Ex Parte Boesen

Patent Trial and Appeal Board

Jan 31, 2019

14927388 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/927,388 10/29/2015
133690 7590 02/04/2019
Goodhue, Coleman & Owens, P.C.
12951 University Ave
Suite 201
Clive, IA 50325
FIRST NAMED INVENTOR
Peter Vincent Boesen
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.
BRAGI GmbH-P0052Cl 1154
EXAMINER
ETESAM, AMIR HOS SEIN
ART UNIT PAPER NUMBER
2655
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
docketing@goodhue.com
eofficeaction@appcoll.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER VINCENT BOESEN 1
Appeal 2018-002118
Application 14/927 ,3 88
Technology Center 2600
Before DAVID M. KOHUT, ERIC B. CHEN, and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 4--16, and 20, which constitute all
claims pending in the application. Claims 2, 3, and 17-19 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies himself, Peter Vincent Boesen, as the real party in
interest. App. Br. 3.
Appeal 2018-002118
Application 14/927,388
STATEMENT OF THE CASE
The Invention
Appellant's invention relates to a wireless earpiece for short-range
communication with a personal electronic device, such as a
cellphone. Spec. 1-2. The invention provides "multi-channel audio" using
the earpiece. Id. at 2. The invention also provides various features for
added comfort, audio quality, and other purposes. Id. at 2-5.
Claims 1 and 16, the sole independent claims, are illustrative of the
invention and the subject matter at issue in the appeal, and are reproduced
below.
1. A system for control of electronic devices, the system
compnsmg:
an earpiece comprising an ear piece housing, a short
range transceiver disposed within the ear piece housing, a
speaker, an air conduction microphone, a bone conduction
microphone, and an inertial sensor;
a network node comprising a short range transceiver, the
short range transceiver of the network node in operative
communication with the earpiece through the short range
transceiver of the ear piece.
16. A system for control of electronic devices, the system
compnsmg:
a set of earpieces comprising a left ear piece and a right
ear piece, wherein each of left ear piece and the right ear piece
comprise an ear piece housing and a short range transceiver
disposed within the ear piece housing;
a network node comprising a short range transceiver, the
short range transceiver of the network node in operative
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Application 14/927,388
communication with the set of earpieces through the short range
transceiver of the left ear piece or the right ear piece;
wherein each of the left ear piece and the right ear piece
comprises an inertial sensor within the ear piece housing;
wherein each of the left ear piece and the right ear piece
comprises a bone conduction microphone and an air conduction
sensor;
wherein the set of earpieces are stereophonic.
App. Br. 19--21 (Claims Appendix).
The Rejections on Appeal
Claims 1, 4--16, and 20 stand rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1-36 of U.S. Patent
No. 8,526,646. Final Act. 4--5. 2
Claims 1, 4--16, and 20 stand provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1-23 of co-
pending App. No. 14/815,576. Final Act. 5.
Claims 1, 4--16, and 20 stand provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1-22 of co-
pending App. No. 14/883,600. Id.
Claims 1, 4--16, and 20 stand provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1-20 of co-
pending App. No. 14/883,593. Id.
2 The statements of rejection cite claims 1-20, but claims 2, 3, and 17-19 are
canceled. Final Act. 4--5.
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Application 14/927,388
Claims 1, 4--10, 13, 16, and 20 stand rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Tillgren et al.
(US 6,339,706 Bl; Jan. 15, 2002) ("Tillgren"), Freeman et al.
(US 2008/0189110 Al; Aug. 7, 2008) ("Freeman"), Wagner
(US 7,101,287 Bl; Sept. 5, 2006), and Ono (US 5,295,193; Mar. 15,
1994). Final Act. 6-10.
Claims 11, 12, 14, and 15 stand rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Tillgren, Freeman, Wagner,
Ono, and Cole et al. (US 2010/0063931 Al; Mar. 11, 2010) ("Cole"). Final
Act. 10-11. 3
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments presented in this appeal. Arguments which Appellant could have
made but did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 4I.37(c)(l)(iv). On the record before us, we are not persuaded
the Examiner erred. We adopt as our own the findings and reasons set forth
in the rejections from which the appeal is taken and in the Examiner's
Answer, and provide the following discussion for highlighting and emphasis.
