Ex Parte PanDownload PDFPatent Trial and Appeal BoardJun 29, 201511426512 (P.T.A.B. Jun. 29, 2015) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 111426,512 71016 7590 Bose Corporation Patent Group FILING DATE 0612612006 07/01/2015 Mountain Road, MS 3B 1 Framingham, MA 01701 FIRST NAMED INVENTOR Davis Pan 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. FV52-US 1038 EXAMINER MEI, XU ART UNIT PAPER NUMBER 2654 NOTIFICATION DATE DELIVERY MODE 07/01/2015 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): docket@bose.com designs@bose.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DA VIS PAN Appeal2012-011533 Application 11/426,512 Technology Center 2600 Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-11 and 15-21, which are all the claims pending in the application. Claims 12-14 were cancelled during prosecution. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. Invention The claimed invention on appeal is directed to "[a]n active noise reduction system using adaptive filters." (Abstract). Appeal2012-011533 Application 11/426,512 Representative Claims 1. A method for operating an active noise reduction system compnsmg: transmitting, over a high speed bus, a signal representative of engine speed; transferring, to a low speed bus, the signal representative of engine speed; providing to an active noise reduction system an audio signal at a reference frequency related to the engine speed; and generating a noise reduction audio signal at a frequency corresponding to a predetermined multiple of the reference frequency. 18. A method for operating an active noise reduction system compnsmg: transmitting, over a high latency delivery system, a signal representative of engine speed; and generating a noise reduction audio signal at a frequency corresponding to a predetermined multiple of the reference frequency. Rejections A. Claim 18 is rejected under 35 U.S.C. § 102(b) as anticipated by Inoue et al. (EP 1 489 594 A2). B. Claims 1-11, 15-17, and 19-21 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Inoue and Kawanishi (US 5,588,002). 2 Appeal2012-011533 Application 11/426,512 Grouping of Claims Based on Appellant's arguments, we decide the appeal on the basis of representative claims 1, 16, and 18. See 37 C.F.R. § 41.37(c)(l)(vii) (2004). ANALYSIS We have considered all of Appellant's arguments and any evidence presented. (Br. 8-14). We disagree with Appellant's arguments for the reasons detailed below. Anticipation Rejection of Claim 18 over Inoue Appellant contends: "Inoue makes no mention of a high latency bus nor describes anything that could be characterized as a high latency bus." (Br. 8). We particularly note that in support of reversing the anticipation rejection of claim 18, Appellant states: "Claim 1 recites a high latency bus." Id. (emphasis added). However, claim 18 is silent regarding the contested high latency bus (as is claim 1 ). Further, claim 1 was not rejected under anticipation rejection A. We note patentability is based upon the claims. "It is the claims that measure the invention." SRI Int 'l v. Matsushita Elec. Corp. of America, 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en bane). Because Appellant is contesting a limitation ("high latency bus") that is not recited in claim 18, on this record, we are not persuaded the Examiner erred regarding the anticipation rejection of claim 18. Therefore, we sustain § 102 rejection A of claim 18 over Inoue. Obviousness Rejection of Claim 1 over Inoue and Kawanishi Comb inability under§ 103 Appellant contends the "Inoue reference and the Kawanishi Reference are not properly combinable under 35 U.S.C. [§] 103." 3 Appeal2012-011533 Application 11/426,512 (Br. 10). In particular, Appellant asserts: "The [E]xaminer has provided no apparent reason to combine the references in the fashion claimed by the claims at issue," and has further engaged in "'circular reasoning.'" (Br. 10-11). Appellant further contends, "Neither Inoue, nor Kawanishi, nor any combination of Inoue and Kawanishi teach or suggest using the low speed bus to provide the signal representative of engine speed to an active noise reduction unit." (Br. 13). Similar to our discussion above regarding the anticipation rejection of claim 18, we note claim 1 (rejected under § 103 over Inoue and Kawanishi) is silent regarding the argued limitation of "using the low speed bus to provide the signal representative of engine speed to an active noise reduction unit."(Br. 13). Because Appellant is arguing limitations that are not claimed, on this record, we are not persuaded the Examiner erred regarding representative claim 1. Moreover, given that Kawanishi (Fig. 2) expressly depicts high and low speed networks (i.e., buses) which are operatively coupled via CPU 15 (that we find is a "bridge" transferring signals between the high and low speed networks), we find the Examiner's proffered combination of Inoue and Kawanishi would have merely yielded what one of ordinary skill in the art would have expected from such a combination. The Supreme Court has held: "when a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious." KSR Int'! Co. v. Teleflex Inc., 398, 417 (2007) (citing Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)). 4 Appeal2012-011533 Application 11/426,512 This reasoning is applicable here. ivforeover, Appellant has not advanced any argument alleging reliance on impermissible hindsight. Nor has Appellant provided any rebuttal evidence of record regarding secondary considerations. 1 On this record, Appellant has not persuaded us the Examiner's proffered combination would have been "uniquely challenging or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Obviousness Rejection of Claim 16 over Inoue and Kawanishi To the extent Appellant's contention (Br. 13) regarding "using the low speed bus" may be directed to claim 16. We note claim 16 is also silent regarding "using the low speed bus to provide the signal representative of engine speed to an active noise reduction unit," as argued by Appellant. Id. Instead, claim 16 merely recites an intended purpose: "[A] low speed bus for transmitting the signal" which we conclude is not positively recited as actually occurring. (Claim 16: "[A] low speed bus, for transmitting the signal representative of engine speed to an active noise reduction system"). Our reviewing court guides: "An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although "[s]uch statements often ... appear in the 1 Arguments not made are considered waived. See 3 7 C.F .R. § 41.37(c)(l)(vii) (2004). 5 Appeal2012-011533 Application 11/426,512 claim's preamble," In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id. We observe Kawanishi teaches a low speed bus. (Fig. 2, low-speed network 2). Regarding the "low speed bus" recited in apparatus claim 16, our reviewing court further guides the patentability of an apparatus claim "depends on the claimed structure, not on the use or purpose of that structure." Catalina Marketing Int'!., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). "It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted); see also Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); Roberts v. Ryer, 91 U.S. 150, 157 (1875) ("The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not."). Here, we note the structure of the apparatus of claim 16 is not changed or further limited according to the type or informational content of the transmitted signal(s). Therefore, on this record, we are not persuaded the Examiner erred regarding the rejection of independent claim 16. We note Appellant advances no separate arguments for remaining independent claim 5. Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(l)(vii) (2004). For at least the aforementioned reasons, we are not persuaded of error regarding the Examiner's underlying factual findings and ultimate legal conclusion of obviousness regarding rejection B. (Ans. 6-8). Therefore, we sustain rejection B of representative independent claims 1, 5, and 16. The 6 Appeal2012-011533 Application 11/426,512 remaining grouped dependent claims rejected under rejection B fall with their respective representative independent claim 1, 5, or 16. See 37 C.F.R. § 41.37(c)(l)(iv). DECISION We affirm the Examiner's decision rejecting claim 18 under § 102. We affirm the Examiner's decision rejecting claims 1-11, 15-17, and 19-21under§103. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(±). AFFIRMED 7 Copy with citationCopy as parenthetical citation