Ex Parte Macey

Board of Patent Appeals and Interferences

Aug 11, 2008

10364080 (B.P.A.I. Aug. 11, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVE MACEY
____________

Appeal 2008-2292
Application 10/364,080
Technology Center 2600
____________

Decided: August 11, 2008
____________

Before SCOTT R. BOALICK, JOHN A. JEFFERY,
and KEVIN F. TURNER, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-3, 5, 7, 8, 10, 12-14, and 17-19. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm-in-part.

Appeal 2008-2292
Application 10/364,080

2
STATEMENT OF THE CASE
Appellant invented an audio system for a spa. Specifically, audio
transducers are bonded to the spa’s shell such that vibration energy is
coupled into the spa shell. As a result, audio is reproduced with a full range
of frequencies.1 Claims 1 and 17 are illustrative:
1. A spa audio system comprising:

a spa shell having a top sheet and an underside layer;

a puck having a fixed circumference and thickness formed from a
solid material bonded to the spa shell by the underside layer and contained,
at least in part, by the underside layer; and

an audio transducer contained within a housing having a vibrating
surface, the vibrating surface of the audio transducer being physically
attached to the puck for coupling sound vibration energy into the puck.

17. A method for making an acoustically active hot tub, the steps of
the method comprising:

a. molding a sheet of thermoplastic into a predetermined form;

b. bonding a plurality of pucks, each puck having a fixed
circumference and thickness formed from a solid material to the underside of
the sheet of thermoplastic by encapsulating each puck, at least in part, by the
thermoplastic;

c. applying a layer of structural foam to the underside of said sheet of
thermoplastic to form a hot tub shell with the pucks held by the structural
foam; and

1 See generally Spec. ¶¶ 0001-03.
Appeal 2008-2292
Application 10/364,080

3
d. physically attaching a plurality of audio transducers, each
transducer contained within a housing having a vibrating surface, by the
vibrating surface, one to each one of said plurality of pucks.

The Examiner relies on the following prior art references to show
unpatentability:
Lehr US 2,890,297 June 9, 1959
Ohaus US 5,369,868 Dec. 6, 1994
Fenner, Jr. (“Fenner”) US 5,473,700 Dec. 5, 1995
Oltman US 5,619,582 Apr. 8, 1997
Nakamura JP 03-015423 A Jan. 23, 1991

1. Claims 1, 2, 10, 13, 14, and 17-19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Nakamura and Ohaus.
2. Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Nakamura, Ohaus, and Oltman.
3. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Nakamura, Ohaus, and Fenner.
4. Claims 5, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nakamura, Ohaus, Fenner, and Lehr.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

Appeal 2008-2292
Application 10/364,080

4
THE REJECTION OVER NAKAMURA AND OHAUS
We first consider the Examiner’s obviousness rejection of claims 1, 2,
10, 13, 14, and 17-19 over Nakamura and Ohaus (Ans. 4-10).

Claims 1 and 2
Regarding representative claim 1,2 Appellant argues that the cited
prior art does not teach or suggest a puck bonded to the spa shell as claimed.
Appellant notes that the puck in the present application “is an individual
cylindrical part having two flat surfaces that border a solid interior of a
certain thickness” (App. Br. 9).3 With this interpretation, Appellant
contends the circular “edge part” 1c4 of Nakamura’s bathtub speaker frame
is not a puck since it lacks a solid interior and therefore cannot provide a
central node for transmitting sound waves to a spa shell (App. Br. 10; Reply
Br. 5). Appellant also argues that even if Nakamura is modified by the
teachings of Ohaus as the Examiner proposes, the faceplate 36 would be
spaced apart from the spa shell by supports 38. As such, Appellant argues,
Ohaus does not teach bonding a puck to the spa shell via the underside layer
(App. Br. 11-12; Reply Br. 6-7).
The Examiner responds that Appellant’s arguments with respect to the
interpretation of the term “puck” are not in the claim. The Examiner further
notes that, in light of Ohaus, ordinarily skilled artisans would have attached

2 Appellant argues claims 1 and 2 together as a group. See App. Br. 9-12.
Accordingly, we select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).
3 We note that Appellant’s interpretation of the term “puck” in the Reply
Brief is slightly different: “a cylindrical disc having two flat surfaces that
border a solid interior” (Reply Br. 2, 5; emphasis added).
4 Nakamura refers to this structure as a “rim part” 1c (Nakamura 8:8).
Appeal 2008-2292
Application 10/364,080

5
a sound source unit (or other electrical device) to the spa shell without being
spaced apart from the shell by using a threaded protrusion instead of a blind
bolt (Ans. 17-18).

