Avnera Corporation

Patent Trials and Appeals Board

Jan 27, 2021

2019004614 (P.T.A.B. Jan. 27, 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.
15/795,721 10/27/2017 Manpreet S. Khaira A2192-703910FT 1066
84026 7590 01/27/2021
LANDO & ANASTASI, LLP
SKYWORKS
60 STATE STREET
23RD FLOOR
BOSTON, MA 02109
EXAMINER
LAO, LUNSEE
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
01/27/2021 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):
CKent@LALaw.com
docketing@LALaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MANPREET S. KHAIRA, DAVID MCNEILL,
ERIC SORENSEN, and SYDNEY NEWTON
____________________

Appeal 2019-004614
Application 15/795,721
Technology Center 2600
____________________

Before JOSEPH L. DIXON, DAVID M. KOHUT, and
JON M. JURGOVAN, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to “a headset including one or more earphones
and a connector configured to couple data and charge between the headset
and a user equipment (UE),” and a method for coupling the data and charge.

1 We use the word “Appellant” to refer to “applicant(s)” as defined in 37
C.F.R. § 1.42. The real party in interest is Avnera Corporation. (Appeal Br.
2.)
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(Abstract.) The headset includes a charge node having (i) a charge port for
receiving UE charge from a charge source, (ii) a downstream port for
coupling audio data toward the earphones, and (iii) an upstream port for
coupling the audio data toward the earphones via the downstream port and
coupling UE charge from the charge port toward the UE via the connector.
(Id.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A headset comprising:
one or more earphones;
a connector configured to couple data and charge
between the headset and a user equipment (UE); and
a charge node including:
a charge port for receiving UE charge from a
charge source,
a downstream port for coupling audio data toward
the earphones, and
an upstream port for coupling the audio data
toward the earphones via the downstream port and
coupling UE charge from the charge port toward
the UE via the connector.
(Appeal Br. 11 (Claims App.).)

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sim et al. US 2012/0033824 A1 Feb. 9, 2012
(“Sim”)
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REJECTION
The Examiner made the following rejection:
Claims 1–20 stand rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Sim. (Final Act. 2–6.)

ANALYSIS
The Examiner, among other things, finds Sim discloses
a user equipment (UE) (a user equipment reads on []earphones,
flash memory device, hard disk drive, display, mobile
communication device, laptop computer. . . . a downstream port
(see fig. 1 (102, 106)) for coupling audio data toward the
earphones, and an upstream port (see fig. 4(404, 418, USB, port)
and see paragraph[0071]) for coupling the audio data toward the
earphones via the downstream port (see fig. 2) and coupling UE
charge from the charge port (see fig. 4(400)) toward the UE via
the connector (see figs. 1–4 and paragraphs[0043]–[0073]). . . .
Sim teaches a user equipment (UE) as (1) an earphone 102
(paragraph [0040]), (2) flash memory device, hard disk drive and
display (paragraph [0070]), and (3) a laptop, mobile
communication device, desktop computer, and the like,
connectable to the USB ports, Firewire ports and the like
(paragraph [0071]).

