Ex Parte Kapoor et al

Board of Patent Appeals and Interferences

Jul 18, 2011

09933321 (B.P.A.I. Jul. 18, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte VIKRAM KAPOOR, CHUCK NICKETTA, DAVE HESS,
and MIKE AULERT
____________________

Appeal 2009-009887
Application 09/933,3211
Technology Center 2600
____________________

Before MAHSHID D. SAADAT, MARC S. HOFF, and BRADLEY W.
BAUMEISTER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 8-10 and 12.2 We have jurisdiction under 35 U.S.C. § 6(b).

1 The real party in interest is Motorola, Inc.
2 Claims 1-7 and 16-20 stand allowed. Claims 11 and 13-15 stand objected
to as being dependent upon a rejected base claim, but would be allowable if
rewritten in independent form.
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Application 09/933,321

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We reverse.
Appellants’ invention concerns an audiocassette player adapter for
coupling audio outputs from a cellular telephone and multimedia (e.g., MP3)
player to an audio system (Spec. 1). The invention includes an audiocassette
player command signal generator, which produces control signals (for
example play, forward, rewind, stop) to control a device such as a cellular
phone or MP3 player (Spec. 6).
Claim 8 is exemplary of the claims on appeal:
8. An audiocassette adapter for coupling a mobile electronic device to
an audiocassette player, comprising:
a cassette head coupling device;
a mobile electronic device input coupled to the cassette head
coupling device;
an audiocassette player command signal generator;
a control signal output coupled to the audiocassette player
command signal generator.

The Examiner relies upon the following prior art in rejecting3 the
claims on appeal:
Sadler US 6,058,319 May 2, 2000

3 We note that the drawings stand objected to under 37 C.F.R. § 1.83(a). As
drawing objections are a petitionable, rather than appealable, matter, this
objection is not properly before the Board, and we will not treat it further.
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Application 09/933,321

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Claims 8-10 and 12 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Sadler.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed June 5, 2008) and the Examiner’s Answer (“Ans.,” mailed
July 22, 2008) for their respective details.

ISSUE
Appellants argue, inter alia, that Sadler fails to disclose an
audiocassette player command signal generator, and a control signal output
coupled thereto (App. Br. 8-9). The Examiner finds that the record head 84
and cassette adapter 70, taken together, constitute the claimed command
signal generator (Ans. 9). Appellants’ contentions and the Examiner’s
findings present us with the following issue:
Does Sadler teach an audiocassette player command signal generator
and a control signal output coupled to the audiocassette player command
signal generator?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellants’ Specification
1. Appellants disclose that the command signal generator “is coupled
to the control signal output for generating and outputting unique control
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Application 09/933,321

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signals corresponding to audiocassette player commands, for example play,
forward, rewind and stop commands executed or controlled by a user”
(Spec. 6).
2. These command signals are disclosed separately from any audio
signal(s) that may be routed to the cassette adapter (see, e.g., Spec. 5, 6).

Sadler
3. Sadler teaches that “record head 84 applies audio signals to the
play-back head of the cassette player” (col. 3, ll. 40-41).

PRINCIPLES OF LAW
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
(quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)).
Anticipation of a claim requires a finding that the claim at issue reads on a
prior art reference. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346
(Fed. Cir. 1999) (quoting Titanium Metals Corp. v. Banner, 778 F.2d 775,
781 (Fed. Cir. 1985)).

ANALYSIS
Claim 8, the sole independent claim under appeal, recites an
audiocassette adapter comprising “an audiocassette player command signal
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generator . . . [and] a control signal output coupled to the audiocassette
player command signal generator.”
Appellants’ Specification explains that the command signal generator
“is coupled to the control signal output for generating and outputting unique
control signals corresponding to audiocassette player commands, for
example play, forward, rewind and stop commands executed or controlled
by a user” (FF 1). These command signals are disclosed separately from any
audio signal(s) that may be routed to the cassette adapter (FF 2).
The Examiner finds that cassette adapter 70 and record head 84 of
Sadler together make up the command signal generator claimed by
Appellants (Ans. 9). According to the Examiner, these elements generate
“audio cassette player command signals such as play-back and other
standard functions of cassette player” (id.).
We disagree with the Examiner’s finding. We have reviewed the
sections of Sadler relied upon by the Examiner (notably, column 3, lines 7-
11, 24-33, 39-43, and 47-57). Sadler does explicitly teach that “record head
84 applies audio signals to the play-back head of the cassette player” (FF 3).
On the other hand, we find no disclosure whatsoever that Sadler generates or
outputs unique control signals corresponding to audiocassette player
commands. We find that Sadler does not disclose any mechanism for
generating or outputting signals to be interpreted by another device as
commands to, e.g., play, forward, rewind, or stop the playback of any audio
signals, such as Appellants’ invention contemplates doing.
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As a result, we find that Sadler does not teach all of the elements of
independent claim 8, or of dependent claims 9, 10, and 12.
We conclude that the Examiner erred in rejecting claims 8-10 and 12
under § 102 as anticipated by Sadler. We will not sustain the Examiner’s
rejection.

CONCLUSION
Sadler does not teach an audiocassette player command signal
generator and a control signal output coupled to the audiocassette player
command signal generator.

ORDER
The Examiner’s rejection of claims 8-10 and 12 is reversed.

REVERSED

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