Ex Parte Chung

Patent Trial and Appeal Board

Aug 27, 2013

11425923 (P.T.A.B. Aug. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHUL CHUNG
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Appeal 2011-004468
Application 11/425,923
Technology Center 2600
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Before ST. JOHN COURTENAY III, CAROLYN D. THOMAS, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004468
Application 11/425,923

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s invention is directed to a system that centrally processes
audio/video and other information signals to eliminate unnecessary
conversion of signals for communication between components, thereby
preserving the characteristics of the original source signals and reproducing
the purest possible source signals for delivery to end users, listeners or
viewers via an output device, such as a display or speakers. Spec. ¶ [0011].
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A speaker system, comprising:
a plurality of interchangeable speaker modules, wherein
each interchangeable speaker module comprises a speaker unit,
and
wherein the speaker unit is a dummy speaker comprising
a driving unit and no crossover logic.

THE REFERENCE and THE REJECTIONS
The Examiner rejected claims 1-3 under 35 U .S.C. § 102(b) as being
anticipated by Crawford (U.S. 5,000,286, Mar. 19, 1991). Ans. 3.
The Examiner rejected claims 4-9 under 35 U.S.C. § 103(a) as being
unpatentable over Crawford. Ans. 5.

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ISSUES
The issues are whether the Examiner erred in finding that:
1. Crawford teaches the limitation of “wherein the speaker unit is a
dummy speaker comprising a driving unit and no crossover logic”
as recited in claim 1; and
2. Crawford teaches the limitation of “a plurality of amplifiers
generating speaker driving currents driving the corresponding
plurality of interchangeable speaker modules” as recited in claim 4
without providing extrinsic evidence.

PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case
of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A
prima facie case is established when the party with the burden of proof
points to evidence that is sufficient, if uncontroverted, to entitle it to prevail
as a matter of law. See Saab Cars USA, Inc. v. United States, 434 F.3d 1359,
1369 (Fed. Cir. 2006).
It would not be appropriate for the Examiner to take official notice of
facts without citing a prior art reference where the facts asserted to be well
known are not capable of instant and unquestionable demonstration as being
well-known. For example, assertions of technical facts in the areas of
esoteric technology or specific knowledge of the prior art must always be
supported by citation to some reference work recognized as standard in the
pertinent art. See In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970). See also
MPEP § 2144.03(A).
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Application 11/425,923

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An assessment of basic knowledge and common sense that is not
based on any evidence in the record lacks substantial evidence support. In
re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2001).
If the applicant adequately traverses the Examiner’s assertion of
official notice, the Examiner must provide documentary evidence in the next
Office action if the rejection is to be maintained. See MPEP § 2144.03(C).

ANALYSIS
Claims 1-3
Claim 1 requires that the speaker unit be a dummy speaker with a
driving unit and no crossover logic.
The Examiner finds that Crawford discloses a speaker system 10 with
modules 12, 13, and 14 each having drivers. Ans. 4 (citing Crawford, col. 4,
l. 34- col. 5, l. 43 and Figs. 1 and 3). The Examiner also finds that the
high/mid/low signals that are created and provided by Crawford’s amplifier
22 but are not part of the speaker modules meet the “no crossover logic”
limitation of claim 1. Id.
Appellant admits that Crawford discloses a loudspeaker system with
speaker modules and driving units. App. Br. 7-8. But Appellant argues that
Crawford does not disclose or suggest a dummy speaker that is “not limited
by the fixed crossover frequency range logic generally contained in a typical
speaker.” App. Br. 8; Reply Br. 7 (emphasis added).
We agree with the Examiner (Ans. 10-12) that Appellant’s
contentions are not commensurate with the broader scope of claim 1. The
disputed limitation in claim 1 of “wherein the speaker unit is a dummy
speaker comprising a driving unit and no crossover logic” does not refer to a
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speaker that is not limited by the fixed crossover frequency range logic. We
decline Appellant’s invitation to read limitations from the Specification into
the claims.1
Because Appellant’s arguments urging patentability are grounded on
the erroneous premise that claim 1 requires a speaker that is “not limited by
the fixed crossover frequency range logic”, on this record, we are not
persuaded of Examiner error. Moreover, we agree with the Examiner’s
reading of the disputed claim limitations on the Crawford reference, as
explained on pages 8-14 of the Answer. For these reasons, we sustain the
Examiner’s anticipation rejection of representative claim 1, and claims 2-3
which fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
Claims 4-9
Claim 4 requires “a plurality of amplifiers generating speaker driving
currents driving the corresponding plurality of interchangeable speaker
modules”, (hereinafter the “plurality of amplifiers” feature).
The Examiner admits that Crawford fails to explicitly disclose the
plurality of amplifiers feature. Ans. 6. The Examiner took Official Notice
that it was “known in the art to use an amplifier for each of a low, mid or
high signals…in order to effectively amplify each of the corresponding
signals more efficiently.” Id. Appellant challenges the Examiner’s
explanation (Ans. 6-7) on the knowledge of one skilled in the art without

1 "During prosecution . . . the PTO gives claims their '‘broadest reasonable
interpretation.'" In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting
In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations
are not to be read into the claims from the specification." In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321
(Fed. Cir. 1989)).
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supporting evidence (App. Br. 10-11; Reply Br. 10-11). Appellant contends
that the Examiner has provided “no evidence that it was known to one of
ordinary skill in the art at the time of the invention that the proposed
arrangement [of the plurality of amplifiers feature] would ‘effectively
amplify each of the corresponding signals more efficiently.’” App. Br. 10-
11; see also Reply Br. 10.
Appellant thus asserts that absent a supporting reference that specifies
the plurality of amplifiers feature, the Examiner’s rejection of claim 4 cannot
stand (id.).
We are persuaded by Appellant’s arguments. The Examiner’s
reliance on knowledge of one skilled in the art without a supporting
reference to establish the plurality of amplifiers feature lacks substantial
evidence support. See Zurko, 258 F.3d at 1385; Continental Can Co. USA,
Inc. v. Monsanto Co, 948 F.2d 1264, 1268 (Fed. Cir. 1991); Ahlert, 424 F.2d
at 1091. This is because assertions of technical facts in the areas of esoteric
technology or specific knowledge of the prior art must always be supported
by citation to some reference work recognized as standard in the pertinent
art. See Ahlert, 424 F.2d at 1091. See also MPEP § 2144.03(A).
Furthermore, the Examiner should have provided such a reference in
response to Appellant’s traversal of the Examiner’s assertion of the inherent
facts, which amounts to official notice, but the Examiner did not. See MPEP
§ 2144.03(C).
Accordingly, the Examiner did not meet the burden of presenting a
prima facie case of unpatentability because the Examiner failed to provide
evidence that it is well known to use the plurality of multipliers feature as
claimed. See Oetiker, 977 F.2d at 1445.
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For the aforesaid reasons we will reverse the Examiner’s rejection of
claim 4, and claims 5-9 that are dependent upon claim 4.

DECISION
We affirm the Examiner’s § 102 rejection of claims 1-3.
We reverse the Examiner’s § 103 rejections of claims 4-9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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