Ex Parte Bose

Patent Trial and Appeal Board

Jun 26, 2017

13454722 (P.T.A.B. Jun. 26, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/454,722 04/24/2012 Amar G. Bose 02103-0613002 3175
26162 7590 06/28/2017
FISH & RICHARDSON PC (BOSE)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
MONIKANG, GEORGE C
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
06/28/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMAR G. BOSE
Appeal 2016-000149
Application 13/454,7221
Technology Center 2600
Before JUSTIN BUSCH, JAMES W. DEJMEK, and
PHILLIP A. BENNETT, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 6—21. Appellant has canceled claims 1—5. See Amendment filed
April 24, 2012. Oral arguments were heard on June 15, 2017. A transcript
of the hearing will be placed in the record in due course. We have
jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Bose Corporation as the real party in interest. App.
Br. 1.
Appeal 2016-000149
Application 13/454,722
STATEMENT OF THE CASE
Introduction
This application is a continuation of application number 10/844,700,
filed May 13, 2004. On August 5, 2009, Appellant filed a Notice of Appeal
to the Examiner’s rejection of the pending claims in the ’700 application and
an Oral Hearing was held on February 23, 2012. The Board issued a
Decision on Appeal affirming the Examiner’s rejections of all pending
claims on February 29, 2012. On April 24, 2012, Appellant filed the instant
application. Further in support of the pending claims, on July 13, 2012,
Appellant submitted declarations from Dr. Amar G. Bose (the listed
inventor) (“Bose Decl.”) and Mr. Robert P. Preston (“Preston Decl.”).
Appellant’s claimed invention is directed to a sound reproduction
apparatus comprising a base enclosure including left and right loudspeakers
and a radio. Spec. 1:11—12. In a disclosed embodiment, the base enclosure
does not include manually selectable controls (e.g., volume, play/pause, and
station tuning). Spec. 1:12—13, 17—18. Control of the base enclosure
operation is accomplished via a remote control unit comprising all the
manually selectable controls. Spec. 1:15—17.
Claim 6 is representative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics'.
6. A tabletop music system with a clock radio comprising:
a base enclosure comprising a top surface and a front surface
and free of manually selectable mechanical controls',
a source of audio electrical signals comprising a radio receiver
located within the base enclosure for receiving radio signals;
at least one speaker located within the base enclosure for
producing audio in response to the audio electrical signals;
2
Appeal 2016-000149
Application 13/454,722
a clock located on the front surface of the base enclosure for
displaying at least time;
an alarm configured to be set by a user to produce an audible
alarm at an alarm time;
a wireless remote control normally spaced from the base unit and
having controls that allow a user to select the functions of the tabletop
music system;
and a wireless receiver in the base enclosure for receiving control
signals that control functions of the tabletop music system from the
wireless remote control.
The Examiner’s Rejections
1. Claims 6—8, 10, and 12—20 stand rejected under 35 U.S.C.
§ 103(a) over Appellant’s Admitted Prior Art (Spec. 2:4—8, Fig. 1 (Prior Art)
(“AAPA”); Kirkpatrick (US 2002/0186618 Al; Dec. 12, 2002); and iRiver
SlimX iMP-550 CD/MP3 player with Ultraslim Design,
http://www.amazon.com (accessed 2003) (“iRiver”). Final Act. 3—6.
2. Claims 9 and 21 stand rejected under 35 U.S.C. § 103(a) over
AAPA, Kirkpatrick, iRiver, and Saito (US 5,898,137; Apr. 27, 1999). Final
Act. 7.
3. Claim 11 stands rejected under 35 U.S.C. § 103(a) over AAPA,
Kirkpatrick, iRiver, and Laraia (US 2005/0089179 Al; Apr. 28, 2005).
Final Act. 7—8.
Issues on Appeal
1. Does the Examiner’s proposed modification of removing the
mechanically selectable controls from the base enclosure disclosed by
AAPA, as suggested by iRiver, destroy the intended purpose of AAPA?
3
Appeal 2016-000149
Application 13/454,722
2. Does the Examiner rely on impermissible hindsight in rejecting,
inter alia, claim 6 over the proposed combined teachings and suggestions of
the cited references?
3. Do the declarations of Dr. Bose and Mr. Parker set forth
secondary considerations sufficient to rebut the Examiner’s conclusion of
obviousness?
ANALYSIS2
In rejecting claim 6, the Examiner finds, inter alia, the combined
teachings of AAPA and iRiver teach “a base enclosure comprising a top
surface and a front surface and free of manually selectable mechanical
controls.” Final Act. 4—5. Figure 1 from AAPA is illustrative and is
reproduced below:
2 Throughout this Decision we have considered the Appeal Brief, filed
April 13, 2015 (“App. Br.”); the Reply Brief, filed September 24, 2015
(“Reply Br.”); the Examiner’s Answer, mailed on July 31, 2015 (“Ans.”);
the Final Office Action, mailed August 28, 2014 (“Final Act.”), from which
this Appeal is taken; and Appellant’s arguments made during the Oral
Hearing held June 15, 2017.
