Ex Parte Almqvist

Board of Patent Appeals and Interferences

Feb 1, 2005

09501970 (B.P.A.I. Feb. 1, 2005)

1 The examiner (answer, page 2) has withdrawn the rejection of claims 1
and 7. Accordingly, only claim 6 remains before us for decision on appeal.
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHRISTER ALMQVIST
____________
Appeal No. 2004-0984
Application No. 09/501,970
____________
HEARD: January 13, 2005
____________
Before HAIRSTON, LEVY, and NAPPI, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 1, 6 and 71. Claim 4 has
been canceled (Paper No. 7, filed August 2, 2001). Claims 2, 3
and 5 have been indicated as allowable if rewritten in
independent form (Paper No. 25, mailed May 22, 2003.

Appeal No. 2004-0984
Application No. 09/501,970
Page 2
BACKGROUND
Appellant’s invention relates to an acoustic headset having
groups of buttons disposed in depressions in an arched outer side
of an auditory cup (specification, page 1, line 1 and page 2,
lines 23-27). An understanding of the invention can be derived
from a reading of claim 6, which is reproduced as follows:
6. A hearing protection in the form of an acoustic headset
comprising:
a first and a second ear cup interconnected by a stirrup or
headband, said first and second ear cup each have an inner
surface for contacting the ear of a wearer and an outer surface;
one loudspeaker in each one of the ear cups,
one microphone for receiving ambient sound,
one radio unit, and
one electronic control unit actuable by a button set for
transmitting sound to the ear cups from the microphone and the
radio unit by the intermediary of the loudspeakers, the buttons
of the button set being arranged in groups wherein the buttons
within each group are functionally connected to one another and
each group is located in a separate recess or depression on the
outer surface of the first cup.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Wieder 4,620,068 Oct. 28, 1986
Lansang 5,794,127 Aug. 11, 1998
Sayler et al. 5,923,317 Jul. 13, 1999
(Sayler)
Appeal No. 2004-0984
Application No. 09/501,970
Page 3
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weider in view of Lansang and Sayler.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellant regarding the above-noted rejection,
we make reference to the examiner's answer (Paper No. 27, mailed
December 2, 2003) for the examiner's complete reasoning in
support of the rejection, and to appellant's brief (Paper No. 26,
filed August 25, 2003) and reply brief (Paper No. 28, filed
December 8, 2003) for appellant's arguments thereagainst. Only
those arguments actually made by appellant have been considered
in this decision. Arguments which appellant could have made but
chose not to make in the brief have not been considered.
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejection advanced
by the examiner, and the evidence of obviousness relied upon by
the examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellant's arguments set forth in the briefs along with the
examiner's rationale in support of the rejection and arguments in
Appeal No. 2004-0984
Application No. 09/501,970
Page 4
rebuttal set forth in the examiner's answer. Upon consideration
of the record before us, we affirm.
In rejecting claims under 35 U.S.C. § 103, it is incumbent
upon the examiner to establish a factual basis to support the
legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set forth
in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill in
the pertinent art would have been led to modify the prior art or
to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
or implication in the prior art as a whole or knowledge generally
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434,
1438 (Fed. Cir. 1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings
by the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note In
Appeal No. 2004-0984
Application No. 09/501,970
Page 5
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole. See id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
The examiner's position (Paper No. 25, mailed May 22, 2003,
page 3) is that Weider discloses ear cups, headband, loudspeaker,
microphone, radio, control unit actuatable by a button set having
a microphone ON/OFF switch and a squelch control switch located
on the ear cup, but fails to disclose the implementation of an
ON/OFF switch and squelch control switch. To overcome this
deficiency of Weider, the examiner turns to Lansang for a
teaching of on/off switches and channel selector control
switches, each having two buttons which are functionally
connected. The examiner takes the position that it would have
been obvious to implement the use of two button switches of
Lansang for the switches of Weider for the purpose of precise
controlling of the functions of these switches. The examiner
Appeal No. 2004-0984
Application No. 09/501,970
Page 6
notes that the combined teachings of Weider and Lansang fail to
disclose that buttons within each group are located in a
separate recess or depression on the ear cup. To overcome this
deficiency of Weider and Lansang, the examiner turns to Sayler
for a disclosure of button groupings within a recess (recess 20
having buttons grouping 60). The examiner's reasoning is that
the modification would allow comfortable and quick access to each
of the buttons in each grouping.
At the outset, we observe that appellant does not dispute