ISSUE
The issue before us, then, is whether Appellant has shown that the
Examiner erred in finding that the limitations of claim 1 would have been
obvious to ordinarily skilled artisans in view of the collective teachings of
Nakamura and Ohaus. The issue turns on whether (1) the rim part 1c of
Nakamura is reasonably construed as a “puck,” and, (2) if so, whether the
prior art teaches or suggests bonding this puck to a spa shell as claimed. For
the following reasons, we find that no such error has been shown.

FINDINGS OF FACT
1. Nakamura discloses a bathtub speaker and sound system in which
a sound source unit 10 is attached to the sidewall of a bathtub 20 (Nakamura
9:7-8; Fig. 1).
2. The sound source unit 10 comprises a dish-shaped frame 1 with a
rim part 1c for attachment to the bathtub sidewall 20a via adhesive bonding
(Nakamura 8:5-9; 9:22-24; Figs. 2, 3).
3. Ohaus discloses a tub 10 including an enclosed mounting bracket
37 to attach electrical devices thereto. The bracket is enclosed within a
polymeric coating 18 disposed over the non-finish side of the tub to
distribute the weight of the attached object over the polymeric material
(Ohaus, col. 3, ll. 24-56; Figs. 2A-2C).
Appeal 2008-2292
Application 10/364,080

6
4. Fenner attaches a transducer 100 to a bulkhead wall 180 via a
threaded fastener 20 (Fenner, col. 4, ll. 51-56; Figs. 1 and 1A).
5. Lehr discloses a transducer assembly with two housing parts 11, 12
secured via detachable fasteners that define a closed chamber (Lehr, col. 2,
ll. 29-57; Fig. 2).

PRINCIPLES OF LAW
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 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
Discussing the question of obviousness of claimed subject matter
involving a combination of known elements, KSR Int’l v. Teleflex, Inc., 127
S. Ct. 1727 (2007), explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740. If the claimed subject matter cannot be fairly
characterized as involving the simple substitution of one known element for
Appeal 2008-2292
Application 10/364,080

7
another or the mere application of a known technique to a piece of prior art
ready for the improvement, a holding of obviousness can be based on a
showing that “there was an apparent reason to combine the known elements
in the fashion claimed.” Id. at 1740-41. Such a showing requires,
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. . . . [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.”

Id. at 1741 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant 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 In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

ANALYSIS
We find no error in the Examiner’s position that the circular rim part
1c of Nakamura’s frame 1 fully meets a “puck” as claimed—even under
Appellant’s own definition. As shown in Figures 2 and 3 of Nakamura, the
rim part 1c is essentially an annular disc with a definite thickness that
essentially functions as a mounting flange for the frame for the sound source
unit (FF 2). As such, Nakamura’s rim part 1c fully meets Appellant’s
definition (i.e., “an individual cylindrical part having two flat surfaces that
border a solid interior of a certain thickness”). While the interior of this
annular structure is not completely solid, its interior is in fact solid
Appeal 2008-2292
Application 10/364,080

8
throughout the width of the ring. In short, nothing in the claim language
interpreted in light of the Specification precludes an annular “puck” such as
that shown in Nakamura. That Appellant’s disclosed puck 127 has a hole in
the middle to accommodate stud 125 as shown in Figure 2 of the present
application only bolsters our conclusion.
We also find no error in the Examiner’s reliance on Ohaus for
teaching bonding such a puck via the underside layer as claimed. Based on
Ohaus’ fundamental teaching of enclosing a mounting bracket for a tub
within an underlying polymeric coating (FF 3), ordinarily skilled artisans
would have ample reason to utilize such a bonding technique with respect to
the mounting structure of the frame of Nakamura, namely the rim part 1c.
That is, we see no reason why the rim part (i.e., the “puck”) of Nakamura
could not be contained, at least in part, by an underside layer in view of the
teachings of Ohaus.
Such a modification would not space the bracket away from the tub as
Appellant argues, but rather merely contain at least the attached rim part 1c
in an additional underlying layer associated with the tub. At a minimum,
such an enhancement would more evenly distribute the weight of the
attached sound source unit in Nakamura by transferring some of that weight
to the additional layer as Ohaus suggests (FF 3).
Furthermore, we are not persuaded by Appellant’s contention (App.
Br. 10; Reply Br. 5-6) that the rim part 1c would couple destructively
interfering sound waves into the bathtub wall. Not only has Appellant
provided no evidence on this record to support this assertion, we find that
the direct mechanical engagement between the rim part 1c, the frame, and
Appeal 2008-2292
Application 10/364,080

