U.S.C. § 103 over Levitt in view
of Killion for the same reasons expressed with respect to parent claims 1, 15,
and 20, supra.

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V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-24 under 35 U.S.C. § 103(a) is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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