Ex Parte Hillyard et al

Patent Trial and Appeal Board

Aug 28, 2014

11215420 (P.T.A.B. Aug. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JASON HILLYARD, ROBERT HULVEY,
JOHN WALLEY, and VICTOR ZHODZISHSKY
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Appeal 2011-012706
Application 11/215,420
Technology Center 2600
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1–30. App. Br. 1; Ans. 3. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.

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PRIOR ART
The Examiner relies upon the following prior art in rejecting the
claims on appeal.
Lodenius
Lee
US 5,923,761
US 2003/0152056 A1
July 13, 1999
Aug. 14, 2003
Lapstun US 2005/0040350 A1 Feb. 24, 2005
Kikuchi
Wu
US 2005/0213544 A1
US 2006/0148405 A1
Sept. 29, 2005
July 6, 2006
Slamka US 2008/0298613 A1 Dec. 4, 2008
REJECTIONS
The Examiner rejected claims 1, 3, 12, 14, 23, and 25 under 35 U.S.C.
§ 103(a) as unpatentable over Lee, Wu, Lapstun, and Lodenius.1 Ans. 5–12.
The Examiner rejected claims 2, 13, and 24 under § 103(a) as
unpatentable over Lee, Wu, Lapstun, Lodenius, and Slamka. Id. at 12–14.
The Examiner rejected claims 4–11, 15–22, and 26–30 under § 103(a)
as unpatentable over Lee, Wu, Lapstun, Lodenius, and Kikuchi. Id. at 14–
19.

1 Appellants and the Examiner denote claims 2, 13, and 24 as rejected over
Lee, Wu, Lapstun, and Lodenius; i.e., the first rejection. App. Br. 7; Ans. 5.
However, the Answer and Final Rejection confirm that these claims are
actually rejected over Lee, Wu, Lapstun, Lodenius, and Slamka; i.e., the
second rejection. Ans. 5–15; Final Rej. 2–11.
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ILLUSTRATIVE CLAIM
Illustrative claim 1 is reproduced below.
1. A method for processing data, the method comprising:
in a Bluetooth transceiver chip comprising at least one on-chip
processor, wherein said at least one on-chip processor performs
the function of:
compressing audio information received by said
Bluetooth transceiver chip, wherein said compressing
utilizes an on-chip audio codec implemented within said
at least one on-chip processor.
OBVIOUSNESS REJECTION OF
CLAIMS 1, 3, 12, 14, 23, AND 25 OVER
LEE, WU, LAPSTUN, AND LODENIUS
Claims 1, 12, and 23
Appellants address claims 1, 12, and 23 collectively. App. Br. 19–28.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Appellants present the application’s Figure 8 as illustrative of claim 1.
App. Br. 3–5. We agree insofar that claim 1 recites an on-chip Bluetooth®
transceiver including a processor, which includes a codec (see Figure 8’s
SBC 810) for compressing audio information. The above structure –
transceiver chip including a processor that includes a codec – is the principal
focus of this appeal. See e.g., App. Br. 8 (“Summary of Appellant’s [sic,
Appellants’] Arguments”).
In the Final Rejection, the Examiner found that Lee’s Figure 3B
teaches an on-chip transceiver, processor, and codec, “but does not
specifically teach a [Bluetooth®] transceiver chip and compressing of audio
information.” Final Rej. 2–3; Ans. 5–6. To bridge this perceived
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deficiency, the Examiner also presented two respective findings as to Wu
and Lapstun. First, the Examiner found that Wu teaches a Bluetooth®
transceiver chip. Final Rej. 3 and Ans. 6 (each citing Wu abst., Fig. 1, ¶¶ 5–
6). Second, the Examiner found that Lapstun teaches a codec that
compresses audio information. Final Rej. 3–4 and Ans. 6–7 (each citing
Lapstun ¶ 86); see also Ans. 23–24. Adding that “if Applicant still think
. . . Lee and Wu do not teach ‘on-chip processor within the transceiving
integrated circuit and an on-chip audio codec implemented within said at
least one on-chip processor,’” the Examiner also found that Lodenius
teaches a transceiver including a processor that includes a codec. Final Rej.
4 and Ans. 7 (each citing col. 1, l. 66–col. 2, l. 26).
In the Answer, and more particularly in the Examiner’s response to
the Appeal Brief, the Examiner presents a newly proposed combination of
prior art teachings (herein “proposed combination”) by which the Examiner
determines that Lee teaches or suggests all of claim 1’s recited structure (i.e.,
transceiver chip including a processor that includes a codec). In doing so,
the Examiner presents three new findings as to Lee. First, the Examiner
finds that Lee’s Figure 3B teaches a Wireless Local Area Network integrated
circuit (WLAN IC) 350 that integrates, on chip, a transceiver 352, processor
351, and codec 364. Ans. 21 (citing Lee ¶ 45).2 Second, the Examiner finds
that Lee’s Figures 4A–B teach a WLAN IC 400/450 that integrates a
transceiver 402, baseband core (BBC) 404, and pulse code modulated
interface (PCM I/F) 406. Ans. 21–22 (citing Lee ¶ 49); see also Lee ¶¶ 46-

