Apple Inc.

Patent Trials and Appeals Board

Feb 23, 2021

2021000872 (P.T.A.B. Feb. 23, 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.
16/167,394 10/22/2018 Ashley N. Saulsbury P28286USC1 6794
65015 7590 02/23/2021
Treyz Law Group
6501 E. Greenway Pkwy
#103-621
Scottsdale, AZ 85254
EXAMINER
NI, SUHAN
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
02/23/2021 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):
patents@treyzlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASHLEY N. SAULSBURY and TRAVIS J. MCQUEEN

Appeal 2021-000872
Application 16/167,394
Technology Center 2600

Before JAMES R. HUGHES, BARBARA A. PARVIS, and
SCOTT E. BAIN, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1–22 are pending, stand rejected, are appealed by Appellant,
and are the subject of our decision under 35 U.S.C. § 134(a).1 See Final Act.
1; Appeal Br. 2.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 Apple Inc. See
Appeal Br. 2.
2 We refer to Appellant’s Specification (“Spec.”), filed Oct. 22, 2018
(claiming benefit of US 62/233,848, filed Sept. 28, 2015); Appeal Brief
(“Appeal Br.”), filed June 5, 2020; and Reply Brief (“Reply Br.”), filed Nov.
17, 2020. We also refer to the Examiner’s Final Office Action (“Final
Act.”), mailed Jan. 10, 2020; and Answer (“Ans.”) mailed Sept. 18, 2020.
Appeal 2021-000872
Application 16/167,394

2
CLAIMED SUBJECT MATTER
The claimed subject matter, according to Appellant, “relates generally
. . . to wearable electronic devices such as ear buds.” Spec. ¶ 1. More
specifically, Appellant’s claims describe a wireless ear bud, including a
main body and a stem extending from the main body, a (first) sensor in the
main body that produces an output (a first sensor output), a second sensor in
the stem that produces an output (a second sensor output), and control
circuitry that determines: (1) if the ear bud has been placed in a user’s ear,
using the first and second sensor outputs; and (2) if the ear bud has been
removed from the user’s ear using only first sensor output. See Abstract;
Spec. ¶¶ 5–8 20, 24, 26, 46. Claims 1, 11, and 16, each directed to an ear
bud, are independent. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A wireless ear bud, comprising:
a housing having a main body portion and a stem portion
extending from the main body portion;
a speaker in the main body portion;
a first sensor in the main body portion that produces a first
sensor output;
a second sensor in the stem portion that produces a second
sensor output; and
control circuitry that:
determines whether the ear bud has been placed in
a user's ear using the first and second sensor outputs; and
determines whether the ear bud has been removed
from the user's ear using the first sensor output without using
the second sensor output.
Appeal Br. 19 (Claims App.) (emphasis added).

Appeal 2021-000872
Application 16/167,394

3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Prest et al. (“Prest”) US 2009/0097689 A1 Apr. 16, 2009
McCreery US 2010/0087896 A1 Apr. 8, 2010
van der Bilt US 8,259,984 B2 Sept. 4, 2012
Akaike et al.
(“Akaike”)
US 8,842,850 B2 Sept. 23, 2014
REJECTIONS3
1. The Examiner rejects claims 1–3 and 11 under 35 U.S.C.
§ 102(a)(1) as being anticipated by van der Bilt. See Final Act. 2–3.
2. The Examiner rejects claims 1–7, 11, and 15 under 35 U.S.C.
§ 103 as being unpatentable over van der Bilt and Official Notice. See Final
Act. 3–6.
3. The Examiner rejects claims 7–9, 12–14, and 16–20 under 35
U.S.C. § 103 as being unpatentable over van der Bilt and McCreery. See
Final Act. 6–9.
4. The Examiner rejects claim 10 under 35 U.S.C. § 103 as being
unpatentable over van der Bilt and Prest. See Final Act. 9.
5. The Examiner rejects claim 21 under 35 U.S.C. § 103 as being
unpatentable over van der Bilt, McCreery, and Akaike. See Final Act. 9–10.
6. The Examiner rejects claim 22 under 35 U.S.C. § 103 as being
unpatentable over van der Bilt and Akaike. See Final Act. 10.