9
the sound source unit would provide some amount of acoustical coupling
between the sound source unit and the tub.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 1. Therefore, we will
sustain the Examiner’s rejection of that claim, and claim 2 which falls with
claim 1.

Claims 10, 13, 14, and 19
Although Appellant nominally argues the Examiner’s rejection of
claims 10, 13, 14, and 19 separately (App. Br. 12-13), Appellant’s
arguments do not particularly point out errors in the Examiner’s rejection of
these claims apart from reiterating the same arguments we considered above
with respect to claims 1 and 2. Therefore, we sustain the rejection of these
claims for the same reasons discussed above with respect to claims 1 and 2.

Claims 17 and 18
Regarding representative claim 175 which calls for a method of
making an acoustically active hot tub, Appellant argues that the bonding step
is not suggested by the prior art since there is no disclosure of a puck.
Appellant also argues that the step of attaching the transducers in Nakamura
would necessarily precede the step of applying a layer of structural foam as
taught by Ohaus. As such, after the pucks of the prior art assembly were
bonded to the spa shell using the foam as suggested the prior art, Appellant
contends that it would be impossible to access the interior of the Nakamura

5 Appellant argues claims 17 and 18 together as a group. See App. Br. 13-
14. Accordingly, we select claim 17 as representative.
Appeal 2008-2292
Application 10/364,080

10
enclosure to perform the final step of the process, namely attaching an audio
transducer to its corresponding puck (App. Br. 13-14).
At the outset, since we find that Nakamura amply discloses a puck as
claimed, we are not persuaded that the Examiner erred in relying on the cited
prior art for the puck bonding step for the reasons previously discussed.
The pivotal issue before us, then, is whether Appellant has shown that
the Examiner erred in finding that the prior art teaches or suggests the
manufacturing method of claim 17. The issue turns on whether the final
recited step of physically attaching the transducers to corresponding pucks
(step (d)) can be performed by the method suggested by the collective
teachings of the cited prior art. For the following reasons, we find that no
such error has been shown.
Appellant’s argument is premised on the assumption that the last
recited step of claim 17 (step (d)) must be performed after the first three
steps.6 But method steps are not ordinarily construed to require an order
unless they expressly or implicitly require performance in that order. Altiris
v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003) (citing Interactive
Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323 (Fed. Cir. 2001)).
“First, we look to the claim language to determine if, as a matter of logic or
grammar, [the method steps] must be performed in the order written.”
Altiris, 318 F.3d at 1369. If the claim language itself does not require
performing the steps in that order, we then look to the Specification “to
determine whether it ‘directly or implicitly requires such a narrow
construction.’” Id. at 1370.

6 See App. Br. 14 (characterizing the transducer attachment step as the “final
step”).
Appeal 2008-2292
Application 10/364,080

11
Turning to the language of claim 17, we find that the first three steps
(Steps (a)-(c)) must be performed in the order recited since (1) Step (b)
requires a thermoplastic sheet in a certain form to which the pucks are
bonded, and (2) Step (c) requires holding the pucks by the structural foam
that is applied to the underside of the thermoplastic sheet.
Step (d), however, need not be the last step in this process. All this
step requires is physically attaching each of a plurality of transducers to each
one of a plurality of pucks. The claim language simply does not require this
step to be performed last, nor do we see any reason why this step could not
be performed before bonding the pucks to the thermoplastic sheet. Indeed,
step (d) could very well be performed first given the scope of the claim
language.
Nor does Appellant’s Specification mandate a different result.
Although Paragraph 0012 of the Specification7 describes the attachment
between the transducer element 121 and the puck 127, this passage by no
means requires that this attachment occur after the pucks are bonded to the
thermoplastic sheet and held by structural foam.
Since we find that claim 17 does not preclude attaching the
transducers to the pucks before bonding, we are not persuaded of error in the
Examiner’s findings that this limitation (in addition to the other recited
limitations of claim 17) is taught or suggested by the collective teachings of
the cited prior art.

