Ex Parte Levine et al

Patent Trials and Appeals Board

Jan 30, 2019

14821643 - (D) (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/821,643 08/07/2015
25096 7590 02/01/2019
PERKINS COIE LLP - SEA General
PATENT-SEA
P.O. BOX 1247
SEATTLE, WA 98111-1247
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Jonathan E. Levine
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
113095-8008.USOO 3528
EXAMINER
DABNEY, PHYLESHA LARVINIA
ART UNIT PAPER NUMBER
2655
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN E. LEVINE, DREWS. BRIGGS,
MARTEN ANDERSSON, and THOMAS C. WILSON
Appeal2018-005657
Application 14/821,643 1
Technology Center 2600
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-23, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify New Audio LLC as the real party in interest. App.
Br. 2.
Appeal2018-005657
Application 14/821,643
THE INVENTION
The disclosed and claimed invention is directed to "audio headsets,
which are wearable devices that convey sound to one or both of a user's
ears." Spec. ,r 1.2
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A headset, comprising:
a headpiece;
an earpiece;
a yoke rotatably connected to the earpiece, wherein the
yoke at least partially defines a channel including a constriction
at which a transverse cross-sectional area of the channel is non-
circular;
an arm extending between the yoke and the headpiece,
wherein the arm is rotatable relative to the yoke about an axis,
and wherein the arm includes a foot at least partially disposed
within the channel, the foot being shaped to move through the
constriction when the arm has a first rotational position about
the axis relative to the yoke and to be blocked from moving
through the constriction when the arm has any rotational
position about the axis relative to the yoke within a range of
rotational positions not including the first rotational position;
and
a plug at least partially disposed within the channel,
wherein the plug restricts rotation of the arm about the axis
relative to the yoke to a subrange of the range of rotational
positions thereby preventing movement of the foot out of the
channel and corresponding separation of the arm from the yoke,
2 We refer to the Specification filed Aug. 7, 2015 ("Spec."); Final Office
Action mailed May 18, 2017 ("Final Act."); Appeal Brief filed Nov. 20,
2017 ("App. Br."); Examiner's Answer mailed Apr. 18, 2018 ("Ans."); and
the Reply Brief filed May 9, 2018 ("Reply Br.").
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Appeal2018-005657
Application 14/821,643
the subrange of the range of rotational positions extending at
least 10 degrees about the axis.
App. Br. 17.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Blair et al.
("Blair")
Hung
US 8,737,668 Bl
us 5,035,005
REJECTION
May 27, 2014
July 30, 1991
Claims 1-23 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Blair and Hung.
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 persuaded by Appellants' arguments regarding the pending claims.
The Examiner finds "Blair teaches a headset that doesn't incorporate a
plug" and "Hung teaches a headset that utilizes a plug, and was motivated to
incorporate the plug to restrict motion of to a certain angular rotations, as
well as, prevent of the foot out of the channel and correspondingly
separation of the arm from the yoke." Ans. 3--4. According to the
Examiner, one of ordinary skill in the art would be motivated to combine
Blair and Hung "to control the angular rotation, and/or provide a more
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Appeal2018-005657
Application 14/821,643
secure method of preventing separation of the foot from the channel, thereby
preventing inadvertent disassembly of the device during use." Ans. 3--4.
Appellants argue "a person of ordinary skill in the art would not have
been motivated to combine these features as the Examiner alleges." App.
Br. 14. According to Appellants, while "it may be possible to redesign the
joint of Blair to include a retaining cap [ cap 30 of Hung] instead of the
disclosed retaining ring 105, this redesign would provide no apparent
benefit." App. Br. 15.
We are persuaded by Appellants' argument. "In rejecting claims
under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a
primafacie case of obviousness." In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
Rejections based on obviousness must be supported by "some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). Based
on the current record and the Examiner's findings, we agree with Appellants
that the Examiner did not provide a sufficient reasoning as to why the person
of ordinary skill in the art would have taken specific teachings from the use
of a cap to "enclos[ e] the open end 130 of the casing" (i.e., plug to close an
open channel and restrict movement), taught in Hung with the apertures 114,
116 or retaining ring 105, through which the arm extends (i.e., closed
channels that do not require a plug to restrict movement), taught in Blair.
Hung col. 2, 11. 28-29; see Blair Figs. 29, 31, col. 14, 11. 38--40. Because the
closed channel of Blair performs the function of Hung's plug, based on the
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Application 14/821,643
current record, the Examiner has not identified a sufficient reason why a
person of ordinary skill in the art would combine the references.
Accordingly, we are constrained on the record before us to reverse the
Examiner's§ 103 rejection of independent claim 1, along with the§ 103
rejection of independent claims 13 and 18, which recite limitations
commensurate in scope to the disputed limitation discussed above, and
dependent claims 2-12, 14--17, and 19-23. See App. Br. 16.
DECISION
For the above reasons, we reverse the Examiner's decision rejecting
claims 1-23.
REVERSED
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