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. §§ 102 and 103. Because the present
application has an effective filing date after the AIA’s effective date (March
16, 2013), this decision refers to 35 U.S.C. §§ 102(a)(1) and 103.
Appeal 2021-000872
Application 16/167,394

4
ANALYSIS
Anticipation Rejection of Claims 1–3 and 11
The Examiner rejects independent claim 1 (as well as independent
claim 11, and dependent claims 2 and 3) as being anticipated by van der Bilt.
See Final Act. 2–3; Ans. 11–12. Appellant contends that van der Bilt does
not disclose the disputed limitations of claim 1. See Appeal Br. 6–8; Reply
Br. 2–4. Specifically, Appellant contends, inter alia, that “van der Bilt fails
to show . . . determining that an ear bud has been placed in a user’s ear using
both a first and second sensor, and determining that the ear bud has been
removed from the user’s ear using the first sensor without using the second
sensor.” Reply Br. 2. Appellant also contends that, although van der Bilt
describes using different sets of sensors for different users “(i.e., van der
Bilt’s ‘rules’), van der Bilt discloses that for any single user (e.g., ‘the user’
in claim 1), the same sensors are used for detecting that the ear bud has been
inserted into the ear,” which is not equivalent to the recited determinations.
Reply Br. 2–3; see Appeal Br. 6–8.
We agree with Appellant that the Examiner-cited portions of van der
Bilt do not disclose the disputed limitations of claim 1—control circuitry
determining “whether the ear bud has been placed in a user’s ear using the
first and second sensor outputs” and also determining “whether the ear bud
has been removed from the user’s ear using the first sensor output without
using the second sensor output” (Appeal Br. 19 (Claim App.)). See Appeal
Br. 6–8; Reply Br. 2–4. As pointed out by Appellant, “van der Bilt fails to
show . . . that different sets of sensors may be used for on-ear detection and
off-ear detection.” Appeal Br. 7; see Reply Br. 2–3 (citing van der Bilt, col.
7, ll. 30–44). The Examiner-cited portions of van der Bilt (see Final Act. 2–
Appeal 2021-000872
Application 16/167,394

5
3; Ans. 11–12 (citing van der Bilt, col. 5, l. 17–col. 7, l. 44; col. 8, ll. 15–22;
Figs. 4–6)), on the other hand, only describe determining that van der Bilt’s
headset is affixed to a user’s ear based on the output of one or more sensors
(or multiple sensors in groups of sensors). See, e.g., van der Bilt, col. 5, ll.
39–45; col. 6, ll. 14–17; col. 6, ll. 53–58; col. 7, ll. 11–25. van der Bilt,
however, does not disclose determining that the headset is removed (i.e., un-
affixed). Further, even if we interpreted van der Bilt to disclose removal—
in that van der Bilt describes an on-ear/off-ear control signal (see van der
Bilt, col. 6, ll. 56–62)—there is no disclosure of using different sensors or
groups of sensors to make such a determination.
With respect to independent claim 11, the Examiner uses the same
rationale and analysis to reject claim 11 as was used for claim 1 (supra).
The Examiner finds van der Bilt discloses that “the control circuitry
determines that the ear bud has been placed in a user’s ear when the first
proximity sensor is covered and when the second proximity sensor is
uncovered.” Final Act. 3. Claim 11 differs in scope from claim 1 (supra),
reciting: “the control circuitry determines that the ear bud has been placed
in a user’s ear when the first proximity sensor is covered and when the
second proximity sensor is uncovered.” Appeal Br. 21 (Claim App.). The
Examiner-cited portions of van der Bilt (see Final Act. 3 (citing van der Bilt,
col. 5, l. 17–col. 7, l. 44)), however, only describe determining that van der
Bilt’s headset is affixed to a user’s ear based on the output of proximity
sensors, specifically “capacitive sensor[s] designed to detect when the
sensor[s] ha[ve] come into contact with the . . . ear of the user” (van der Bilt,
col. 5, ll. 19–21). See, e.g., van der Bilt, col. 5, ll. 39–45; col. 6, ll. 14–17;
col. 6, ll. 53–58; col. 7, ll. 11–25. Although van der Bilt describes sensing
Appeal 2021-000872
Application 16/167,394