2 The Examiner mistakenly cites Lee’s paragraph 46 as directed to Figure
3B. Rather, paragraph 46 as directed to Figure 4A.
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48. And third, the Examiner finds that Lee’s Figures 5–6 teach a BBC 550
including a processor (sequencer 502) and the PCM I/F 406 as including a
codec 314. Ans. 22 (citing Lee ¶ 59); see also Lee ¶ 54. Summarizing the
new findings, the Examiner states: “Even though Final action . . . stated that
Lee does not specifically teach Bluetooth transceiver chip and compressing
audio information, . . . it does teach all the claimed limitations according to
above paragraphs.” Ans. 22.
Taking all of the above findings into account, we view the proposed
combination to be as follows. In light of Lee’s Figures 4A–B, the proposed
combination begins with a WLAN IC integrating a transceiver, BBC, and
PCM I/F. In light of Lee’s Figures 5–6, the BBC includes a processor and
the PCM I/F includes a codec. And, in light of Lee’s Figure 3B, all of the
components – transceiver, BBC having processor, and PCM I/F having
codec – are integrated on the same chip. The above combination also results
in a Bluetooth® transceiver chip by way of including the BBC.
Contrary to the Examiner’s summation of the new findings, the
proposed combination does not establish the codec as included within the
processor or as compressing audio information. However, for reasons
explained infra, claim 1’s recited inclusion of the codec within the processor
cannot be accorded patentable weight. And, the claim 1’s compressing of
audio information was found by the Examiner to be suggested by Lapstun.
See supra, Final Rejection finding (2).
Appellants present two principal arguments against the above
combination of Lee’s teachings. Each is addressed below.
First, Appellants argue that the Examiner’s new findings change the
thrust of the final rejection (Reply Br. 3–6) and, in turn, request that “the
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Examiner sends a new Non-Final Office Action with the new grounds of
rejection explained” (id. at 6). We agree that the new findings change the
thrust of the rejection. Nonetheless, the Answer is now before the Board.
We must therefore consider the new findings. To do otherwise would be
tantamount to rewriting the Answer. The Board has no such authority. The
Examiner’s conduct and, in turn, Answer’s preparation resides within the
jurisdiction of the Director; not the Board. See 37 C.F.R. § 41.64(a) (2008).
Appellants’ recourse was, accordingly, to petition the Director. No such
petition has been filed in the instant application on appeal. We must review
the record as it exists before us.
Second, Appellants argue that the proposed combination fails to
suggest a processor including a codec. For example, Appellants state:
“[T]he Examiner’s argument still does not overcome the fact that Lee’s Fig.
3B, Fig. 4B and Fig. 5 do not disclose that . . . [Lee’s] alleged ‘on-chip audio
codec’ . . . is ‘implemented within’ the alleged ‘on-chip processor[.]’”
Reply Br. 15; see also App. Br. 8 (“Summary of Appellant’s [sic,
Appellants’] Arguments”). We agree insofar that the proposed combination
establishes a BBC including a PCM I/F codec, but does not establish a
processor including a codec. For example, the proposed combination does
not establish the BBC as either: (i) being a processor in and of itself; or (ii)
including a processor that includes the PCM I/F codec. And as noted by
Appellants, the Examiner cites Lee’s sequencer 502 of BBC 550 as teaching
claim 1’s processor, but does not establish the sequencer 502 as including a
codec.
Nonetheless, there is no evidence before us that claim 1’s placement
of the codec within the processor impacts the claimed method. For example,
