Ex Parte Lucey

Board of Patent Appeals and Interferences

Mar 29, 2001

08341500 (B.P.A.I. Mar. 29, 2001)

1
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not written for publication and is not binding precedent of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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT E. LUCEY
_____________
Appeal No. 1998-1328
Application No. 08/341,500
______________
ON BRIEF
_______________
Before THOMAS, FLEMING, and RUGGIERO, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-15.
The invention relates to the use of a flexible microphone
boom which is lightweight and comfortable for a user to wear
Appeal No. 1998-1328
Application No. 08/341,500
See page 3 of the specification.1
2
for long periods of time. The microphone boom allows for
placement of the microphone near the user's mouth and which is
rugged enough to avoid fracturing or breaking even after being
repeatedly bent over long periods of time. The boom includes
an inner conductor having a plurality of support strands, a
first insulator disposed about an inner conductor, an outer
conductor disposed about the first insulator to shield the
inner conductor and an outer jacket disposed about the outer
conductor. This arrangement allows for the boom to be
positioned to fit a plurality of users. A support wire from a
plurality of different strands of wire allows the flexible
cable to be repeatedly bent without fracture. 1
Independent claim 1 is as follows:
1. A microphone boom comprising:
an inner conductor including:
a microphone wire strand in electrical communication with
a microphone; and
a plurality of wire strands;
a first insulator concentrically disposed about said
inner conductor;
Appeal No. 1998-1328
Application No. 08/341,500
See Appellant's brief (hereinafter the brief) filed2
August 18, 1997 and the Reply Brief filed October 30, 1997.
See also the Examiner's answer (hereinafter answer) filed
September 5, 1997 and the Supplemental Answer filed November
6, 1997.
3
an outer conductor concentrically disposed about said
first insulator; and
an outer jacket concentrically disposed about said outer
conductor,
wherein said inner conductor imparts to said microphone
boom a characteristic of being freely positionable by a user,
said microphone boom maintaining a first position until moved
to a further position by said user.
The Examiner relies on the following references:
Litauer 4,259,544 Mar. 31,
1981
Sacherman et al. 5,369,857 Dec. 6,
1994
Claims 1-15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Sacherman in view of Litauer.
Rather than reiterate all arguments of the Appellant and
the Examiner, reference is made to the briefs and the answers
for the respective details thereof.2
OPINION
We will not sustain the rejection of claims 1-15 under 35
Appeal No. 1998-1328
Application No. 08/341,500
4
U.S.C.
§ 103.
As pointed out by our reviewing court, we must first
determine the scope of the claim. "[T]he name of the game is
the claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d
1523, 1529 (Fed. Cir. 1998). Moreover, when interpreting a
claim, words of the claim are generally given their ordinary
and accustomed meaning unless it appears from the
specification or the file history that they were used
differently by the inventor. Carroll Touch, Inc. v. Electro
Mechanical Sys., Inc., 15 F.3d 1573, 1577, 27 USPQ2d 1836,
1840. Although an inventor is indeed free to define the
specific terms used to describe his or her invention, this
must be done with reasonable clarity, deliberateness, and
precision. In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671,
Appeal No. 1998-1328
Application No. 08/341,500
5
1674 (Fed. Cir. 1994).
Independent claims 1, 9, 11, and 15 each recite a
microphone boom comprising: a conductive core which includes
a plurality of strands; a first insulator disposed about the
conductive core; an outer conductor disposed about the first
insulator; and an outer jacket disposed about the outer
conductor.
The Appellant and the Examiner both agree that Sacherman
fails to disclose a conductive core with a plurality of
strands, a first insulator, and an outer conductor as recited
in claims 1, 9, 11, and 15. The Examiner relies on Litauer
for a teaching of these limitations.
Appellant argues that a person of ordinary skill in the
art would not have been motivated to combine teachings of
Sacherman and Litauer. Appellant particularly argues that
cables used in the Litauer invention are heavy duty electrical
cables requiring reinforcement so that the cables do not
collapse under their own weight when strung between utility
poles. Appellant also argues that there is no useful benefit
for use for longitudinally strengthening as taught by Litauer
in the microphone boom disclosed by Sacherman because lack of
Appeal No. 1998-1328
Application No. 08/341,500
See pages 11-13 of the brief.3
6
longitudinal strength in the boom is not a problem that is
discussed or suggested by Sacherman. With respect to sealing
the microphone boom from moisture, Appellant argues that
moisture is not a concern for an inner conductor of the
microphone boom, since electrical components associated with a
headset used with a microphone boom will be destroyed by
moisture well before degradation of the inner conductor. 3
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). "Additionally, when determining
obviousness, the claimed invention should be considered as a
whole; there is no legally recognizable 'heart' of the
invention." Para-Ordnance Mfg. v. SGS Importers Int’l, Inc.,
73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),
cert. denied, 117 S. Ct. 80 (1996) citing W. L. Gore &
Appeal No. 1998-1328
Application No. 08/341,500
7
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ
303, 309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n. 14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). It is further
established that "[s]uch a suggestion may come from the nature
of the problem to be solved, leading inventors to look to
references relating to possible solutions to that problem."
Pro-Mold & Tool Co. v. Great Lakes Plastics, 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996) citing In re
Rinehart, 531 F.2d 1048, 1054,
189 USPQ 143, 149 (CCPA 1976) (considering the problem to be
solved in a determination of obviousness). The Federal
Circuit reasons in Para-Ordnance Mfg., Inc. v. SGS Importers
Int’l Inc.,
73 F.3d 1085, 1088-89, 37 USPQ2d 1237, 1239-40 (Fed. Cir.
Appeal No. 1998-1328
Application No. 08/341,500
8
1995), that for the determination of obviousness, the court
must answer whether one of ordinary skill in the art who sets
out to solve the problem and who had before him in his
workshop the prior art, would have reasonably expected to use
the solution that is claimed by Appellants. However,
"[o]bviousness may not be established using hindsight or in
view of the teachings or suggestions of the invention." Para-
Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d at 1087, 37
USPQ2d at 1239, citing W. L. Gore & Assocs., Inc. v. Garlock,
Inc. 721 F.2d at 1551, 1553,
220 USPQ at 311, 312-13. In addition, our reviewing court
requires the PTO to make specific findings on a suggestion to
combine prior art references. In re Dembiczak, 175 F.3d 994,
1000-01, 50 USPQ2d 1614, 1617-19 (Fed. Cir. 1999).
We agree with Appellant that a person of ordinary skill
in the art would not have been motivated to increase the
longitudinal strength in Sacherman, particularly as the
reference is concerned with decreasing the pressure exerted on
Appeal No. 1998-1328
Application No. 08/341,500
See col. 3 lines 10-31 of Sacherman.4
9
the ears of the headset user. An increase in longitudinal4
strength would not advance a solution to this problem.
Further, the headsets of Sacherman are for use with telephones
and thus would not normally be used in an environment in which
moisture would be a problem. We therefore find that no
motivation exists to combine Sacherman and Litauer.
For these reasons, the rejection of claims 1-15 under
35 U.S.C. § 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
MRF:lbg
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