(Ans. 8–9; see also Final Act. 3; Ans. 10 (referring to “the UE/ earphone
102,” and further asserting “UE charge is configured/capable to flow, from
the power source (at 404), in the direction of/towards the UE/ laptop/ mobile
communication device/desktop computer”).) The Examiner explains the UE
and upstream port can be any of the above-listed devices and elements
because “claim 1 does not further specify the user equipment (UE),” and
“claim 1 requires the upstream port is capable of connecting/coupling UE
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charge from the charge port toward the UE via the connector” but “[a]s
claimed, the UE charge is required to be in the direction of/towards the UE,
but not necessarily flowing into the UE.” (Ans. 9.)
Having reviewed the evidence, we do not agree with the Examiner’s
finding that Sim discloses “an upstream port” for (1) “coupling the audio
data toward the earphones via the downstream port [for coupling audio data
toward the earphones]” and (2) for “coupling UE charge from the charge
port toward the UE via the connector” as recited in claim 1. More
particularly, claim 1 requires an operational arrangement in which earphones
on a downstream side receive audio data (via the downstream and upstream
ports), while a UE on an upstream side receives UE charge (via the charge
port, upstream port, and connector). We agree with Appellant’s arguments
that Sim does not disclose the claimed arrangement of ports including “an
upstream port coupling data toward the earphones and coupling user
equipment charge from the charge port toward the user equipment via the
connector.” (Reply Br. 3.) As Appellant explains, the claimed one or more
earphones cannot be considered the same as the claimed UE, as the
Examiner alleges. (Id. at 3–4; Appeal Br. 7–9.) That is because the claimed
earphones are connected on the downstream side (i.e., at the downstream
port for coupling audio data toward the earphones), while the UE is
connected on the upstream side (i.e., at the upstream port for coupling UE
charge toward the UE via the connector). (Reply Br. 3–4; Appeal Br. 7–9.)
With respect to the Examiner’s identification of the claimed upstream
port as the I/O interface 418 or connector 404 of Sim’s charger 400 (see
Final Act. 3; Ans. 8–9), we agree with Appellant none of these elements
satisfy the claimed operational arrangement recited in claim 1. (Appeal Br.
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6–9; Reply Br. 1–4.) Sim’s I/O interface 418 and connector 404 do not
disclose the claimed upstream port, because I/O interface 418 and connector
404 do not couple (i) audio data toward the earphones (earphones 102 in
Sim) and (ii) UE charge from a charge port toward a UE via a connector as
claimed. (Appeal Br. 7–8; Reply Br. 2–3.) Rather, I/O interface 418 merely
“connect[s] to user interface devices and to the memory device 410,” “is
connected to the data connection of each of the connectors 404,” and “may
also include data transfer connections . . . for connection to a laptop, mobile
communication device, desktop computer. . . . to download or upload data
into the memory device 410.” (See Sim ¶ 71.) Thus, Sim’s I/O interface
418 is not an upstream port for coupling UE charge toward a UE, as claim 1
requires. (Appeal Br. 8; Reply Br. 2–3.) Sim’s connector 404 is not an
upstream port either because connector 404 does not simultaneously couple
(i) audio data toward one device (the downstream earphones) and (ii) UE
charge toward another device (a UE). Sim merely discloses that connector
404 provides data and charge to one device (an earphone). (See Sim ¶¶ 67–
68; Appeal Br. 7–8.) Although Sim’s earphone may disclose the claimed
one or more earphones receiving audio data via a downstream port, Sim’s
earphone does not also disclose the claimed UE receiving UE charge via an
upstream port, connector, and charge port as recited in claim 1. As
discussed supra, the claimed one or more earphones cannot be the same
element as the UE recited in claim 1.
The flash memory device or hard disk drive referenced by the
Examiner (as a UE, see Ans. 8–9) are parts of a memory device 410 of
charger 400, and the display referenced by the Examiner (as a UE, see id.) is
display 414 of charger 400. (See Sim ¶¶ 70–71.) None of these elements
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disclose the claimed UE because Sim’s memory device 410 merely receives
data, not charge (see Sim ¶¶ 70–71), and Sim’s display 414 (see Sim ¶ 71)
does not receive charge via a charge port, upstream port, and connector
“configured to couple data and charge between the headset and a user
equipment (UE)” as claimed. (Appeal Br. 8–9; Reply Br. 1–2.)
The “laptop, mobile communication device, desktop computer, and
the like, connectable to the USB ports, Firewire ports and the like”
referenced by the Examiner (as a UE, see Ans. 8–9 (emphasis added)) do not
disclose the claimed UE, either. (Appeal Br. 7–8; Reply Br. 2–4.) Contrary
to the Examiner’s assertion that “power/UE charge is configured/capable to
flow, from the power source (at 404), in the direction of/ towards the UE/
laptop/ mobile communication device/ desktop computer,” see Ans. 10), Sim
does not disclose that the laptop, mobile communication device, desktop, or
computer receives any charge from charger 400. (Appeal Br. 7–9; Reply Br.
2–4.) Sim teaches the laptop, desktop, and mobile communication
