Ex Parte Basseas et al

Patent Trial and Appeal Board

Apr 25, 2016

12721167 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121721, 167 03/10/2010
24628 7590 04/25/2016
Husch Blackwell LLP
Husch Blackwell Sanders LLP Welsh & Katz
120 S RIVERSIDE PLAZA
22NDFLOOR
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Stavros Basseas
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4852/107352 UTI 1538
EXAMINER
PRITCHARD, JASMINE L
ART UNIT PAPER NUMBER
2655
MAILDATE DELIVERY MODE
04/25/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STAVROS BASSEAS and STEVEN C. HANNIBAL
Appeal2014-007301
Application 12/721, 167
Technology Center 2600
Before LINZY T. McCARTNEY, TERRENCE W. McMILLIN, and
JOYCE CRAIG, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 3-7, 11-13, and 15-21. Claims 2, 8-10, and 14 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2014-007301
Application 12/721, 167
STATEMENT OF THE CASE
The claimed invention concerns an adjustable modular assistive
listening device. See Spec. i-fi-12, 20; Abstract. Claims 1 and 16 are
independent. Claim 1 illustrates the claimed subject matter:
1. A modular audio processing apparatus comprising:
a plurality of separate, releasably connectable, modules
including
a shaped, ear module;
a receiver module;
a microphone module;
a rechargeable battery module; and
an electronics module mechanically connected to the
receiver and the microphone modules where the electronics
module includes digital signal processing circuits to process
incoming audio signals from the microphone module and also
from a relatively short range wireless transceiver where the
transceiver can receive signals from a displaced compatible
transceiver; and
which includes an adjust and lock tube interconnecting the
microphone module with at least one other module with an
adjustable length interconnection.
REJECTION1
Claims 1, 3-7, 11-13, and 15-21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Feeley (US 2004/0010181 Al; Jan. 15, 2004).
1 The Examiner withdrew the rejection of claims 1, 4, 15, and 16 under
35 U.S.C. § 112. Ans. 2.
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Appeal2014-007301
Application 12/721, 167
ANALYSIS
Claim 1 recites "an adjust and lock tube interconnecting the
microphone module with at least one other module with an adjustable length
interconnection." App. Br. 14. Claim 16 recites a similar limitation. Id. at
17. The Examiner found Feeley discloses connectors that teach or suggest
the "adjust and lock tube" recited in claims 1 and 16. See Final Act. 2, 4--5;
Ans. 3-9.
Appellants argue Feeley discloses using connectors of different
lengths as needed instead of an "adjust and lock tube ... with an adjustable
length interconnection" as recited in claims 1 and 16. See App. Br. 8, 11;
Reply Br. 2---6. According to Appellants, Feeley's connectors represent an
alternative to the claimed "adjust and lock tube" that both obviates the need
for the claimed tube and teaches away from it. See App. Br. 7-8; Reply Br.
6.
We find Appellants' arguments persuasive. The Examiner's
obviousness analysis rests in large part on Feeley's disclosure that
"connectors may be of different types, sizes (e.g., different lengths), shapes,
functional capabilities, etc." and "elements not depicted in FIG. 1 may be
included in connector 20," as well as generic statements that various
unspecified alterations are within the scope of the invention. Feeley i-fi-180,
100, 111 (emphases omitted); see Final Act. 2-3; Ans. 5---6, 8. In particular,
relying on these disclosures, the Examiner found that "one of the connectors
and its functional capabilities can include an 'adjust and lock' feature"' and
"including an 'adjust and lock' cable as a known product in the Feeley
apparatus would not depart from the scope of the invention as a whole."
Final Act. 2 (emphasis added); see also Ans. 5---6.
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Appeal2014-007301
Application 12/721, 167
The Examiner has not provided sufficient evidence or reasoning to
support these findings. Although Feeley discloses that connectors have
different characteristics and that one of ordinary skill in the art may modify
Feeley's invention in unspecified ways, this does not mean Feeley teaches or
suggests every possible connector characteristic or alteration. That is
particularly true in the case of the claim limitation at issue. Here, instead of
teaching "an adjustable length interconnection," Feeley explicitly teaches
replacing a connector that has an undesirable length. See, e.,g., Feeley i-f 77
(disclosing that if a connector is too long, "an acceptable replacement
connector may be selected"). In light of this, the cited portions of Feeley do
not support the Examiner's findings that an "adjust and lock cable" was
known in the prior art or that Feeley's connector may include an "adjust and
lock feature."
The Examiner further concluded "[i]t would have been obvious to try
an 'adjust and lock' cable" because "Feeley continuously expresses that
various changes, substitutions, and alterations can be made without
departing from the spirit and scope of the invention while maintaining a
customizable modular audio processing apparatus." Id. at 2-3. To the
extent the Examiner's "obvious to try" rationale relies on the findings
discussed above, the rationale also suffers from the flaws discussed above.
Moreover, an "obvious to try" rationale generally requires identifying a
finite number of predictable solutions that have a reasonable expectation of
success. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); MPEP
§ 2141. The Examiner has made no such findings here. See Final Act. 2-3,
4--5; Ans. 4--9. Accordingly, this rationale lacks adequate supporting
evidence and rationale.
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Appeal2014-007301
Application 12/721, 167
Finally, the Examiner found visual similarities between Feeley's
connectors and the version of Appellants' "adjust and lock tube" shown in
Figure IA provide additional evidence that Feeley teaches the claimed
"adjust and lock tube." Ans. 3--4. But the fact that Feeley's connectors look
similar to an embodiment of Appellants' adjust and lock tube does not
establish that Feeley's connectors teach "an adjust and lock tube ... with an
adjustable length interconnection." As discussed above, Feeley explicitly
discloses replacing a connector if the connector is not the desired length, not
adjusting the length of the connector. See Feeley i-f 77.
Based on the record before us, we do not sustain the Examiner's
rejections of claims 1 and 16. Because claims 3-7, 11-13, and 15-21
depend from either claim 1 or claim 16, we also do not sustain the
Examiner's rejections of these claims.
DECISION
For the above reasons, we reverse the rejections of claims 1, 3-7, 11-
13, and 15-21.
REVERSED
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