7 In the Summary of Claimed Subject Matter section of the Appeal Brief,
Appellant indicates that Paragraph 0012 corresponds to the subject matter
recited in Step (d) of claim 17. See App. Br. 7.
Appeal 2008-2292
Application 10/364,080

12
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 17. Therefore, we will
sustain the Examiner’s rejection of that claim, and claim 18 which falls with
claim 17.

THE REJECTION OVER NAKAMURA, OHAUS, AND OLTMAN
Likewise, we will sustain the Examiner's obviousness rejection of
claim 3 over Nakamura, Ohaus, and Oltman (Ans. 10-11). We find that
Appellant has not persuasively rebutted the Examiner's prima facie case of
obviousness for this claim, but merely noted that the addition of Oltman fails
to cure the deficiencies of the cited prior art in connection with
representative claim 1 (App. Br. 14; Reply Br. 8). Thus, we are not
persuaded that the Examiner erred in rejecting claim 3 for the same reasons
discussed above with respect to claim 1. The rejection is therefore
sustained.

THE REJECTION OVER NAKAMURA, OHAUS, AND FENNER
We now consider the Examiner’s obviousness rejection of claim 12
over Nakamura, Ohaus, and Fenner (Ans. 11-12). Appellant argues that the
Examiner’s combination of references is improper since, among other
things, there would be no need to attach Nakamura’s rim part 1c to the frame
by means of a threaded shaft since they are integral structures (App. Br. 15).
Appellant adds that the combination would also result in an air gap between
the pucks and the spa shell in light of Ohaus’ displaced structure (App. Br.
15-16; Reply Br. 10).
Appeal 2008-2292
Application 10/364,080

13
The Examiner responds that Fenner teaches connecting a transducer to
a puck via a threaded connection (bolt 20), and that there are “blocks”
shown in Figures 5 and 7 of Fenner that must be pucks (Ans. 19). The
Examiner adds that by using a stud, the resultant combination would not
have an air gap as alleged by Appellant (Ans. 20).
The issue before us, then, is whether Appellant has shown that the
Examiner erred in finding that the vibrating surface of the audio transducers
is attached to respective pucks by a threaded shaft. The issue turns on
whether there is an apparent reason to combine the known elements in the
fashion claimed that is supported by articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness. For the
following reasons, we find that Appellant has shown such an error.
As we indicated previously, we find no error in the Examiner’s
interpretation of Nakamura’s rim part 1c as a “puck.” But we fail to see any
rational basis for attaching such a “puck” to the associated transducer via a
threaded shaft since Nakamura’s rim part is already integral with the frame
of the sound source unit (and its associated transducer) as Appellant
indicates. As an integral structure that essentially functions as a mounting
flange, we simply fail to see how or why this thin peripheral flange (“puck”)
could or should be attached to a transducer via a threaded shaft.
Although Fenner does teach attaching a transducer 100 to a bulkhead
wall 180 via a threaded fastener 20 (FF 4), we still fail to see how or why
ordinarily skilled artisans could attach a peripheral flange (which the
Examiner identifies as the “puck”) to a transducer via a threaded connection.
Appeal 2008-2292
Application 10/364,080

14
Because the “puck” of the base reference to Nakamura is so different
structurally from the mounting arrangement of Fenner, we find that the
Examiner’s proposed modification simply strains reasonable limits.
We acknowledge the Examiner’s identification of the unlabeled
“blocks” in Figures 5 and 7 of Fenner that are disposed between the
transducer housings 100 and the wall of the tank 51 (Fig. 5) and vessel hull
71 (Fig. 7), respectively. Although these “blocks” in these figures appear
rectangular, the Examiner’s assertion that they must be pucks (Ans. 19) is
merely speculative.
In any event, even if these unlabeled structures could somehow be
considered “pucks” (a finding which is unsupported by the record before us),
the Examiner’s observation is inconsistent with the logic used in the
rejection which relied on the base reference to Nakamura for teaching
bonding a puck to a spa shell, namely the rim part 1c. As we noted above,
we fail to see how or why Nakamura’s peripheral rim part that is integral
with the frame could or should be attached to the transducer with a threaded
fastener.
For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s rejection of claim 12. Therefore, we will not sustain the
Examiner’s rejection of that claim.

