Ex Parte Folio

Board of Patent Appeals and Interferences

Jun 26, 2008

09896894 (B.P.A.I. Jun. 26, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD J. FOLIO
____________

Appeal 2007-3806
Application 09/896,8941
Technology Center 2600
____________

Decided: June 26, 2008
____________

Before ROBERT E. NAPPI, SCOTT R. BOALICK,
and CARLA M. KRIVAK, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

1 Application filed June 29, 2001. The real party in interest is Harris
Corporation.
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DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-64, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant's invention relates to a supplemental audio content system
for providing supplemental audio content to movie patrons in a cinema of a
cineplex. (Spec. Abstract.)

Claim 1 is exemplary:
1. A supplemental audio content system for providing
supplemental audio content to at least one movie patron during
playing of a motion picture film and associated soundtrack in a
cinema of cineplex comprising a plurality of individual
cinemas, the supplemental audio content system comprising:

a supplemental audio content player for playing
supplemental audio content during playing of the motion
picture and associated soundtrack;

a wireless transmitter connected to said supplemental
audio content player;

at least one earphone to be worn by the at least one
movie patron; and

at least one wireless receiver connected to said at least
one earphone and cooperating with said wireless transmitter to
deliver supplemental audio content to the at least one movie
patron;

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said wireless transmitter and wireless receiver having
operating characteristics to avoid interference with respective
supplemental audio content systems for other cinemas of the
cineplex.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Karamon US 5,055,939 Oct. 8, 1991
Denenberg US 5,375,174 Dec. 20, 1994
Oltman US 5,822,440 Oct. 13, 1998

Claims 1-13, 15-27, 29-43, 51-61, and 63-64 stand rejected under 35
U.S.C. § 103(a) as being obvious over Karamon and Oltman.2

Claims 14, 28, 44-50, and 62 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Karamon, Oltman, and Denenberg.3

Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this decision. Arguments that Appellant did not make in the Briefs have not

2 The Brief refers in error to claims 1-43 and 51-64 as being rejected over
Karamon and Oltman. (App. Br. 6.)

3 The Brief refers in error to claims 44-50 as the only claims being rejected
over Karamon, Oltman, and Denenberg. (App. Br. 6.)
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been considered and are deemed to be waived. See 37 C.F.R. § 1.192(c)(7)
(2003).4

ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
Karamon and Oltman teach or suggest a wireless transmitter connected to a
supplemental audio content player, whether Karamon and Oltman teach or
suggest a wireless receiver connected to an earphone that has operating
characteristics to avoid interference with respective supplemental audio
content systems for other cinemas in a cineplex, and on whether the
teachings of Karamon and Oltman properly may be combined.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

1. Karamon describes a system that correlates an audio message of an
auxiliary sound track with an audio message from a sound track of a
motion picture film. (Abstract; col. 1, ll. 16-27; col. 3, ll. 1-11.) The

4 We cite to the rule that was in effect at the time the instant Appeal Brief
was filed on June 2, 2003. The present rule is found at 37 C.F.R.
§ 41.37(c)(1)(vii)(2007). Except as will be noted in this opinion, Appellant
has not presented any substantive arguments directed separately to the
patentability of the dependent claims or related claims in each group. In the
absence of a separate argument with respect to those claims, they stand or
fall with the representative independent claim. In re McDaniel, 293 F.3d
1379, 1383 (Fed. Cir. 2002); see also 37 C.F.R. § 1.192(c)(7) (2003).
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auxiliary source contains multiple language channels or "translation
sound tracks." (Abstract; col. 1, ll. 34-41; col. 3, ll. 49-56.) In the
system of Karamon,
each of the translation sound tracks is available to be
selected for listening by a cinema audience or by
segments of the cinema audience sitting in pre-selected
seating areas having listening devices assigned to
respective languages (or selected by an individual viewer
in a theater or at home desiring to hear a particular
language furnished by a particular one of the available
synchronized translation sound tracks).

(Col. 1, ll. 48-55.) The system of Karamon can be applied to
monaural sound signals and also to multi-channel "surround" sound
signals. (Col. 6, ll. 26-30.)

2. Oltman describes an audio system with a wireless headphone that
includes a transmitter and a receiver. (Abstract; col. 1, ll. 11-17;
col. 3, ll. 32-37.) The transmitter broadcasts a Direct Sequence
Spread Spectrum (DSSS) CDMA signal on a number of separate code
channels. (Abstract; col. 3, ll. 38-41.) Oltman teaches that "it will be
understood by those having skill in the art that the number of channels
may be chosen depending on the size of the particular venue to be
serviced and the range of accuracy sought." (Col. 8, ll. 24-28.) Using
the system of Oltman, individuals at a concert, show, or speaking
engagement may roam within a predetermined area. (Col. 1, ll. 14-17,
39-42.)

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3. Denenberg describes a wireless headset that may use either radio-
frequency (RF) or infrared (IR) communication technology. (Col. 1,
ll. 46-49; col. 2, ll. 61-63.)

PRINCIPLES OF LAW
All timely filed evidence and properly presented arguments are
considered by the Board in resolving an obviousness issue on appeal. See In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. Id. at 1472.
When that burden is met, the burden then shifts to the Applicant to rebut.
Id.; see also In re Harris, 409 F.3d 1339, 1343-44 (Fed. Cir. 2005) (finding
rebuttal evidence unpersuasive). If the Applicant produces rebuttal evidence
of adequate weight, the prima facie case of unpatentability is dissipated. In
re Piasecki, 745 F.2d at 1472. Thereafter, patentability is determined in
view of the entire record. Id. However, on appeal to the Board it is the
Appellant's burden to establish that the Examiner did not sustain the
necessary burden and to show that the Examiner erred. See In re Kahn, 441
F.3d 977, 985-86 (Fed. Cir. 2006) ("On appeal to the Board, an applicant can
overcome a rejection [for obviousness] by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.") (quoting In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998)).
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
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invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).
In KSR, the Supreme Court reaffirmed that "[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." Id. at 1739. The Court
explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 1740. The Court also explained that:
[o]ften, it will be necessary . . . to look to interrelated teachings
of multiple patents; the effects of demands known to the design
community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed
by the patent at issue.

Id. at 1740-41.
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d at 988. "To facilitate review, this
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analysis should be made explicit." KSR, 127 S. Ct. at 1741. However, "the
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ."
Id.
The Supreme Court noted that "[i]n many fields it may be that there is
little discussion of obvious techniques or combinations, and it often may be
the case that market demand, rather than scientific literature, will drive
design trends." KSR, 127 S. Ct. at 1741. "Under the correct analysis, any
need or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed." Id. at 1742. The Court also noted that "[c]ommon
sense teaches . . . that familiar items may have obvious uses beyond their
primary purposes, and in many cases a person of ordinary skill will be able
to fit the teachings of multiple patents together like pieces of a puzzle." Id.
at 1742. "A person of ordinary skill is also a person of ordinary creativity,
not an automaton." Id.
During examination of a patent application, a claim is given its
broadest reasonable construction consistent with the specification. In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). "[T]he words of a claim 'are
generally given their ordinary and customary meaning.'" Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). The "ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application." Id. at 1313.
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ANALYSIS
Appellant contends that the Examiner erred in rejecting claims 1-64.
Reviewing the record before us, we do not agree. In particular, we find that
the Appellant has not shown that the Examiner failed to make a prima facie
showing of obviousness with respect to claims 1-64. Appellant failed to
meet the burden of overcoming that prima facie showing.

§ 103 Rejection - Karamon/Oltman
We select claim 1 as representative.5 Appellant argues that Karamon
and Oltman fail to teach or suggest a wireless transmitter connected to a
supplemental audio content player and a wireless receiver connected to an
earphone worn by a movie patron that has operating characteristics to avoid
interference with respective supplemental audio content systems for other
cinemas of a cineplex (App. Br. 7-9; Reply Br. 2-5), and further argues that
there is no proper motivation to combine the teachings of Karamon and
Oltman, that Oltman teaches away from Karamon and that the Examiner
used impermissible hindsight reconstruction (App. Br. 10-11). We do not
agree.
The Examiner found that Karamon discloses every limitation in
claim 1 except for wireless transmission of audio through the use of a
wireless transmitter and receiver. (Ans. 4, 19; see also FF 1.) Although
Karamon discloses that audience members may have listening devices,
Karamon does not further describe the nature of these devices as being either
wired or wireless. (FF 1.) The Examiner found that wireless headphones
were well known in that art and that Oltman discloses a wireless headphone

5 See 37 C.F.R. § 1.192(c)(7) (2003).
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system with a transmitter and receiver in the same environment. (Ans. 4, 19,
22-23; see also FF 2.) Thus, the combination of Karamon and Oltman
teaches or suggests a wireless transmitter connected to a supplemental audio
content player and a wireless receiver connected to an earphone worn by a
movie patron, as claimed.
The Examiner reasoned that it would have been obvious to modify the
system of Karamon with a wireless headphone system, such as that disclosed
by Oltman. (Ans. 4, 19, 22-23.) We agree with the Examiner's reasoning,
and find no improper hindsight reconstruction, teaching away, or improper
motivation used to combine the references. Indeed, the claimed invention is
nothing more than the combination of familiar elements according to known
methods, with no unpredictable results. See KSR, 127 S. Ct. at 1739. The
Appellant's arguments concerning the method of operation of Oltman being
incompatible with Karamon (App. Br. 10-11) are not convincing, because,
as the Examiner explained (Ans. 19-23), Oltman is not being bodily
incorporated into Karamon but rather is being used to show that wireless
communications systems were well known in the art and the application of a
wireless communication system in Karamon would have been obvious.
Appellant further argues that Oltman does not disclose avoiding
interference with respective supplemental audio content systems for other
cinemas of a cineplex, as claimed. (Reply Br. 2-4.) In particular, Appellant
contends that the system of Oltman would not work in a cineplex having
multiple cinemas because the system of Oltman operates by selecting a
DSSS channel based upon a radial distance of the wireless headphone from
the front of the main loudspeaker system in a single venue. (Reply Br. 2-4.)
Therefore, according to Appellant, interference would be caused when there
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are multiple front loudspeaker systems in multiple venues. (Reply Br. 4.)
We do not agree.
Initially, we note that the plain language of the claim does not specify
the nature of any other supplement audio systems in any other cinemas of
the cineplex. In other words, there is no requirement that other supplemental
audio content systems for other cinemas be wireless systems, or that they
have any other particular characteristics, such as using DSSS. Furthermore,
the Specification teaches that:
The spread spectrum may be either direct sequence [i.e., DSSS]
or frequency hopping as will be appreciated by those skilled in
the art. As will also be appreciated by those skilled in the art,
multiple such spread spectrum communications links can be
operated adjacent one another . . . without causing undesirable
mutual interference.

(Spec. 17:6-13 (emphasis added).) In other words, an interpretation that a
wireless system using DSSS, such as that disclosed by Oltman, has
operating characteristics that avoid interference with other systems is not
inconsistent with the Specification. Moreover, Oltman teaches that those
skilled in the art know how to select frequency channels based upon the
particular venue (FF 2) and, therefore, suggests that those skilled in the art
would know how to select frequency channels to avoid interference with
other similar systems operating in close proximity. Indeed, it would have
been common sense to select frequency channels of one supplemental audio
system to avoid interference with other supplemental audio systems in close
proximity.
Accordingly, we conclude that Appellant has not shown that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a). Claims 2-13,
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15-27, 29-43, 51-61, and 63-64 were not argued separately, and fall together
with claim 1.

§ 103 Rejection - Karamon/Oltman/Denenberg
We select claim 44 as representative.6 Appellant argues that
Denenberg, which was cited by the Examiner for the teaching of an infrared
wireless headset (Ans. 16; see also FF 3), does not cure the alleged
deficiencies of Karamon and Oltman discussed with respect to claim 1.
(App. Br. 13.) We do not agree for the reasons previously discussed with
respect to claim 1.
Accordingly, we conclude that Appellant has not shown that the
Examiner erred in rejecting claim 44 under 35 U.S.C. § 103(a). Claims 14,
28, 45-50, and 62 were not argued separately and fall together with claim 44.

CONCLUSION OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-64 for obviousness under 35 U.S.C. § 103.

DECISION
The rejection of claims 1-64 for obviousness under 35 U.S.C. § 103 is
affirmed.

6 See 37 C.F.R. § 1.192(c)(7) (2003).
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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

KIS

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