Apple Inc.

Patent Trials and Appeals Board

Sep 29, 2021

2021005131 (P.T.A.B. Sep. 29, 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.
16/017,888 06/25/2018 Marc-Angelo P. Carino P35886US1 7590
65015 7590 09/29/2021
Treyz Law Group
6501 E. Greenway Pkwy
#103-621
Scottsdale, AZ 85254
EXAMINER
KRZYSTAN, ALEXANDER J
ART UNIT PAPER NUMBER
2653
NOTIFICATION DATE DELIVERY MODE
09/29/2021 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 MARC-ANGELO P. CARINO, GARETH J. POWELL, and
CHEN NA
____________________

Appeal 2021 -005131
Application 16/017,8881
Technology Center 2600
____________________

Before MARC S. HOFF, JAMES R. HUGHES, and BETH Z. SHAW,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Non-Final Rejection
of claims 1, 3–10, 12, 14–21, and 23.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 Appellant states that the real party in interest is Apple Inc. Appeal Br. 2.
2 Claims 2, 11, 13, 22, and 24 have been cancelled.
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Appellant’s invention is an earbud that includes capacitive sensor
electrodes and a capacitance-to-digital converter. The earbud may have a
housing in which a speaker is mounted. A tubular portion of the housing has
a passageway aligned with the speaker. The tubular portion includes a
compressible tubular member on which the capacitive sensor electrodes are
formed. Compression of the tubular member may occur when the earbud is
worn in the user’s ear. Control circuitry in the earbud may determine
whether the earbud is fully or partially within a user’s ear, based on
capacitance measurements. Abstract.
Claim 1 is reproduced below:
1. An ear bud, comprising:
a housing having a compressible tubular portion
with a passageway;
a speaker in the housing that is aligned with the
passageway and that is configured to provide sound through the
passageway; and
capacitive sensor electrodes on the compressible
tubular portion, the compressible tubular portion being
compressible to change a capacitance of the capacitive sensor
electrodes by changing a spacing between the capacitive sensor
electrodes.
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Jones US 2015/0382093 Al Dec. 31, 2015
Cartledge US 2017 /0087364 Al Mar. 30, 2017
Kofman US 2019/0052951 Al Feb. 14, 2019
Chiba US 2020/0011649 Al Jan. 9, 2020

Claims 9, 10, 12, and 14–21 stand rejected under 35 U.S.C. § 112(b)
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which Appellant regards as the invention.
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Claims 1, 3–10, 12, 14–18, and 21 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Kofman and Cartledge.
Claim 23 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kofman, Cartledge, and Chiba.
Claims 19 and 20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kofman, Cartledge, and Jones.
Throughout this decision, we make reference to the Appeal Brief
(“Appeal Br.,” filed May 6, 2021), the Reply Brief (“Reply Br.,” filed Aug.
30, 2021), and the Examiner’s Answer (“Ans.,” mailed July 1, 2021) for
their respective details.
ISSUE
Does the combination of Kofman and Cartledge teach or suggest
capacitive sensor electrodes on the compressible tubular portion, the
compressible tubular portion being compressible to change a capacitance of
the capacitive sensor electrodes by changing a spacing between the
capacitive sensor electrodes?
ANALYSIS
Section 112(b) Rejection
The Examiner rejects claim 9, 10, 12, and 14–16 because “it is not
clear what the claimed capacitance . . . is between,” (i.e., between which
electrodes the capacitance occurs). Non-Final Act. 4.
We do not agree with the Examiner that the claim language is
indefinite. Claim 9 explicitly recites that the claimed capacitance is between
“the first and second capacitive sensor electrodes” (formed on the outer
surface of the compressible outer tubular portion of the tubular member) and
the “third capacitive sensor electrode” (on the rigid inner tubular portion).
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We find that claim 9 distinctly claims the subject matter sought to be
patented.
The Examiner rejects claims 17–21 because “it is not clear how to
read a capacitive sensor electrode on . . . an inner surface of the
compressible member, is it formed on the compressible member or just
adjacent to the compressible member?” Non-Final 4.
We agree with Appellant that Figures 8 and 13 illustrate a capacitive
sensor electrode on the inner surface of the compressible member. We do
not agree with the Examiner that the “on” language of claims 17 and 20 is
indefinite.
We do not sustain the Examiner’s § 112(b) rejection of claims 9, 10,
12, and 14–21.
Section 103 Rejection of Claims 1, 3–10, 12, 14–18, and 21
Independent claim 1 recites, inter alia, “capacitive sensor electrodes
on the compressible tubular portion, the compressible tubular portion being
compressible to change a capacitance of the capacitive sensor electrodes by
changing a spacing between the capacitive sensor electrodes.”
The Examiner finds that Kofman does not teach the claimed
compressible tubular portion, and cites to Cartledge for its teaching of such a
portion. Non-Final Act. 6 (citing Cartledge Figs. 83, 87, elements 8136 and
8138, and ¶ 302).
Appellant argues that Cartledge fails to “show or suggest that a
distance between the electrodes is change[d] to change the capacitance
between the electrodes as the device is inserted into a user’s ear, instead
merely indicated that they are for neuromodulation.” Appeal Br. 11.
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Appellant’s argument concerning the purpose of Cartledge’s
electrodes is not persuasive to show that the Examiner erred. The Examiner
has identified a teaching in Cartledge of a compressible tubular portion.
Non-Final Act. 6. When this portion is compressed, the spacing between the
capacitive sensor electrodes of Cartledge necessarily changes, which
necessarily results in a change in the capacitance of the capacitive sensor
electrodes. Appellant’s Specification refers to the physical principle that “the
capacitance between a set of capacitance electrodes (e.g., parallel plates) is
proportional to the distance separating the electrodes.” Spec. ¶ 33, Reply Br.
5.
We agree with the Examiner that “known capacitive sensors do not
distinguish between the different stimuli that change the relative capacitance
of the electrodes.” Ans. 17. We further agree that “applicant’s claimed
earbud, and the earbud disclosed by the cited prior art[,] will detect a change
in capacitance based on the combined effect of each of the above cited
stimuli when detecting the insertion of the earbud into the user’s ear.” Ans.
18. Appellant’s further argument that neither Kofman nor Cartledge
“recognizes this arrangement,” i.e., specifically mentions that changing the
distance between electrodes would change the capacitance, is not relevant.
See Reply Br. 5. The change in capacitance would necessarily occur as a
consequence of compression.
Appellant argues that one of ordinary skill would not have modified
Kofman to include Cartledge’s electrodes, as they would “interfere with the
capacitive measurement capabilities of Kofman’s traces.” Appeal Br. 11.
First, the Examiner has stated a reason to combine Kofman with Cartledge:
“for the purpose of sensing the capacitance while providing a soft
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comfortable earpiece.” Non-Final Act. 6. Second, the Examiner finds, and
we agree, that Cartledge and Kofman both teach multiple electrodes on a
single earbud. Ans. 18. We agree with the Examiner that “varying numbers
of electrodes could be used without breaking the function of the capacitive
sensor.” Id.
Appellant asserts that “only applicant’s originally filed specification
discloses an earbud having capacitive sensor electrodes on a compressible
tubular portion,” and because Kofman and Cartledge do not, the Examiner’s
rejection is based on impermissible hindsight. Appeal Br. 12. Appellant’s
argument is not persuasive because, as explained supra, we find that the
combined teachings of Kofman and Cartledge do suggest such an earbud.
We determine that the Examiner did not err in combining Kofman and
Cartledge to obtain the invention recited in claim 1. We sustain the
Examiner’s § 103 rejection.
Appellant presents the same arguments with respect to dependent
claim 3. We therefore sustain the § 103 rejection of claim 3 for the same
reasons given with respect to claim 1.
With respect to independent claims 9 and 17, Appellant relies on the
same arguments made with respect to independent claim 1. We therefore
sustain the § 103 rejection of claims 9 and 17 for the same reasons given
with respect to claim 1. We also sustain the § 103 rejection of dependent
claims 4–8, 10, 12, 14–16, 18, and 21, not separately argued, for the same
reasons.

