Ex Parte Kim

Board of Patent Appeals and Interferences

Oct 29, 2002

08733567 (B.P.A.I. Oct. 29, 2002)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAE-NAM KIM
__________
Appeal No. 2001-0255
Application 08/733,567
___________
HEARD: JUNE 13, 2002
___________
Before JERRY SMITH, DIXON and LEVY, Administrative Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-11, which constitute
all the claims in the application.
The disclosed invention pertains to a speaker system for
improving the sound quality emanating from a speaker.
Specifically, a sound wave amplifying horn is coupled to the
speaker for collecting and amplifying only a portion of the sound
waves which radiate from the rear of the speaker frame.
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Application 08/733,567
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Representative claim 1 is reproduced as follows:
1. A speaker system comprising:
a speaker having a cone which converts an electric signal
into a sound wave signal;
a frame attached to a rear side of said speaker and
having a plurality of sound wave radiating holes formed therein;
and
a sound wave amplifying horn for amplifying and radiating
only a portion of sound waves which are radiated from the rear
side through said frame.
The examiner relies on the following references:
Jung 5,206,465 Apr. 27, 1993
Sugimoto et al. (Sugimoto) 5,604,337 Feb. 18, 1997
(filed Feb. 10, 1995)
Claims 1-4 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by the disclosure of Jung. Claims 5-11 stand
rejected under 35 U.S.C. § 103. As evidence of obviousness the
examiner offers Jung alone with respect to claim 5, and Jung in
view of Sugimoto with respect to claims 6-11.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
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Application 08/733,567
3
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of anticipation and obviousness relied upon by the examiner as
support for the rejections. We have, likewise, reviewed and
taken into consideration, in reaching our decision, the
appellant’s arguments set forth in the briefs along with the
examiner’s rationale in support of the rejections and arguments
in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon by the examiner does not
support the rejection of any of the claims on appeal.
Accordingly, we reverse.
We consider first the rejection of claims 1-4 under 35
U.S.C. § 102(b) as being anticipated by the disclosure of Jung.
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as well
as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore and
Appeal No. 2001-0255
Application 08/733,567
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Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ
303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Claims 1-4 stand or fall together as a single group
[brief, page 5]. The rejection is set forth on page 2 of the
final rejection [Paper No. 7] which is incorporated into the
examiner’s answer [answer, page 3]. With respect to
representative, independent claim 1, appellant argues that Jung
discloses that all the sound waves radiating from the cut-out
portions of the speaker are collected by the sound collecting
tubes which is contrary to the claimed invention which collects
only a portion of the sound waves [brief, pages 5-8]. The
examiner responds that in the fourth, fifth and sixth embodiments
of Jung, the horn amplifies and radiates only a portion of the
sound waves which are radiated from the rear side through the
frame [answer, pages 3-4]. Appellant responds that the examiner
has misinterpreted the structure of the fourth, fifth and sixth
embodiments of Jung [reply brief].
We agree with the position argued by appellant for
essentially the reasons explained in the reply brief. The
disclosure of Jung does not support the examiner’s
interpretation. Specifically, with respect to the fourth
embodiment, for example, Jung discloses that “[b]ecause the inlet
Appeal No. 2001-0255
Application 08/733,567
5
end shrouds three quadrants of the back of the loudspeaker, the
number of trapezoidal cut-outs formed in the back of the
loudspeaker is not of concern, as long as the three quadrants
fully cover the trapezoidal quadrants formed within the inlet
end, and there is no undue interference from the frame
reverberating sound passing therethrough” [column 7, line 62 to
column 8, line 1 (emphasis added)]. We agree with appellant that
this disclosure can only mean that all cut-outs in the frame of
the speaker must be covered by the inlet end of the sound
collecting device. Since Jung does not disclose the structure of
representative claim 1, we do not sustain the examiner’s
rejection of claims 1-4.
We now consider the rejection of claims 5-11 under 35
U.S.C. § 103. In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
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Application 08/733,567
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modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
Appeal No. 2001-0255
Application 08/733,567
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1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
by appellant [see 37 CFR § 1.192(a)].
Claim 5 is rejected based on Jung taken alone. Claims 6-
11 are rejected based on Jung in view of Sugimoto. Since each of
these rejections relies on the examiner’s improper interpretation
of the disclosure of Jung, the rejections fail to set forth a
prima facie case of obviousness. We note that the additional
teachings of Sugimoto do not overcome the basic deficiencies in
Jung discussed above. Since the examiner has not established a
prima facie case of obviousness, we do not sustain the rejection
of claims 5-11.
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Application 08/733,567
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In summary, we have not sustained any of the examiner’s
rejections of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 1-11 is reversed.
REVERSED
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH L. DIXON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
STUART S. LEVY )
Administrative Patent Judge )
Appeal No. 2001-0255
Application 08/733,567
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