device/mobile computer exchange only data with charger 400 via “data
transfer connections . . . to download or upload data into the memory device
410” (see Sim ¶¶ 71, 98), or deliver data and power to an earphone (see Sim
¶¶ 81, 93). Thus, Sim’s laptop/desktop/mobile communication
device/mobile computer does not disclose a UE receiving UE charge via an
upstream port, charge port, and connector as recited in claim 1.
The Examiner erroneously overlooks claimed operational connections
of the “upstream port” when the Examiner asserts that Sim discloses the
limitations of claim 1 because the claim merely “requires the upstream port
is capable of connecting/coupling UE charge from the charge port toward
the UE via the connector” and “[a]s claimed, the UE charge is required to be
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in the direction of/towards the UE, but not necessarily flowing into the UE.”
(Ans. 9.) As Appellant explains, claim 1 and Appellant’s Specification
“support[] an interpretation where the phrase ‘configured to’ denotes an
actual state of configuration of an upstream port coupling data toward the
earphones and coupling user equipment charge from the charge port toward
the user equipment via the connector,” and the Examiner’s assertion “has
provided no evidence that Sim is actually capable of doing this.” (Reply Br.
3.) “[A]nticipation is a question of fact.” In re Hyatt, 211 F.3d 1367, 1371–
72, (citing Bischoff v. Wethered, 76 U.S. (9 Wall.) 812, 814–15 (1869); In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)).
[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the thing
claimed and, thus, cannot anticipate under 35 U.S.C. § 102.
Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
Thus, it is not enough that the prior art reference discloses part
of the claimed invention, which an ordinary artisan might
supplement to make the whole, or that it includes multiple,
distinct teachings that the artisan might somehow combine to
achieve the claimed invention.
Net MoneyIn, 545 F.3d at 1371 (citation omitted).
The Examiner has not shown, nor have we found, Sim discloses an
upstream port for (i) coupling audio data toward the earphones via the
downstream port and (ii) coupling UE charge from the charge port toward
another device (the UE) via a connector configured to couple data and
charge between the headset and the UE, as recited in claim 1. Therefore,
because the identical invention is not “shown in as complete detail as is
contained in the . . . claim” (Richardson v. Suzuki Motor Co., 868 F.2d 1226,
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1236 (Fed. Cir. 1989) (citation omitted)), on this record, we are constrained
to reverse the Examiner’s anticipation rejection of claim 1, and claims 2–8
dependent therefrom.
We also do not sustain the Examiner’s anticipation rejection of
independent claims 9 and 15 for reasons similar to those discussed with
respect to claim 1. Claim 9 recites a charge node including, inter alia, “an
upstream port coupled to the downstream port, the upstream port to couple
the audio data to the downstream port [toward one or more earphones]” and
“a charge port coupled to the upstream port, the charge port to couple user
equipment (UE) charge toward a UE via the upstream port.” Claim 15
recites a method including, inter alia, “coupling, via an upstream port, audio
data toward a downstream port [to one or more earphones]” and “coupling,
via a charge port and the upstream port, user equipment (UE) charge from a
charge source to a UE.” Similar to the rejection of claim 1, the Examiner’s
rejection of claims 9 and 15 relies on “an upstream [port] (see fig. 4 (418,
SUB, port) [in Sim]” and coupling charge towards “user equipment (not
shown, as laptop computer).” (See Final Act. 4–5.) As discussed supra with
respect to claim 1, Sim does not disclose that a laptop or other computer
receives any charge from charger 400 or I/O interface 418. In addition, the
Examiner has not identified any element in Sim disclosing the upstream port
coupling audio data to earphones located downstream, and coupling UE
charge toward another device (UE) as recited in claim 9. The Examiner has
also not identified in Sim operations of coupling, via an upstream port, audio
data toward earphones located downstream, and coupling via the upstream
port UE charge to another device (UE) as recited in claim 15. Thus, we do
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not sustain the Examiner’s anticipation rejection of claims 9 and 15, and
claims 10–14 and 16–20 dependent therefrom.2

DECISION
For the above reasons, we REVERSE the Examiner’s anticipation
rejection of claims 1–20.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 102(a)(1) Sim 1–20

REVERSED

2 In the event of any further prosecution, the Examiner may want to perform
an additional prior art search and/or review in more detail other art cited in
this application. For example—although we do not express an opinion on
whether cited art to Selig et al. (US 2015/0078575 A1, referenced at Final
Act. 8) would teach or make obvious any of the pending claims—we note
that Selig appears to be at least a better reference than Sim, as Selig
discloses earphones receiving audio data (a stereo audio signal) from a
smartphone (¶¶ 14, 19, 21, Figs. 1–3), and a battery 160 receiving charge
from the smartphone (¶¶ 30–32, Figs. 1–3).