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Claim 23
Claim 23 depends from claim 1, and further recites a first capacitive
electrode formed on an outer surface of the tubular portion, and a second
capacitive electrode on the inner surface.
Appellant argues, as with independent claim 1, that modifying
Kofman to include Cartledge’s electrodes would interfere with the capacitive
measurement capabilities of Kofman’s traces. Appellant further argues that
“Chiba fails to show or suggest any operability of these electrodes in the ear
bud context,” and that Chiba’s arrangement is alleged to be “incompatible
with the teachings of Kofmand [sic] and Cartledge.” Appeal Br. 16.
As discussed with respect to independent claim 1, we are not
persuaded that Cartledge’s compressible tubular portion is technically
incompatible with Kofman. With respect to the specific applicability of
Chiba, we agree with the Examiner’s finding that Chiba teaches ring
electrodes 112 formed on outer and inner surfaces of a deformable tubular
member, useful to detect a capacitance due to deformation in at least two
directions. Chiba, Abstract. We agree with the Examiner’s reasoning that
modifying Kofman and Cartledge in view of Chiba would have been
obvious “for the purpose of indicating a depression via a further change in
capacitance.” Non-Final Act. 14.
Because we determine that the Examiner did not err in rejecting claim
23, we sustain the § 103 rejection over Kofman, Cartledge, and Chiba.
Claims 19 and 20
Appellant does not present separate argument for the patentability of
these dependent claims. Accordingly, we sustain the Examiner’s § 103
rejection of claims 19 and 20 over Kofman, Cartledge, and Jones for the
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same reasons given with respect to the rejection of independent claim 17
from which they depend.
CONCLUSION
The combination of Kofman and Cartledge suggests capacitive sensor
electrodes on the compressible tubular portion, the compressible tubular
portion being compressible to change a capacitance of the capacitive sensor
electrodes by changing a spacing between the capacitive sensor electrodes.
DECISION SUMMARY
The Examiner’s decision to reject claims 1, 3–10, 12, 14–21, and 23 is
affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
9, 10, 12,
14–21
112(b) Indefiniteness 9, 10, 12, 14–
21
1, 3–10,
12, 14–18,
21
103 Kofman, Cartledge 1, 3–10,
12, 14–
18, 21

23 103 Kofman, Cartledge,
Chiba
23
19, 20 103 Kofman, Cartledge,
Jones
19, 20
Overall
Outcome
1, 3–10,
12, 14–
21, 23

Appeal 2021-005131
Application 16/017,888

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED