Ex Parte Graff et al

Patent Trial and Appeal Board

Jan 19, 2018

13909071 (P.T.A.B. Jan. 19, 2018)

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.
13/909,071 06/03/2013 Allen T. Graff H-13-144-US 3578
71016 7590
Bose Corporation
Patent Group
Mountain Road, MS 3B1
Framingham, MA 01701
EXAMINER
KURR, JASON R
ART UNIT PAPER NUMBER
2654
NOTIFICATION DATE DELIVERY MODE
01/23/2018 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):
docket @ bose. com
designs @ bose. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALLEN T. GRAFF, ROMAN N. LITOVSKY, BOJAN RIP,
JASON D. SILVER, DONNA MARIE SULLIVAN,
CHESTER SMITH WILLIAMS, and ZHEN XU
Appeal 2017-007471
Application 13/909,0711
Technology Center 2600
Before: MARC S. HOFF, CATHERINE SHIANG, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—23, which constitute all of the claims pending
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Bose Corporation as the real party in interest. App.
Br. 2.
Appeal 2017-007471
Application 13/909,071
THE INVENTION
The disclosed and claimed invention is directed to a portable
loudspeaker. Spec. 11.
Claim 1, reproduced below the relevant limitation emphasized, is
illustrative of the claimed subject matter:
1. A portable loudspeaker, comprising:
a first electro-acoustic driver which creates sound waves
when operated;
a housing having a first side to which the driver is
secured, and a second side opposite the first side;
a first passive radiator secured to the first side of the
housing and a second passive radiator secured to the second
side of the housing; and
a unitary battery module secured to the housing and
extending into a region directly between the first and second
passive radiators, the battery providing electrical power to the
driver, the sound waves from the driver being capable of
acoustically energizing the first and second passive radiators.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Saiki US 2007/0201712 Al Aug. 30, 2007
Guenther US 2008/0292117 Al Nov. 27, 2008
Stewart, Jr. et al. US 2009/0324003 Al Dec. 31,2009
“Stewart”
Nicholson et al. US 2012/0250924 Al Oct. 4, 2012
“Nicholson”
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Application 13/909,071
REJECTIONS
Claims 1—4 and 19—23 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Nicholson in view of Guenther. Final Act. 2—11.
Claims 5—7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Nicholson in view of Guenther and Saiki. Final Act. 11—
13.
Claims 8—9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Nicholson in view of Guenther and Stewart. Final Act.
14—15.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants’ arguments regarding claims 1—23, and
we incorporate herein and adopt as our own: (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken (Final
Act. 2—15); and (2) the reasons and rebuttals set forth in the Examiner’s
Answer in response to Appellants’ arguments (Ans. 12—14). We incorporate
such findings, reasons, and rebuttals herein by reference unless otherwise
noted. However, we highlight and address specific findings and arguments
for emphasis as follows.
Claims 1—3, 10—12, 14—18, and 20—23
Appellants argue that the Examiner erred in finding Guenther teaches
“a unitary battery module . . . extending into a region directly between the
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Application 13/909,071
first and second passive radiators,” as recited in claim 1. See App. Br. 4—6;
Reply Br. 1—2. Specifically, Appellants argue “Guenther does not disclose
or suggest two discrete (i.e., first and second) passive radiators with a battery
module disposed directly between them.” App Br. 4. Instead, according to
Appellants, “items 27 and 28 of Guenther are merely elastomeric members,
which, together with the battery 40, define a single passive radiator 34 in
which the battery serves as the moving mass.” Id. (citing Guenther Abstract,
127); see also Reply Br. 2. Appellants further argue that neither elastomeric
members 27 or 28 alone is a passive radiator and that “[separating the
battery from the remaining elements of Guenther’s passive radiator would
effectively remove an essential component of the passive radiator (i.e., the
mass), and, consequently, would render Guenther’s passive radiator
unsuitable for its intended purpose.” App. Br. 4—5 (citing MPEP
2143.01(V)-(VI)); see also Reply Br. 2. Moreover, Appellants argue
“[tjhere is simply no teaching or suggestion that the elastomeric membranes
of Guenther were intended to, or are even capable of, operating as separate
and discrete passive radiators as the examiner suggested.” App. Br. 5—6.
Appellants therefore argue that “elastomeric members 27, 28 of Guenther
are not configured to passively react to sound waves independently of each
other, and, thus, even under the examiner’s broad construction, should not be
considered as separate passive radiators, such as is required by the recitation
of the ‘first’ and ‘second’ passive radiators” recited in claim 1. Reply Br. 2.
The Examiner finds that Nicholson teaches “a first passive radiator
secured to the first side of the housing and a second passive radiator secured
to the second side of the housing.” Final Act. 3 (citations omitted). The
Examiner further finds Nicholson teaches “a unitary battery module secured
