Ex parte Blind et al.

Board of Patent Appeals and Interferences

Jun 21, 1999

08352964 (B.P.A.I. Jun. 21, 1999)

Application for patent filed December 8, 1994. According to1
appellants, this application is a continuation of Application 08/103,379,
filed August 9, 1993, now abandoned.
1
Paper No. 16
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte HENRY F. BLIND,
DAVID A. DAGE and
ALAN S. PHILIPS
______________
Appeal No. 96-2871
Application 08/352,9641
_______________
ON BRIEF
_______________
THOMAS, HAIRSTON and HECKER, Administrative Patent Judges.
HECKER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of
Appeal No. 96-2871
Application 08/352,964
2
claims 1 through 15, all claims pending in the application.
Appellants’ invention relates to a noise absorbing cover
for an automotive loudspeaker to prevent exterior noise from
being coupled through a loudspeaker to the interior of the
automobile.
Representative independent claim 1 is reproduced as
follows:
1. A vehicle comprising:
a structural panel disposed between an interior and
an exterior of said vehicle and including an aperture having
an axis;
a speaker mounted to said structural panel
substantially coaxially with said aperture, said speaker
having a front surface acoustically coupled with said interior
and a rear surface acoustically isolated from said interior;
and
a first sound absorbing barrier defining a space
substantially enclosing a rear of said speaker and defining an
air gap for venting said space to said exterior, said air gap
substantially preventing pressurization of said space, and
said air gap being oriented to exclude direct sound
transmission paths for exteriorly generated noise to said
interior.
The reference relied on by the Examiner is as follows:
Erickson 4,928,788 May 29,
Appeal No. 96-2871
Application 08/352,964
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1990
Claims 1 through 15 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. Claims 1, 2, 5 through
9 and 12 through 15 stand rejected under 35 U.S.C. § 102 as
being anticipated by Erickson. Claim 3 stands rejected under
35 U.S.C. § 102 as anticipated by or, in the alternative,
under 35 U.S.C.
§ 103 as obvious over Erickson. Claim 4 stands rejected under
35 U.S.C. § 103 as being unpatentable over Erickson in view of
acknowledged prior art. Claims 10 and 11 stand rejected under
35 U.S.C. § 103 as unpatentable over Erickson.
Rather than repeat the arguments of Appellants or the
Examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
After a careful review of the evidence before us, we
agree with the Examiner that claims 1 through 15 are properly
rejected under at least one of 35 U.S.C. § 112, second
Appeal No. 96-2871
Application 08/352,964
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paragraph,
35 U.S.C. § 102 and 35 U.S.C. § 103. Thus, we will sustain
the rejection of these claims. However, we will reverse the
35 U.S.C. § 102 rejection of claim 7.
At the outset, we note that Appellants have argued the
Examiner’s objection (under 37 CFR § 1.75(d)(1)) to the
language “a non-rigid sound absorbing material” of claim 15.
We agree with the Examiner that this is a petitionable matter
under 37 CFR § 1.181, not appealable under 37 CFR § 1.191. In
addition, we note that the cited language did not appear in an
original claim. It first appeared in a proposed amendment
after final rejection (not entered) in the parent application,
received October 11, 1994, and was not entered until the
filing of this continuation
application on December 8, 1994. The cited language may
constitute new matter, but this question is not before us.
Also at the outset, we note that the Appellants indicated
on page 6 of the brief that claims 3, 4 and 9 through 14 stand
or fall together with the claims from which they depend.
Appeal No. 96-2871
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Rejection under 35 U.S.C. § 112, second paragraph
Definiteness problems often arise when words of degree
are used in a claim. That some claim language may not be
precise, however, does not automatically render a claim
invalid. When a word of degree is used we must determine
whether the specification provides some standard for measuring
that degree. Furthermore, even if some experimentation is
needed to determine limits, the claims would not necessarily
be unpatentable under section 112. Seattle Box Co. v.
Industrial Crating & Packing, Inc., 731 F.2d 818, 221 USPQ 568
(Fed. Cir. 1984).
The Examiner has held that the term “substantially”
renders the claims indefinite, in that the metes and bounds of
Appellants’ claimed invention are unknown. Looking at the
claims we find in claim 1, “substantially coaxially with said
aperture” and “a space substantially enclosing”; in claim 2,
“a footprint substantially coinciding with”; in claim 5,
“being substantially perpendicular to said axis”; and in claim
15, “substantially enclosing a space” and “substantially
preventing pressurization”. A review of the specification
reveals no standard of measure of degree for these
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recitations.
Appellants argue on pages 8 and 9 of the brief that “one
of ordinary skill would clearly understand the meaning of
mounting a speaker coaxially with the aperture so that the
direction of speaker cone movement is essentially along the
axis of the aperture” (emphasis added); that “it is easily
ascertainable whether a barrier substantially encloses the
rear of a speaker
by examining whether exteriorly generated noises are
excluded.” (emphasis added); that “it is easily ascertainable
whether an
air gap substantially prevents pressurization by examining its
effect upon the low frequency output of a speaker.” (emphasis
added); that “it is easily ascertainable whether a foot print
substantially coincides with the aperture by ascertaining
