Ex Parte Bachmann et al

Board of Patent Appeals and Interferences

Sep 27, 2006

09700139 (B.P.A.I. Sep. 27, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte WOLFGANG BACHMANN, GERHARD KRUMP,
HANS-JURGEN REGL and ANDREAS ZIGANKI
_______________

Appeal No. 2006-2794
Application No. 09/700,139
_______________

ON BRIEF
_______________

Before JERRY SMITH, RUGGIERO, and HOMERE, Administrative Patent
Judges.

JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s rejection of claims 1-4, 6, 8, and 9. Claim 5 has been indicated to
contain allowable subject matter [brief, page 2; reply brief, page 2].
Appeal No. 2006-2794
Application No. 09/700,139

The disclosed invention pertains to a loudspeaker comprising a sound
radiating panel that is mounted under mechanical tension to a periphery (e.g., a
wall) by a connecting element. The panel comprises a core layer and a cover
layer connected thereto. The panel is formed such that the cover layer is under
mechanical tension when it is connected with the core layer. Additionally, the
connecting element is stretched so that it is under mechanical tension and then
affixed to the periphery and the panel. Such a construction enhances low
frequency resonances.

Representative claim 1 is reproduced as follows:

1. Panel loudspeaker comprising

at least one sound radiating panel having a core layer and at least
one cover layer connected with the core layer,

a periphery that surrounds the at least one sound radiating panel
with a lateral gap, and

at least one connecting element that connects the at least one
sound radiating panel with the periphery,

wherein the at least one connecting element is under mechanical
tension when connected with the periphery, and

wherein regions of the at least one cover layer that are connected
with the core layer are also under mechanical tension.

The examiner relies on the following references:

Azima et al. (Azima ‘766) 6,003,766 Dec. 21, 1999

Azima et al. (Azima ‘029) 6,332,029 Dec. 18, 2001
(filed Sept. 3, 1996)

2
Appeal No. 2006-2794
Application No. 09/700,139

The following rejections are on appeal before us:
1. Claims 1, 3, 8, and 9 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Azima ‘766.
2. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Azima ‘766.
3. Claims 2 and 4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Azima ‘766 in view of Azima ‘029.
Rather than repeat the arguments of appellants or the examiner, we make
reference to the briefs and the answer for the respective details thereof.
OPINION
We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of anticipation and obviousness
relied upon by the examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision, the appellants'
arguments set forth in the briefs along with the examiner’s rationale in support of
the rejections and arguments in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us, that the
disclosure of Azima ‘766 does not fully meet the invention as set forth in claims 1,
3, 8, and 9. We are also of the view that the evidence relied upon and the level
of skill in the particular art would not have suggested to one of ordinary skill in the
art the obviousness of the invention as set forth in claims 2, 4, and 6.
Accordingly, we reverse.
3
Appeal No. 2006-2794
Application No. 09/700,139

We consider first the rejection of claims 1, 3, 8, and 9 under 35 U.S.C.
§ 102(e) as being anticipated by Azima ‘766. Anticipation is established only
when a single prior art reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as well as disclosing
structure which is capable of performing the recited functional limitations.
RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221
USPQ 385, 388 (Fed. Cir. 1984); W.L. Gore and Associates, Inc. v. Garlock, Inc.,
721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983). Only those
arguments actually made by appellants have been considered in this decision.
Arguments which appellants could have made but chose not to make in the briefs
have not been considered and are deemed to be waived [see 37 CFR
§ 41.37(c)(1)(vii)(2004)].
The examiner has indicated how the claimed invention is deemed to be
fully met by the disclosure of Azima ‘766 [answer, page 4]. Regarding
independent claim 1, the examiner asserts in the rejection that the connecting
element 3 of Azima ‘766 is under mechanical tension when connected with the
periphery as claimed. The examiner further asserts that when joints 20 are
under tension, cover layer 21 is also under tension [id.].
Appellants argue that the examiner’s interpretation of mechanical “tension”
is unreasonably broad [brief, page 4]. Rather, appellants argue that skilled
artisans would understand that the term “tension” in the mechanical sense
4
Appeal No. 2006-2794
Application No. 09/700,139

means “forces acting to pull an object apart” as evidenced by various textbook
and dictionary sources [brief, page 5].
The examiner responds citing a dictionary that defines “tension” as “either
of two balancing forces causing or tending to cause extension” [answer, page 6].
With this construction, the examiner asserts that as the panel of Azima ‘766
vibrates, the panel inherently produces a force causing or tending to cause
extension in at least a part of the skin, core, and suspension [answer, pages 6
and 7].
Appellants respond with two main arguments. First, appellants argue that
the vibration of one body does not inherently place an attached second body
under tension [reply brief, page 3]. In this regard, appellants note that the
examiner’s inherency position is not supported by evidence or explanation apart
from mere conclusory statements [reply brief, pages 3 and 4]. Second,
appellants argue that claim 1 requires that the tension exist on assembly – even
when the panel is not vibrating [id.]. Appellants emphasize that claim 1 expressly
requires that the “at least one connecting element is under mechanical tension
when connected with the periphery” [reply brief, page 5; emphasis in original].
According to appellants, it is not enough that the connecting element is placed
under mechanical tension after assembly; connecting the loudspeaker must itself
have resulted in that tension [reply brief, page 5].
5
Appeal No. 2006-2794
Application No. 09/700,139