the examiner's interpretation of Weider and Lansang. Nor does
appellant dispute the combinability of Weider and Lansang.
Rather, appellant asserts (brief, page 5) that Sayler is not
combinable with Weider and Lansang because Sayler is directed to
a hand held control unit and is unrelated to an acoustical
headset. It is argued (id.) that the examiner's rejection is
nothing more that a hindsight reconstruction of appellant's
invention. It is argued that in appellant's invention, the
depressions have a plurality of buttons wherein each plurality of
buttons in each recess constitutes a button set, and that the
buttons are functionally connected to each other; i.e., each set
of buttons, such as 18, 18' and 19, 19' are in another recess.
Appeal No. 2004-0984
Application No. 09/501,970
Page 7
Thus, each recess includes a plurality of buttons, which operate
the same function of the radio unit of the acoustical headset.
Appellant adds that by providing separate recesses for each
function, the user can readily feel, without looking, where his
fingers should be to operate the button set.
Before addressing the examiner's rejection based upon prior
art, it is an essential prerequisite that the claimed subject
matter be fully understood. Analysis of whether a claim is
patentable over the prior art under 35 U.S.C. § 103 begins with a
determination of the scope of the claim. The properly
interpreted claim must then be compared with the prior art.
Claim interpretation must begin with the language of the claim
itself. See Smithkline Diagnostics, Inc. v. Helena Laboratories
Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472 (Fed. Cir. 1988).
Accordingly, we will initially direct our attention to
appellant’s claim 6 to derive an understanding of the scope and
content thereof.
Before turning to the proper construction of the claim, it
is important to review some basic principles of claim
construction. First, and most important, the language of the
claim defines the scope of the protected invention. Yale Lock
Appeal No. 2004-0984
Application No. 09/501,970
Page 8
Mfg. Co. v. Greenleaf, 117 U.S. 554, 559 (1886) ("The scope of
letters patent must be limited to the invention covered by the
claim, and while the claim may be illustrated it cannot be
enlarged by language used in other parts of the specification.");
Autogiro Co. of Am. v. United States, 384 F.2d 391, 396, 155 USPQ
697, 701 (Ct. Cl. 1967) ("Courts can neither broaden nor narrow
the claims to give the patentee something different than what he
has set forth [in the claim]."). See also Continental Paper Bag
Co. v. Eastern Paper Bag Co., 210 U.S. 405, 419 (1908); Cimiotti
Unhairing Co. v. American Furuya Ref. Co., 198 U.S. 399, 410
(1905). Accordingly, "resort must be had in the first instance
to the words of the claim" and words "will be given their
ordinary and accustomed meaning, unless it appears that the
inventor used them differently." Envirotech Corp. v. Al George,
Inc., 730 F.2d 753, 759, 221 USPQ 473, 477 (Fed. Cir. 1984).
Second, it is equally "fundamental that claims are to be
construed in the light of the specification and both are to be
read with a view to ascertaining the invention." United States
v. Adams, 383 U.S. 39, 49, 148 USPQ 479, 482 (1966).
Furthermore, the general claim construction principle that
limitations found only in the specification of a patent or patent
Appeal No. 2004-0984
Application No. 09/501,970
Page 9
application should not be imported or read into a claim must be
followed. See In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15
(CCPA 1978). One must be careful not to confuse impermissible
imputing of limitations from the specification into a claim with
the proper reference to the specification to determine the
meaning of a particular word or phrase recited in a claim. See
E.I. Du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d
1430, 1433, 7 USPQ2d 1129, 1131 (Fed. Cir.), cert. denied, 488
U.S. 986 (1988).
What we are dealing with in this case is the construction of
the limitations recited in the appealed claims. As stated by the
court in In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523,
1529 (Fed. Cir. 1998) "[t]he name of the game is the claim."
Claims will be given their broadest reasonable interpretation
consistent with the specification, and limitations appearing in
the specification are not to be read into the claims. In re
Etter, 756 F.2d 852, 858, 225 USPQ 1, 5 (Fed. Cir. 1985).
We find that claim 6 does not require that each recess
includes a plurality of buttons which operate the same functions
for the radio function of the acoustical headset, as asserted by
appellant. As drafted, claim 6 only requires that the buttons
Appeal No. 2004-0984
Application No. 09/501,970
Page 10
within each group are functionally connected to one another. Of
note is that the phrase "functionally connected" does not appear
in appellant's specification, as filed. Giving the claim its
broadest reasonable interpretation, we find that the phrase
"functionally connected" can refer to each of the buttons
performing an operation on the portable electronic device.
Turning to the teachings of Weider and Lansang, we find
separate pairs of discrete buttons 14, 18 wherein each of the
pairs of buttons control the same function (figures 3 and 4 of
Lansang). Turning to Sayler, we find that Sayler is directed to
a controller for video games or simulations (col. 1, lines 5 and
6). Sayler recognizes a problem with existing button groupings,
and proposes a solution, asserting (col. 1, line 65 through col.
2, line 18) that:
An additional problem in the industry is the
configuration of the button groupings on existing
controllers especially two-handed controllers.
In button groupings of conventional two-handed
controllers, the buttons, while generally in close
proximity, fail to offer optimal rapid, easy, and
comfortable access from one button to another.
The button configurations of the prior art typically
have divergent pairs, as in the Sega controller, or
parallel button lines, as in many generic controllers.
Furthermore, the button’s tops tend to protrude from
the controller’s top surface with a shape and
configuration such that a user’s hand digit will
"catch" on the button edge of an adjacent button if
the thumb or finger is slid from one button to
another. These configurations of the prior art
fail to provide for the most desirable, efficient
Appeal No. 2004-0984
Application No. 09/501,970
Page 11
and ergonomic access by a user’s hand digit, as
they each require the lifting of the hand digit
to reach other buttons within the grouping. It
is therefore desirable, to have a button grouping
configuration and design that would allow a user
to slide, glide or roll his thumb or finger easily
from one button in the grouping to another without
having to lift if from the controller, and without
it "catching" on another button.
From this disclosure of Sayler, we find a recognition of the
problem of button pairs that protrude from the top of the surface
of the controller and require lifting of the hand digit to reach
other buttons within the grouping. Sayler's solution is to have
a button grouping that will allow the user to slide, glide or
roll his/her thumb or finger easily from one button of the
grouping to another without having to lift it from the
controller, and without it catching on another button. Sayler's
solution to the problem is providing a button grouping
configuration within a recess to allow comfortable and quick
access to each of the buttons in the grouping. Sayler adds,
(col. 3, lines 26 and 27) that the buttons are arranged in pairs,
along radii which converge toward the user's thumb pivot joint.
From the disclosure of Sayler of placing the buttons of a
group within a recess to provide quick and comfortable access to
the buttons, we agree with the examiner that an artisan would
have been motivated to place each of the button groups 14, 18 of
Lansang within a recess.
Appeal No. 2004-0984
Application No. 09/501,970
Page 12
In the alternative, to the extent that it could be argued
that the teaching of Sayler refers to a single recess with button
groups, and that when applied to Lansang would result in one
recess for both button groups and not to a recess for each of the
separate button groups 14, 18 of Lansang, we note the additional
disclosure of Sayler of a separate recess having additional
buttons 74, 76 (figure 4). Although Sayler simply refers to
buttons 74, 76 as being additional buttons (col. 7, lines 27 and
28), we find that from the disclosure of Sayler showing the
buttons unnumbered, and the showing of the buttons in figures 1,
4 and 5, that buttons 74 and 76 are in a recess in the outer
surface of the hand held unit. Thus, we find that Sayler
discloses two sets of buttons, each within a recess in the outer
surface of the handheld unit. From this disclosure of Sayler, we
find that an artisan would have been motivated to place each of
the button groups 14, 18 of Lansang within a separate recess in
the outer surface of the housing.
We are not persuaded by appellant's assertion (brief, page
5) that “[t]he teaching in the Sayler reference which the
Examiner relies on have nothing to do with an acoustical headset
but rather a handheld control unit which is always visible to the
user.” Firstly, there is no disclosure in Sayler that a user
looks at the hand held device while playing the video game.
Appeal No. 2004-0984
Application No. 09/501,970
Page 13
Secondly, when handheld game controllers are used while playing
a video game, the user looks at the game being played while using
the hand-held controller, not at the controller.
In addition, we are not persuaded by appellant's argument
(id.) that applying the teachings of a hand held control unit for
a video game to an acoustical headset is a hindsight
reconstruction of appellant's invention. Firstly, as discussed,
supra, Sayler recognizes the problem of ease in moving a user's
fingers between the buttons of a handheld controller, and
provided the solution of putting button groups in a recess.
Secondly, the issue relates not to the structure of an acoustical
headset, but rather to a tactile-operated controller that is
meant to be operated by the fingers of the user, without looking
at the buttons on the controller.
From all of the above, we find that the teachings of Weider,
Lansang and Sayler suggest the limitations of claim 6.
Accordingly, the rejection of claim 6 under 35 U.S.C. § 103(a) is
affirmed.
Appeal No. 2004-0984
Application No. 09/501,970
Page 14
CONCLUSION
To summarize, the decision of the examiner to reject claim 6
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 CFR
§ 1.136 (a).
AFFIRMED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )
SSL/kis
Appeal No. 2004-0984
Application No. 09/501,970
Page 15
GREGORY P. LA POINTE
BACHMAN & LA POINTE
900 CHAPEL STREET
NEW HAVEN, CT 06510