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there is no indication that compressing audio information via “an on-chip
audio codec implemented within [an] on-chip processor” (claim 1) alters the
claimed “processing” (preamble). And rather, the Specification evidences
that resourcing the claimed method’s compressing from “an on-chip audio
codec implemented within [an] on-chip processor” (claim 1) merely avoids
resourcing the same processing from other processors. Spec. ¶ 6. We
cannot accord patentable weight to such a limitation devoid of impact on a
claimed method. See King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616
F.3d 1267, 1279 (Fed. Cir. 2010) (no patentable weight accorded to an
“informing” step of a drug administration method because “[i]nforming a
patient about the benefits of a drug in no way transforms the process of
taking the drug”); Minton v. National Ass’n of Securities Dealers, Inc., 336
F.3d 1373, 1381 (Fed. Cir. 2003) (no patentable weight accorded to a
“traded efficiently” phrase of a method claim’s “whereby” clause because
the phrase does “not inform the mechanics of how the trade is executed, and
nothing in the specification or the prosecution history suggests otherwise”);
see also Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI 2008) (precedential)
(no patentable weight to a method claim’s recitation of data because “the
method is carried out the same way regardless of which specific sequences
are included in the database”).
Appellants’ additional arguments either: (i) concern the proposed
combination’s above-addressed lack of a processor including a codec; or (ii)
fail to address the proposed combination.
For the foregoing reasons, we sustain the rejection of claims 1, 12,
and 23.
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Claims 3, 14, and 25
Appellants present an additional argument for claims 3, 14 and 25,
collectively. App. Br.29. We select claim 3 as representative. See 37
C.F.R. § 41.37(c)(1)(vii) (2008).
Claim 3 recites: “The method according to claim 1, comprising
generating outside said Bluetooth transceiver chip an audio stream
comprising said audio information.”
Appellants argue: “[T]he Examiner has cited Wu’s abstract, Fig. 1,
and par [0005-0016] without articulating how Wu discloses ‘generating
outside said Bluetooth transceiver chip an audio stream comprising said
audio information,[.]” App. Br. 29.
The argument is not persuasive. Wu’s cited disclosure describes “[a]n
antenna coupled to the Bluetooth chip for receiving or transmitting
Bluetooth signals.” Wu ¶ 5. An antenna that is coupled to a chip self-
evidently drives a signal outside of the chip.
Accordingly, we sustain the rejection of claims 3, 14, and 25.
OBVIOUSNESS REJECTION OF
CLAIMS 2, 13, AND 24 OVER
LEE, WU, LAPSTUN, LODENIUS, AND SLAMKA
Appellants argue that claims 2, 13, and 24 are allowable in view of
their dependencies. App. Br. 30. Claims 2, 13, and 24 depend from claims
1, 12, and 23, for which we found no Examiner error.
Accordingly, we sustain the rejection of claims 2, 13, and 24.
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OBVIOUSNESS REJECTION OF
CLAIMS 4–11, 15–22, AND 26–30 OVER
LEE, WU, LAPSTUN, LODENIUS, AND KIKUCHI
Claims 4, 15, and 26
Claim 4 recites: “The method according to claim 3, wherein said
audio stream is generated via an audio/video distribution transport protocol
(AVDTP) external to said Bluetooth transceiver chip.” Claims 15 and 26
recite subject matter similar to claim 4.
Appellants argue: “Kikuchi does not even mention AVDTP, let alone
disclose that the ‘audio stream is generated via an audio/video distribution
transport protocol (AVDTP) external to said Bluetooth transceiver chip[.]’”
App. Br. 31–32.
Despite the Examiner’s response (Ans. 27–28), we cannot discern any
teaching of an AVDTP protocol within Kikuchi’s cited disclosure. We