6
contact of some sensors but not others, van der Bilt does not explicitly
disclose sensor outputs indicating that certain sensors are “covered” or
“uncovered.” Nor does van der Bilt disclose making the determination
recited in claim 11 (that the headset is affixed when a first proximity sensor
is covered and a second proximity sensor is uncovered).
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding that van der Bilt anticipates Appellant’s
independent claim 1 and independent claim 11. Claims 2 and 3 depend from
and stand with claim 1.
Obviousness Rejection of Claims 1–7, 11, and 15
The Examiner rejects independent claim 1 (as well as independent
claim 11, and dependent claims 2 and 3) as being obvious over van der Bilt
and Official Notice. See Final Act. 4–6; Ans. 12–13. Appellant contends
that van der Bilt does not teach the disputed limitations of claim 1. See
Appeal Br. 8–10; Reply Br. 2–4.
Appellant contends, similar to the anticipation rejection (supra), that
“van der Bilt fails to show or suggest that different sets of sensors may be
used for on-ear detection and off-ear detection.” Appeal Br. 9. Appellant
also contends the Examiner’s Official Notice and resulting conclusions—
that “following instruction and suggestion of a disclosed prior art to modify
an earbud is very well known in the art (Official Notice), it therefore would
have been obvious” (Final Act. 4)—are not properly supported. See Appeal
Br. 8–10; Reply Br. 2–4.
The Examiner counters that van der Bilt describes using different
types of sensors (e.g., optical sensors) designed to detect when the sensor is
in contact (with the head or ear of the user) to determine if van der Bilt’s
Appeal 2021-000872
Application 16/167,394

7
headset is affixed to the ear of the user (see Ans. 12–13), and because van
der Bilt describes “many inventive embodiment[s], van der Bilt teaches how
to determine whether the ear bud has been placed in a user’s ear using the
first . . . and second sensor . . . outputs[,] and [to] determine whether the ear
bud has been removed from the user’s ear using the first sensor . . . output
without using the second sensor output.” Ans. 13; see Ans. 12–13; Final
Act. Br. 4.
We disagree with the Examiner. As with the anticipation rejection of
claim 1 (supra), the Examiner has not sufficiently explained how the
disparate Examiner-cited portions of van der Bilt teach the disputed features
of claim 1. As previously discussed, the Examiner-cited portions of van der
Bilt (see Final Act. 4; Ans. 12–13 (citing van der Bilt, col. 5, l. 17–col. 7, l.
44; col. 8, ll. 15–22)) only describe determining that van der Bilt’s headset is
affixed to a user’s ear based on the output of one or more sensors (preferably
multiple sensors in different groups of sensors). See, e.g., van der Bilt, col.
5, ll. 39–45; col. 6, ll. 14–17; col. 6, ll. 53–58; col. 7, ll. 11–25. van der Bilt
does not explicitly describe determining that the headset is removed (i.e., un-
affixed) from a user’s ear, only that different sensor outputs can be used to
determine that the headset is on the ear. Even if we interpreted van der Bilt
to suggest a determination (by the headset) to remove the (previously
affixed) headset, as urged by the Examiner, van der Bilt still fails to suggest
using different sensors or groups of sensors to make such a determination.
With respect to independent claim 11, claim 11 differs in scope from
claim 1, as previously discussed. The Examiner concludes that van der
Bilt’s rules describe determining if the headset “has been placed in a user’s
ear when the first proximity sensor is covered and when the second
Appeal 2021-000872
Application 16/167,394