Double Patenting Rejections of Claims 1, 4-16, and 20
Appellant does not, in the Appeal Brief, contest any of the double
patenting rejections or even indicate they are being appealed. App. Br. 9.
Appellant does attempt to argue the double patenting rejections in the Reply
3 In the Final Action, the Examiner does not expressly cite Wagner and Ono
as to claims 11, 12, 14, and 15 ( all of which depend from claim 1 ), see Final
Act. 10, but they are part of the rejection of base claim 1.
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Brief. Reply Br. 11-16; App. Br. 9. Any argument raised in the reply brief,
however, "which was not raised in the appeal brief, or is not responsive to an
argument raised in the examiner's answer, ... will not be considered by the
Board for purposes of the present appeal, unless good cause is shown."
37 C.F.R. § 4I.41(b)(2). Appellant's argument in the Reply Brief is not
responsive to the Answer ( which, because Appellant did not raise the issue,
also did not address the double patenting rejections). Nor does Appellant
offer good cause, or any reason, for us to consider the belatedly raised
arguments. Reply Br. 12-18. Appellant's arguments, therefore, are waived
as untimely and we do not consider them. Further, the record does not
indicate any filing of a terminal disclaimer.
Accordingly, we sustain each of the double patenting rejections of
claims 1, 4--16, and 20.
Obviousness Rejection of Claims 1, 4-10, 13, 16, and 20
over Tillgren, Freeman, Wagner, and Ono
Appellant argues the Examiner erred for each of the following
reasons: Tillgren does not teach a method for inputting a command to an
electronic device nor receiving audio information at a microphone of an
earpiece (App. Br. 10-13); Tillgren does not teach a network node in
operative communication with each earpiece of a set of earpieces (App. Br.
13-14); the Examiner's reliance on Official Notice was improper (App. Br.
14--16); Tillgren does not disclose an earpiece (Reply Br. 23-24); and the
Examiner's combination of the references is improper (Reply Br. 24--29).
We address these arguments in tum.
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Appellant's argument that "Tillgren does not teach a method for
inputting a command to an electronic device nor receiving audio information
at a microphone of an earpiece" is not commensurate with the scope of the
claims. App. Br. 10-13 (emphasis omitted). Independent claims 1 and 16,
which are directed to a system and not a method, do not recite "inputting a
command to an electronic device," or "receiving audio information at a
microphone of an earpiece." See App. Br. 19--21. Moreover, Appellant's
argument does not substantively address, and therefore reveals no reversible
error in, the Examiner's specific findings regarding the combination of
Tillgren, Freeman, Wagner, and Ono. See id.; Final Act. 6-10.
Appellant's next argument concerns independent claim 16, which
recites in pertinent part, a "network node in operative communication with
the set of earpieces." App. Br. 13-14, 20-21. Appellant argues the
Examiner erred in finding Tillgren teaches this limitation, because Tillgren
does not teach "three electronic devices with the ability to communicate with
one another." App. Br. 13-14. The implication of Appellant's argument is
that the claimed earpieces are in communication with each other. Id. Again,
however, Appellant's argument is not commensurate with the scope of the
claim. As the Examiner explains, "[ t ]here is no indication in the
claim language that there is a separate communication between the two
earpieces making a third communication line." Ans. 3. We agree.
Accordingly, we are not persuaded of Examiner error.
Appellant next contends, again with respect to claim 16, the Examiner
improperly relied on Official Notice. App. Br. 14--16. In the Final Action,
the Examiner took Official Notice that "wireless stereophonic hearing aids
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and earphones [ we ]re well known and widely used in the art and it would
have been obvious ... to utilize a stereophonic set of earpieces for the
device disclosed [in] Tillgren." Final Act. 10 ( emphasis added). The
Examiner further cited Mellone (US 2004/0042629 Al; Mar. 4, 2004) in
support of the Official Notice. Final Act. 2; Ans. 3--4; see App. Br. 14--16.
On appeal, Appellant now contends Mellone does not show the elements of
claim 16 were available for earbuds at the time of Appellant's earliest
priority date (May 10, 2004). App. Br. 15-16; see also Spec. 1, 11. 9-11
(priority applications). Appellant's argument does not persuade us of error
because Appellant fails to address the Official Notice finding, namely, that it
was well known in the art that stereo wireless communication was available
for headset earpieces such as those disclosed in Tillgren. Final Act. 10
( official notice quoted supra). Moreover, the record includes evidence
supporting the Official Notice. For example, Mellone discloses that stereo
wireless communication was well known in earbuds (which are earpieces)
before Appellant's earliest priority date. 4 See supra.