therefore do not sustain the rejection of claims 4, 15, and 26.
Claims 6, 17, and 28
Claim 6 recites: “The method according to claim 5, comprising
establishing said data channel utilizing one or both of a logical link control
and adaptation protocol (L2CAP) and/or an advanced audio distribution
profile (A2DP).” Claims 17 and 28 recite subject matter similar to claim 6.
Appellants argue: “Kikuchi does not even mention L2CAP or A2DP
throughput [sic] the reference, let alone disclose ‘said data channel utilizing
one or both of a logical link control and adaptation protocol (L2CAP) and/or
an advanced audio distribution profile (A2DP),’ as recited[.]” App. Br. 32.
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Despite the Examiner’s response (Ans. 29–30), we cannot discern any
teaching of the L2CAP or A2DP protocol within Kikuchi’s cited disclosure.
We therefore do not sustain the rejection of claims 6, 17, and 28.
Claims 7, 18, and 29
Claim 7 recites: “The method according to claim 1, comprising
determining within said Bluetooth transceiver chip, a frame size of at least
one audio frame comprising said compressed audio information.” Claims 18
and 29 recite subject matter similar to claim 7.
Appellants argue: “[E]ven though Kikuchi discloses frame structure
in paragraph [0045-0050], Kikuchi, nevertheless, does not even mention
frame size, let alone ‘determining within said Bluetooth transceiver chip, a
frame size of at least one audio frame comprising said compressed audio
information[.]’” App. Br. 33.
Despite the Examiner’s response (Ans. 30–31), we cannot discern any
teaching of a frame size within Kikuchi’s cited disclosure. We therefore do
not sustain the rejection of claims 7, 18, and 29.
Claims 11 and 22
Claim 11 recites: “The method according to claim 1, comprising
acquiring from outside said Bluetooth transceiver chip, said audio
information via a pulse code modulation (PCM) wired connection.” Claim
22 recites subject matter similar to claim 11.
Appellants argue: “[E]ven though Kikuchi discloses coded streams in
paragraph [0062-0068], Kikuchi, nevertheless, does not even mention PCM,
let alone ‘acquiring from outside said Bluetooth transceiver chip said audio
information via a pulse code modulation (PCM) wired connection,’ as
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recited[.]” App. Br. 34. And, Appellants emphasize that “claim 11 does not
recite that the PCM is a ‘wireless connection’, but a ‘wired connection’
instead.” Reply Br. 37, emphasis omitted.
Despite the Examiner’s response (Ans. 31–32), we cannot discern any
teaching of a PCM wired connection within Kikuchi’s cited disclosure. We
therefore do not sustain the rejection of claims 11 and 22.
Claims 5, 8–10, 16, 19–21, 27, and 30
Appellants argue that claims 5, 8–10, 16, 19–21, 27, and 30 are
allowable in view of their dependencies. App. Br. 31 (claims 5, 16, and 27)
and 33 (claims 8–10, 19–21, and 30).
Claims 5, 16, and 27 respectively depend from claims 1, 12, and 23,
for which we found no Examiner error. We therefore sustain the rejection of
claims 5, 16, and 17.
Claims 8–10 depend from claim 7, for which we found Examiner
error. We therefore do not sustain the rejection of claims 8–10.
Claims 19–21 depend from claim 12, for which we found no
Examiner error. We therefore sustain the rejection of claims 19–21.
Claim 30 depends from claim 29, for which we found Examiner error.
We therefore do not sustain the rejection of claim 30.

DECISION
The Examiner’s decision rejecting claims 1–3, 5, 12–14, 16, 19–21,
23–25, and 27 is affirmed.
The Examiner’s decision rejecting claims 4, 6–11, 15, 17, 18, 22, 26,
and 28–30 is reversed.
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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-IN-PART

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