8
proximity sensor is uncovered” (Final Act. 6). See Final Act. 5–6; Ans. 14–
15 (citing van der Bilt, col. 5, l. 17–col. 7, l. 44; col. 8, ll. 15–21). The
Examiner-cited portions of van der Bilt, however, only describe determining
that the headset is affixed by sensing contact of some sensors but not others.
Van der Bilt does not describe determining if a sensor is “covered” or
“uncovered,” much less determining that sensors or groups of sensors are
covered and different sensors in different portions of the device are
uncovered to determine if the headset is affixed. Indeed, as pointed out by
Appellant, van der Bilt’s objective is to position the headset sensors where
they are most likely to contact the ear. See Appeal Br. 13 (citing van der
Bilt, col. 5, ll. 10–13); see also Appeal Br. 12–13; Reply Br. 6–7. Therefore,
van der Bilt does not disclose making the determination recited in claim 11.
The Examiner’s conclusion—that it would have been obvious to make the
determination recited in claim 11 based on van der Bilt’s disclosure,
generally, and “rules,” in particular—is based on Examiner speculation.
We decline to engage in speculation. “A rejection . . . must rest on a
factual basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The
Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not . . . resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.” Id.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding that van der Bilt renders obvious Appellant’s
independent claim 1 and independent claim 11. Claims 2–7 and 15 depend
from and stand with claims 1 and 11, respectively.

Appeal 2021-000872
Application 16/167,394

9
Obviousness Rejection of Claims 7–9, 12–14, and 16–20
Independent claim 16 recites: “control circuitry that determines that
the ear bud has been placed in a user's ear when the first light-based sensor
is covered and when the second light-based sensor is uncovered.” Appeal
Br. 23 (Claim App.). Claims 7–9 (which depend from claim 1) and claims
12–14 (which depend from claim 11) include limitations directed to light-
based sensors, light detectors, or sensors that include light-emitting diodes
(LEDs). See Appeal Br. 20–23 (Claim App.). Claims 17–20 depend from
claim 16.
The Examiner rejects independent claim 16 (as well as dependent
claims 7–9, 12–14, and 17–20) as being obvious over van der Bilt and
McCreery. See Final Act. 6–9; Ans. 15–17. Appellant contends that van der
Bilt does not teach the disputed limitations of claim 16. See Appeal Br. 15–
16; Reply Br. 7–9. Specifically, Appellant contends that “McCreery was
merely cited to show a light sensor and fails to make up for these
deficiencies of van der Bilt” (Reply Br. 9), i.e., that van der Bilt does not
describe “determining that an ear bud was in a user’s ear when a sensor is
covered and another sensor is uncovered” (Reply Br. 8.) See Appeal Br. 15–
16; Reply Br. 7–9.
We agree with the Examiner that McCreery describes light-based
sensors. We, however, disagree with the Examiner’s conclusions with
respect to the obviousness of claims 1 and 11 (supra). Claim 16, like claim
11, requires a determination that the ear bud has been placed in a user’s ear
when a first (light-based sensor) is covered and a second (light-based sensor)
is uncovered. For the same reasons as claim 11 (supra), van der Bilt does
not teach making the determination recited in claim 16. The dependent
Appeal 2021-000872
Application 16/167,394

10
claims (7–9, 12–14, and 17–20) stand with their respective base claims.
Thus, we find that the Examiner erred in determining that van der Bilt in
combination with McCreery renders obvious Appellant’s independent claim
16 and dependent claims 7–9, 12–14, and 17–20.
Obviousness Rejections of Claim 10, 21, and 22
The Examiner rejects dependent claims 10 as being obvious over van
der Bilt and Prest. See Final Act. 9. The Examiner also rejects dependent
claim 21 as being obvious over van der Bilt, McCreery, and Akaike. See
Final Act. 9–10. Additionally, the Examiner rejects dependent claim 22 as
being obvious over van der Bilt and Akaike. See Final Act. 10. The
Examiner does not suggest, and we do not find, that the additional cited
references (Prest and Akaike) cure the deficiencies of van der Bilt (supra).
Therefore, we reverse the Examiner’s obviousness rejections of dependent
claims 10, 21, and 22 for the same reasons set forth for claim 1 and 16
(supra).
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 1–22
under 35 U.S.C. § 103. We, therefore, do not sustain the Examiner’s
rejections of claims 1–22.
Appeal 2021-000872
Application 16/167,394

11
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 11 102(a)(1) van der Bilt 1–3, 11
1–7, 11, 15 103 van der Bilt,
Official Notice
1–7, 11, 15
7–9, 12–14,
16–20
103 van der Bilt,
McCreery
7–9, 12–14,
16–20
10 103 van der Bilt, Prest 10
21 103 van der Bilt,
McCreery, Akaike
21
22 103 van der Bilt,
Akaike
22
Overall
Outcome
1–22

REVERSED