Appellant next argues that the broadest reasonable interpretation of an
"earpiece" ( as claimed) does not encompass a headset earphone worn over
4 To the extent Appellant argues Mellone is "insufficient" because it is not
"35 U.S.C. § I02(b)-type prior art" (App. Br. 16), we are not persuaded. As
Appellant acknowledges, Mellone's publication date preceded Appellant's
priority date. Id.; see also Lockheed Aircraft Corp. v. United States, 553
F.2d 69, 83 (Ct. Cl. 1977) ("[P]rior art is prior art, and is presumptively
known to the hypothetical man skilled in the art, even [if] its teachings are
not generally known in the industry to which it relates."). Moreover, as
discussed above, Appellant's arguments do not address the Examiner's
findings related to the Official Notice.
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the ear. Reply Br. 23-24. This argument was not raised in Appellant's
Opening Brief and is not responsive to findings in the Answer, nor does
Appellant attempt to explain any good cause for belatedly raising the
argument. This argument, therefore, is waived as untimely. See supra 5---6;
37 C.F.R. § 41.41(b)(2). Even if our reviewing court were to find the
argument was timely raised, we would not be persuaded of error. The
Examiner finds "earpiece" encompasses all forms of a speaker fit to an ear.
Final Act. 2 ( emphasis omitted) ("Earpiece is defined as: a part of an
instrument ( as a telephone or stethoscope) that is placed against or inserted
into the outer opening of the ear; especially: EARPHONE"). 5 Appellant
does not address the Examiner's finding, and presents no evidence that the
meaning of "earpiece" excludes a headset earpiece (e.g., earphone) worn
over the ear.
Finally, Appellant argues one of ordinary skill would not have
combined the references. Reply Br. 24--28. Appellant, however, does not
substantively contest the Examiner's articulated rationale for combining the
references, which we find supported on this record. Final Act. 7-
8. Specifically, as the Examiner finds, because Tillgren's and Freeman's
devices permit voice commands, it would have been obvious to add
5 The cited definition is: "1 : the part of an instrument (such as a telephone,
stethoscope, or hearing aid) that is placed against or inserted into the outer
opening of the ear[;] especially: EARPHONE." Merriam Webster
Dictionary, https://www.merriam-webster.com/dictionary/earpiece (last
visited Dec. 20, 2018). The included "especially : EARPHONE" is defined
as "a device that converts electrical energy into sound waves and is worn
over or inserted into the ear." Id., https://www.merriam-
webster.com/dictionary/earphone (last visited Dec. 20, 2018).
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Freeman's voice purchasing to Tillgren's device. Final Act. 7; see also KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007) (obvious to apply "a
known technique to a piece of prior art ready for the improvement").
Further, as the Examiner finds, because Wagner's and Ono's devices are
earpieces, it would have been obvious to modify Tillgren's headset by
adding Wagner's inertial sensor for its disclosed function of inputting
commands and Ono's bone conduction microphone for its disclosed function
of capturing voice inputs. Final Act. 8; DyStar Textilfarben GmbH & Co.
Deutsch/and KG v. CH Patrick Co., 464 F.3d 1356, 1365 (Fed. Cir. 2006)
(rationale to combine references also may be found within the references
themselves). Appellant does not meaningfully contest these rationales, or
show the features are added for reasons other than their established
functions. KSR, 550 U.S. at 417 (generally obvious to "simply arrange[] old
elements with each performing the same function").
Obviousness Rejection of Claims 11, 12, 14, and 15
over Tillgren, Freeman, Wagner, Ono, and Cole
Appellant argues the Examiner erred in rejecting dependent claims 11,
12, 14, and 15 for the same reasons as claim 1. Reply Br. 29. Because we
are not persuaded of error regarding claim 1, Appellant's arguments for
claims 11, 12, 14, and 15 are also not persuasive. Accordingly, we sustain
the obviousness rejection of claims 11, 12, 14, and 15.
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DECISION
We affirm the Examiner's decision rejecting claims 1, 4--16, and 20.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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