whether such transmission paths are excluded.” (emphasis
added); and that “it is easily ascertainable whether a flow
path is substantially perpendicular to the axis by examining
whether such transmission paths are excluded.” (emphasis
added).
Appellants’ specification is of no help in determining
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the “degree” of the terms claimed. The specification is
silent as to how much off axis mounting is tolerable; how one
would measure a reduction in exteriorly generated noises and
what minimum levels are acceptable (the thrust of the
invention itself); what low frequencies should be measured
relative to pressurization and how much degradation is
acceptable; and how, and to what degree, one would measure for
“excluded” transmission paths. We find the Appellants’
explanations of “examining” and “ascertaining” amount to so
much experimentation that it would be tantamount to
reinventing that which Appellants have claimed to invent. For
the above reasons, we will sustain the Examiner’s rejection
under 35 U.S.C. § 112, second paragraph.
Rejections under 35 U.S.C. § 102
To the degree that we can understand the metes and bounds
of Appellants’ claims, we have come to the following
conclusions.
It is axiomatic that anticipation of a claim under § 102
can be found only if the prior art reference discloses every
element of the claim. See In re King, 801 F.2d 1324, 1326,
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231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d
1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984). "Anticipation
is established only when a single prior art reference
discloses, expressly or under principles of inherency, each
and every element of a claimed invention." RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984), cert. dismissed, 468 U.S. 1228
(1984), citing Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983).
Appellants argue that Erickson compresses air while their
speaker “is substantially prevented from being pressurized”
(brief at page 10). We agree with the Examiner (answer,
bottom of page 10) that this is not a distinction over
Erickson because “substantially “ preventing pressure
inherently allows for “some” pressure in Appellants’
invention.
At page 11 of the brief Appellants argue that Erickson’s
enclosure is not a “sound absorbing material”, re claim 1.
Since, as the Examiner contends, all materials absorb some
sound, and further since Appellants disclose no degree of
Appeal No. 96-2871
Application 08/352,964
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sound absorption, we find that Erickson’s enclosure does meet
the claim language.
With regard to claim 2, Appellants argue that Erickson’s
cover does not have a foot print substantially coinciding with
the aperture, without further explanation. After viewing the
drawings of Erickson, we agree with the Examiner that cover 20
appears to have the claimed footprint of the aperture in panel
12.
Appellants urge at page 11 of the brief “[i]t [Erickson]
lacks the air gap with a flow path substantially perpendicular
to the axis recited in claim 5 (in fact, Erickson’s exhaust
hole 22 is coaxial with the speaker and aperture).” However,
claim
5 recites that at least a portion of said flow path be
substantially perpendicular to said axis. We find that arrows
A4 in Figure 6 of Erickson clearly show this limitation.
With regard to claim 6, Appellants argue that Erickson
lacks the acoustic labyrinth claimed. Noting Appellants’
labyrinth as 46 in their Figure 7, we find that the air flow
A4 (noted supra) of Erickson, traverses an acoustic labyrinth
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as claimed.
With respect to the “slot adapted to receive speaker
wires” of claim 8, we find this is met by Erickson at column
4, lines 56-58 as noted by the examiner.
Regarding claim 15, the arguments relative to claim 1
support Erickson’s anticipation of this claim.
For the above reasons we will sustain the Examiner’s
35 U.S.C. § 102 rejection of claims 1, 2, 5, 6, 8 and 15.
Likewise, since claims 3, 4 and 9 through 14 stand or fall
with the claim from which they depend, we will sustain the
Examiner’s rejections of these claims.
Finally, looking at the 35 U.S.C. § 102 rejection of
claim 7, we see the claimed air gap as located “between said
sound absorbing cover and said structural panel.” (emphasis
added). We note that the “air gap” recited in claim 1 (from
which claim 7 depends) is defined by the “first sound
absorbing barrier” (e.g. Erickson’s cover). Also, the claimed
air gap vents “said space [behind the speaker] to said
exterior”. As discussed with regard to claim 5 supra,
Appellants acknowledge the air gap as 22 in Erickson. Looking
at 22 in Erickson, we cannot find that the claim 7 limitations
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are met since 22 is not adjacent to the structural panel 12.
Thus, we will not sustain the 35 U.S.C.
§ 102 rejection of claim 7.
In view of the foregoing, the decision of the Examiner
rejecting claims 1 through 15 under 35 U.S.C. § 112, second
paragraph is affirmed; the decision of the Examiner rejecting
claims 1, 2, 3, 5, 6, 8, 9 and 12 through 15 under 35 U.S.C.
§ 102 is affirmed; the decision of the Examiner rejecting
claims 3, 4, 10 and 11 (which stand or fall with the claims
from which they depend) under 35 U.S.C. § 103 is affirmed;
however, the decision of the Examiner rejecting claim 7 under
35 U.S.C. § 102 is reversed.
Appeal No. 96-2871
Application 08/352,964
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
KENNETH W. HAIRSTON ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
STUART N. HECKER )
Administrative Patent Judge )

SNH/cam
Appeal No. 96-2871
Application 08/352,964
13
Mark L. Mollon
Ford Motor Company
One Parklane Blvd.
911 Parklane Towers East
Dearborn, MI 48126