We will not sustain the examiner’s anticipation rejection of independent
claim 1. At the outset, we agree with appellants that skilled artisans would
understand “mechanical tension” to mean “forces acting to pull an object apart.”
Simply put, skilled artisans (electrical and mechanical engineers with related
industry experience) would readily understand that mechanical tension is the
opposite of compression. In our view, appellants’ definition of the term more
closely aligns with this understanding, particularly in light of appellants’
disclosure.1 We therefore adopt appellants’ construction.2
With this construction, we recognize that although Azima ‘766 is silent
regarding whether the connecting element 3 and regions of the cover layer 21
are under mechanical tension as the examiner readily admits, the reference may
nonetheless anticipate the claims if such tension inherently results from the
loudspeaker’s structure and operation. Under the doctrine of inherency, if a
claimed element is not expressly disclosed in a prior art reference, the reference
nevertheless anticipates the claim if the missing element is necessarily present in

1 See e.g., appellants’ specification, page 6, lines 11-16 (noting that tension in connecting
elements 17 is achieved by stretching the elements prior to connecting them to wall 16). See
also Fig. 3 (indicating tension in the connecting element and cover layers with double arrows).
2 See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997) (“[The USPTO]
applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in
their ordinary usage as they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may be afforded by the
written description contained in the applicant's specification.”).
6
Appeal No. 2006-2794
Application No. 09/700,139

the reference, and that it would be so recognized by skilled artisans. Rosco, Inc.
v. Mirror Lite Co., 304 F.3d 1373, 1380, 64 USPQ2d 1676, 1680 (Fed. Cir. 2002)
(citations and internal quotation marks omitted). To anticipate the claim, the
missing element must be necessarily present in the prior art -- not merely
probably or possibly present. Id. (emphasis added).
Turning to Azima ‘766, Figure 2a is illustrative. As the examiner indicates,
suspension 3 connects the panel 2 with periphery 1 and thus reasonably
corresponds to the claimed connecting element. The reference indicates that
suspension 3 comprises resilient materials such as foam rubber and foam
plastics [Azima ‘766, col. 3, lines 18-20]. Additionally, suspension 3 may damp
the panel’s edges to prevent excessive edge movement [id., col. 4, lines 25-26].
Significantly, however, Azima ‘766 is silent regarding the nature and extent of
forces applied to the suspension during operation or otherwise – let alone
whether such forces cause the suspension to be under mechanical tension as
claimed.
We agree with appellants that the examiner has simply offered no
evidence on this record to establish that suspension 3 would necessarily be
under mechanical tension. In short, the examiner’s inherency assertions are
merely speculative without concrete evidentiary support.
We recognize, however, that some movement will occur in Azima’s panel
loudspeaker by launching bending waves into the panel via the transducer 9 to
cause it to acoustically resonate [see id., col. 2, lines 59-67]. But such
7
Appeal No. 2006-2794
Application No. 09/700,139

movement hardly guarantees that the resilient suspension or regions of the cover
layer that are connected with the core layer will be under mechanical tension. In
fact, it is equally likely on the record before us that at least the resilient
suspension is under compression or some other force – not necessarily tension
as the examiner speculates.3 We cannot say that no evidence exists that would
support the examiner’s inherency position. We can say, however, that no such
evidence exists on this record.
Because insufficient evidence exists on this record establishing that the
connecting element 3 in Azima ‘766 is necessarily under mechanical tension, we
will not sustain the examiner’s anticipation rejection of independent claim 1.
Since we do not sustain the examiner's rejection of independent claim 1, we
likewise do not sustain the examiner's rejections of dependent claims 2-4, 6, 8,
and 9.

3 See e.g., Fig. 4 of Azima ‘766 (showing the resilient suspension supporting the panel).
8
Appeal No. 2006-2794
Application No. 09/700,139

In summary, we have not sustained the examiner's rejection with respect
to any of the claims on appeal. Therefore, the decision of the examiner rejecting
claims 1-4, 6, 8, and 9 is reversed.

REVERSED

JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEAN R. HOMERE )
Administrative Patent Judge )

9
Appeal No. 2006-2794
Application No. 09/700,139

FOLEY HOAG LLP
PATENT GROUP, WORLD TRADE CENTER WEST
155 SEAPORT BLVD
BOSTON, MA 02110

10