THE REJECTION OVER NAKAMURA, OHAUS, FENNER, AND LEHR
We now consider the Examiner’s obviousness rejection of claims 5, 7,
and 8 over Nakamura, Ohaus, Fenner, and Lehr (Ans. 12-16). Regarding
claim 5, the Examiner adds the disclosure of Lehr to show that it would have
been obvious to the skilled artisan at the time of the invention to mount the
Appeal 2008-2292
Application 10/364,080

15
transducer and puck in an enclosure and glue the puck at the enclosure’s
closed end (Ans. 21). Appellant argues that the Examiner has failed to
reasonably articulate why it would have been obvious to the skilled artisan at
the time of the invention to use an enclosure with an open and closed end
and glue the puck inside the enclosure at the closed end (App. Br. 17-18;
Reply Br. 10-12).
The issue before us, then, is whether Appellant has shown that the
Examiner erred in finding that ordinarily skilled artisans would have
mounted the transducer and puck of the cited prior art in an enclosure and
glued the puck at the enclosure’s closed end, as claimed. The issue turns on
whether there is an apparent reason to combine the known elements in the
fashion claimed that is supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion. For the
following reasons, we find that Appellant has shown such an error.
While we find no error in the Examiner’s interpretation of
Nakamura’s rim part 1c as a “puck,” we fail to see any rational basis for
enclosing such a “puck” in a separate enclosure, let alone an enclosure with
an open and closed end as claimed. As an integral structure integral that
essentially functions as a mounting flange for its integral frame, we simply
fail to see how this how or why this thin peripheral flange (“puck”) could or
should be enclosed within a separate enclosure such as that disclosed by
Lehr (FF 5).
Even if such a modification were possible (which we fail to see on
this record), and even if Lehr’s enclosure had an open and closed end (a
Appeal 2008-2292
Application 10/364,080

16
feature requiring an undisclosed modification of Lehr’s enclosure),8 we do
not see a rational basis on the record before us to modify the prior art
structure (particularly Nakamura) by somehow gluing this “puck” in the
closed end of an enclosure apart from Appellant’s own disclosure.9
For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s rejection of claim 5. Therefore, we will not sustain the
Examiner’s rejection of that claim, and dependent claims 7 and 8 for similar
reasons.

CONCLUSIONS OF LAW
Appellant has not shown that the Examiner erred in rejecting (1)
claims 1, 2, 10, 13, 14, and 17-19 under § 103(a) over Nakamura and Ohaus,
and (2) claim 3 under § 103(a) over Nakamura, Ohaus, and Oltman.

8 Arriving at this type of enclosure would, as the Examiner recognizes (Ans.
13), require ordinarily skilled artisans to remove only one housing part of
Lehr’s enclosure, yet leave the other part intact. While Lehr does use
removable fasteners for the housing parts (FF 5), we find the Examiner’s
modification of Lehr—a modification that effectively results in one-half of
an enclosure—problematic given the purpose of the enclosure in Lehr.
Nevertheless, even if such a modification were suggested by Lehr, we still
find the Examiner’s modification of the other cited prior art (particularly
Nakamura) in view of Lehr problematic for the reasons indicated in this
opinion.
9 It is well settled that obviousness determinations "can not be based on the
hindsight combination of components selectively culled from the prior art to
fit the parameters of the…invention. There must be a teaching or suggestion
within the prior art, or within the general knowledge of a person of ordinary
skill in the field of the invention, to look to particular sources of information,
to select particular elements, and to combine them in the way they were
combined by the inventor." ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546
(Fed. Cir. 1998).
Appeal 2008-2292
Application 10/364,080

17
Appellant has, however, shown that the Examiner erred in rejecting
(1) claim 12 under § 103(a) over Nakamura, Ohaus, and Fenner, and (2)
claims 5, 7, and 8 under § 103(a) over Nakamura, Ohaus, Fenner, and Lehr.
DECISION
We have sustained the Examiner's rejections with respect to claims 1-
3, 10, 13, 14, and 17-19. We have not, however, sustained the Examiner’s
rejections with respect to claims 5, 7, 8, and 12. Therefore, the Examiner’s
decision rejecting claims 1-3, 5, 7, 8, 10, 12-14, and 17-19 is affirmed-in-
part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

KIS

SNELL & WILMER, L.L.P. (OC)
600 ANTON BOULEVARD
SUITE 1400
COSTA MESA, CA 92626