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to the housing and extending into a region substantially between the first and
second passive radiators.” Id. (citations omitted). However, the Examiner
notes Nicholson “does not disclose expressly wherein the battery module is
‘directly’ between the first and second passive radiators.” Id.
The Examiner finds Guenther teaches a portable loudspeaker with a
first and second passive radiator (elastomeric members 27 and 28) and a
unitary battery module “extending into a region directly between the first
and second radiators.” Id. The Examiner further finds that a person of
ordinary skill in the art would have modified the location of the battery
module in Nicholson into “a space directly between the first and second
passive radiators, as performed by Guenther.” Id. at 4. The Examiner finds
that a person of ordinary skill in the art would have made that modification
“to increase audio fidelity by adding mass to the passive radiators, while
reducing overall size of the device, as taught by Guenther” paragraph 5. Id.
Our reviewing court guides that “the question under 35 USC § 103 is
not merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.” Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804,
807-08 (Fed. Cir. 1989). Moreover, “[ejvery patent application and
reference relies to some extent upon knowledge of persons skilled in the art
to complement that [which is] disclosed. . . .” In re Bode, 550 F.2d 656, 660
(CCPA 1977) (quoting In re Wiggins, 488 F.2d 538, 543 (CCPA 1973)).
Those persons “must be presumed to know something” about the art “apart
from what the references disclose.” In re Jacoby, 309 F.2d 513, 516 (CCPA
1962). Additionally, the skilled artisan is “[a] person of ordinary creativity,
not an automaton.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
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Furthermore, there is no requirement in an obviousness analysis for the prior
art to “contain a description of the subject matter of the appealed claim in
ipsissimis verbis.” In re May, 574 F.2d 1082, 1090 (CCPA 1978).
Furthermore, nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986). The test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the “combined teachings of [those] references.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (emphasis added).
Appellants’ arguments focus solely on whether or not Guenther
teaches the two passive radiators and a battery. In doing so, Appellants
ignore the Examiner’s reliance on Nicholson for those elements. Because
Appellants have argued the references individually and have not addressed
the combination of teachings relied on by the Examiner, we are not
persuaded that the Examiner erred. Instead, we agree with the Examiner that
Nicholson teaches the relevant elements—the two passive radiators and the
unitary battery—and Guenther suggests placing the battery between
elements:
The foregoing are among the objects attained by the invention
which provides, in some aspects, electronic devices with
improved radiators (or “passive drivers”) comprising an
elastomerically mounted mass in order to improve sound
reproduction fidelity. The mass comprises a component of the
device not normally used for such purpose—e.g., a battery—
thereby, permitting size reductions while, at the same time,
enhancing audio fidelity.
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Guenther | 5. Because Nicholson has the two passive radiators, it is
irrelevant whether or not each elastomeric membrane is, itself, a passive
radiator.
Accordingly, we sustain the Examiner’s rejection of claim 1, along
with the rejection of claims 16 and 20, which are argued on the same
grounds, and dependent claims 2, 3, 10—12, 14, 15, 17, 18, and 21—23, which
are not separately argued.
Claims 4, 13, and 19
Claims 4, 13 and 19 depend from either claim 1 or claim 16.
Appellants did not argue the claims separately in the Appeal Brief. See App.
Br. 4—6. However, Appellants raised a separate argument directed to those
claims in the Reply Brief. See Reply Br. 2—3.
Because Appellants did not raise that argument in the opening brief
and good cause has not been shown why it should be considered, we will not
consider this argument. 37 C.F.R. §41.41(b)(2); Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (Informative) (“[T]he reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner’s rejections, but were not.”).
Accordingly, because we sustained the Examiner’s rejection of
independent claims 1 and 16 and Appellants waived any separate argument
directed to claims 4, 13, and 19, we sustain the Examiner’s rejection of those
claims.
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Claims 5—9
With respect to dependent claims 5—9, Appellants merely contend that
because the additional references used in the rejections of these claims (Saiki
and Stewart) do not cure the shortcomings of the other references applied
against claim 1, the Examiner failed to make a prima facie case of
obviousness for these claims. App. Br. 6. Because we determine that the
rejection of claim 1 is not erroneous for the reasons discussed above, we
sustain the rejections of these claims.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1—23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. §41.50(f).
AFFIRMED
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