4
Appeal 2016-000149
Application 13/454,722
FIG. 1
Figure 1 from AAPA illustrates a perspective view of the Bose® Wave®
radio/CD base enclosure (11) and remote control (12). Spec. 2:4—8, Fig. 1.
“There are a number of manually selectable controls 11C on the top panel
1 IT that are duplicated on remote control 12.” Spec. 2:7—8 (emphasis
added). The Examiner finds iRiver teaches “a media device with a CD
player and no controls thereon, with a remote controller used to control all
the functions of the media player.” Final Act. 4—5. The Examiner further
finds it would have been obvious to modify the base enclosure (11) as shown
in Figure 1 of AAPA to remove the manually selectable mechanical
5
Appeal 2016-000149
Application 13/454,722
controls, as taught by iRiver “for the purpose of making the system have a
more appealing appearance and thus more dynamic.” Final Act. 5.
Appellant challenges the Examiner’s proposed combination and
asserts that removing the mechanically selectable (i.e., actuatable) controls
on the base enclosure “would destroy the function of the primary reference
for its intended purpose.” App. Br. 5—6 (citing Ex parte Sternau, 155 USPQ
733, 735 (BPAI 1967)).
We are unpersuaded of Examiner error. As set forth in AAPA (i.e.,
the Specification), the manually selectable controls on the base enclosure of
AAPA are duplicated on the remote control unit. Spec. 2:7—8. Appellant
does not dispute AAPA includes the remote control. Reply Br. 2 (“We have
never contended that the [AAPA] did not disclose a remote control with the
control buttons.”). Contrary to Appellant’s assertion, the Examiner’s
proposed modification does not destroy the function of AAPA for its
intended purpose, but rather merely eliminates a largely duplicative
interface. In other words, the control functionality remains intact because
such functions would be controlled by the buttons on the remote control.
Appellant additionally asserts the Examiner “is improperly using the
claims being rejected as a template or blueprint for modifying the primary
reference [(i.e., AAPA)] to eliminate the mechanically actuable controls on
the base enclosure.” Reply Br. 2; App. Br. 6—8.
“Obviousness requires more than a mere showing that the prior art
includes separate references covering each separate limitation in a claim
under examination.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352,
1360 (Fed. Cir. 2011). It is improper to base a conclusion of obviousness
upon facts gleaned only through hindsight. To draw on hindsight knowledge
6
Appeal 2016-000149
Application 13/454,722
of the patented invention, when the prior art does not contain or suggest that
knowledge, is to use the invention as a template for its own reconstruction—
an illogical and inappropriate process by which to determine patentability.
Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996)
(citing W.L. Gore & Assoc, v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir.
1983)). “The invention must be viewed not after the blueprint has been
drawn by the inventor, but as it would have been perceived in the state of the
art that existed at the time the invention was made.” Sensonics, 81 F.3d at
1570 (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed.
Cir. 1985)). Obviousness requires the additional showing that a person of
ordinary skill at the time of the invention would have selected and combined
those prior art elements in the normal course of research and development to
yield the claimed invention. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007) (describing that a person of ordinary skill possesses “ordinary
creativity, [and is] not an automaton”).
The Examiner relies on iRiver to teach a sound reproduction apparatus
(SRA) that is controlled solely by a remote control, with no control buttons
on the SRA itself. Final Act. 4—5; Ans. 8. We agree with the Examiner’s
conclusion that one of ordinary skill in the art would have found it obvious
to eliminate the duplicate control buttons on the base enclosure (i.e., sound
reproduction apparatus) of AAPA, leaving one set of control buttons only on
the remote control, as suggested by iRiver. Final Act. 4—5; Ans. 8.
Appellant also argues the declarations of Dr. Bose and Mr. Parker
were not of record in the parent application (i.e., the ’700 application) and,
when considered, evidence the necessary conditions for patentability. App.
Br. 3—5, 8; Reply Br. 1. Specifically, Appellant urges “[i]f an inventor of
7
Appeal 2016-000149
Application 13/454,722
extraordinary skill in the art like Dr. Bose makes the invention, and persons
of extraordinary skill in the art opposed adoption of the invention, it is
difficult to conceive of a stronger case for meeting the conditions of
patentability.” App. Br. 8.
In his declaration, Dr. Bose states his proposal to remove all of the
manually selectable controls from the base enclosure of the existing Wave®
music system was met with unanimous disagreement from Bose engineers
and marketing personnel. Bose Deck 13. Mr. Parker, a Bose Fellow,3
expressed his concerns to Dr. Bose with the proposed removal of all
manually selectable controls from the base enclosure. Parker Deck 19. Dr.
Bose eventually prevailed with his proposal and the Wave® music system
“has been purchased by millions of customers with no manually-selectable
controls on the base unit.” Bose Deck 13.
As an initial matter, although Dr. Bose and Mr. Parker may possess
extraordinary skill in the art, contrary to Appellant’s assertion, the notoriety
of an inventor is not an element to establish patentability.
Notwithstanding what the teachings of the prior art would have
suggested to an ordinarily-skilled artisan at the time of the invention, the
totality of the evidence submitted, including objective evidence of
nonobviousness, may lead to a conclusion that the claimed invention would
not have been obvious to one with ordinary skill in the art. In re Piasecki,
745 F.2d 1468, 1471—72 (Fed. Cir. 1984). Objective evidence of
nonobviousness may include solving a long-felt but unsolved need, failure of
others, unexpected results, commercial success, copying, licensing, industry
3 A Bose Fellow is the highest engineering position at Bose Corporation.
Parker Deck 11.
8
Appeal 2016-000149
Application 13/454,722
praise, and industry skepticism. Graham v. Deere, 383 U.S. 1, 17 (1966);
Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc.,
699 F.3d 1340, 1347, 1349-55 (Fed. Cir. 2012).
We have broad discretion as to the weight to give to declarations
offered in the course of prosecution. In re Am. Acad. ofSci. Tech. Ctr., 367
F.3d 1359, 1368 (Fed. Cir. 2004). To accord substantial weight to objective
evidence requires the finding of a nexus between the evidence and the merits
of the claimed invention. In re GPACInc., 57 F.3d 1573, 1580 (Fed. Cir.
1995); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“success is
relevant in the obviousness context only if there is proof that the sales were a
direct result of the unique characteristics of the claimed invention.”). The
burden of showing that there is a nexus lies with the applicant. Demaco
Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir.
1988); see also In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994).
Here, Appellant has not alleged a nexus between the proffered
objective evidence and the claimed invention, let alone sufficiently
demonstrated such a nexus. In particular, Appellant fails to explain in detail
the connection between the “millions of customers” who purchased the
Wave® music system and the absence of all manually selectable controls on
the top and face portions of the base enclosure. See Huang, 100 F.3d at 140
(requiring proof that sales were a “direct result of the unique characteristics
of the claimed invention”). Further, Appellant has not provided sufficient
evidence to demonstrate the commercial success of the invention, regardless
of whether any potential success was a direct result of the unique
characteristics of the invention, and not a result of economic and commercial
factors unrelated to the subject matter of claim 6. In re Applied Materials,
9
Appeal 2016-000149
Application 13/454,722
Inc., 692 F.3d 1289, 1299—1300 (Fed. Cir. 2012). Accordingly, as
mentioned above, failure to establish a nexus results in attribution of very
little weight to the objective evidence. Further, assuming arguendo a nexus
were present, as discussed infra, we find the objective evidence does not
outweigh the combined teachings of AAPA, iRiver, and Kirkpatrick and the
Examiner’s conclusion of obviousness.
The declarations of Dr. Bose and Mr. Parker are directed to secondary
considerations of commercial success and industry skepticism. We do not
find the declarations of Dr. Bose and Mr. Parker sufficiently persuasive as to
commercial success. In particular, the assertion of millions of units being
sold is not convincing because absolute sales numbers, by themselves
without relevant market share data, do not establish commercial success.
See, e.g., Huang, 100 F.3d at 140. Appellant provides no information
regarding sales volume or market share as compared to providers of
competing products. Appellant does not even allege an increase in its own
sales over the prior system, whose only apparent difference is that it
included manually selectable controls located on the base enclosure.
Additionally, the declarations of Dr. Bose and Mr. Parker do not
persuasively establish industry skepticism to removing ah manually
selectable controls from the base enclosure. Although there may have been
skepticism internal to the Bose Corporation, the availability at that time of,
for instance, the iRiver device lacking manually selectable controls is
evidence indicating such skepticism was not shared industry-wide.
Having fully considered Appellant’s submitted declarations, we
determine the proffered evidence of secondary considerations is entitled to
little probative weight. Accordingly, Appellant’s arguments directed to
10
Appeal 2016-000149
Application 13/454,722
secondary considerations do not outweigh the Examiner’s well-reasoned
conclusion of obviousness.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 6. For similar reasons, we also sustain the Examiner’s rejection of
independent claims 15 and 19, which recite similar limitations and were not
argued separately. See App. Br. passim. Further, we sustain the Examiner’s
rejections of claims 7—14, 16—18, and 20-21, which depend therefrom and
were not argued separately. See App. Br. passim.
DECISION
We affirm the Examiner’s decision rejecting claims 6—21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
11