Ex Parte Rosener et al

Patent Trial and Appeal Board

Mar 17, 2017

12501961 (P.T.A.B. Mar. 17, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/501,961 07/13/2009 Doug K Rosener 01-7563/US 5314
32681 7590
PLANTRONICS, INC.
IP Department/Legal
345 ENCINAL STREET
P.O. BOX 635
SANTA CRUZ, CA 95060-0635
EXAMINER
BLAIR, KILE O
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
03/21/2017 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):
patents @ plantronic s. com
francois.devilliers@plantronics.com
neely. frazier @ plan tronics. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUG K ROSENER and CASEY G. PETERSON
Appeal 2016-006834
Application 12/501,9611
Technology Center 2600
Before STEPHEN C. SIU, JAMES R. HUGHES, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 2, 5—10, 14—17, 19, and 21, which constitute all of the claims
pending in this application. Claims 3, 4, 11—13, 18, and 20 have been
cancelled. App. Br. 15—17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Plantronics, Inc. as the real party in interest. App. Br.
1.
Appeal 2016-006834
Application 12/501,961
THE INVENTION
The disclosed and claimed invention is directed to improved methods
and apparatuses for determining whether a headset is currently being worn
or not worn. See Spec. 2, 16—17.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A headset comprising:
a speaker comprising a diaphragm, a non-conducting front
cover disposed over the diaphragm and comprising a plurality of
apertures through which sound waves generated by the
diaphragm are output, a voice coil coupled to the diaphragm, and
a magnetic circuit element adapted to form an electrode, wherein
the magnetic circuit element is configured to act on the voice
coil; and
a processor adapted to receive signals from the magnetic
circuit element to determine a measured capacitance using the
magnetic circuit element.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Nam
Skillicom et al.
Siegel et al.
Sacha et al.
Hellfalk et al.
US 2006/0233413 Al
US 7,349,551 B2
US 2008/0112567 Al
US 2008/0292126 Al
US 2009/0124286 Al
Oct. 19, 2006
Mar. 25, 2008
May 15,2008
Nov. 27, 2008
May 14, 2009
REJECTIONS
Rl. Claims 1, 2, 5, 8—10, 14, and 15 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Nam in view of Skillicom.
Final Act. 2—6.
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Appeal 2016-006834
Application 12/501,961
R2. Claims 6 and 16 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Nam in view of Skillicom and Hellfalk.
Final Act. 7.
R.3 Claim 7 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Nam in view of Skillicom, Hellfalk, and Sacha.
Final Act. 8.
R4. Claims 17, 19, and 21 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Nam in view of Skillicom, Hellfalk, and
Siegel. Final Act. 8—11.
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 not persuaded by Appellants’ arguments regarding the pending
claims, and we incorporate herein and adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 2—11), and (2) the reasons and rebuttals set forth in the
Examiner’s Answer in response to Appellants’ arguments (Ans. 11—19). We
incorporate such findings, reasons, and rebuttals herein by reference unless
otherwise noted. However, we highlight and address specific findings and
arguments for emphasis as follows.2
2 Rather than reiterate the entirety of the arguments of Appellants and the
positions of the Examiner, we refer to the Appeal Brief (filed Oct. 28, 2015);
the Reply Brief (filed June 27, 2016); the Final Office Action (mailed June
16, 2015); and the Examiner's Answer (mailed April 28, 2016) for the
respective details.
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Appeal 2016-006834
Application 12/501,961
Appellants argue the Examiner erred in modifying Nam’s conductive
protective cover in light of Skillicom’s non-conducting front cover. App.
Br. 7—10; Reply Br. 14—16. Specifically, Appellants argue Nam teaches
away from using a non-conductive cover and, therefore, the person of
ordinary skill in the art would not have combined the teachings of Nam with
Skillicom’s teaching of non-conductive components. App. Br. 8—10 (citing
Nam 124); Reply Br. 14—16 (citing Nam| 24).
The Examiner finds a person of ordinary skill in the art, in light of the
combined teachings of Nam and Skillicom, would have modified Nam’s
conductive protective cover and, as a matter of designer preference, made it
non-conductive. Final Act. 3^4. The Examiner further finds Nam does not
state a reason why its protective cover has to be conductive. Id.', Ans. 12—
15. The Examiner further finds that although Nam teaches that parts of the
headphone in contact with the human body must be made of a conductive
material, Nam Figure 3 shows that the protective cover is not in contact with
the human body. Ans. 15—19. Accordingly, the Examiner finds Nam does
not teach that the material of the protective cover is critical. Ans. 19.
We find Appellants have not established that the Nam teaches away
from the claimed invention because Appellants have not demonstrated that
“a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed Cir. 1994); see also Ricoh Co., Ltd. v. Quanta
Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008).
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Appeal 2016-006834
Application 12/501,961
Nam paragraph 24 states:
That is, when the user inserts the earpiece 100 or 100a into his
or her ear, the part of the earpiece 100 or 100a that comes into
broad contact with the human body is the finishing band 110 or
110a. Therefore, the finishing band 110 or 110a must be
implemented using conductive material (rubber, silicon, PVC,
etc.). The sensing line extending from the removal sensing unit
is electrically connected to the conductive finishing band 110 or
110a through the conductive yoke 102, the conductive protective
cover 108, and the conductive protective grille 109. In this case,
the finishing band 110 or 110a functions as the capacitance
sensor 200.
We agree with Appellants that Nam teaches away from using non-
conductive components for those parts which will be in contact with the
human body. However, we also agree with the Examiner that the protective
cover 108 shown in Figure 3 will not be in contact with the human body.
Accordingly, Nam’s disclosure of a conductive protective cover “does not
teach away. . . [as] it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). No reason is given for the
choice of a conductive material and because the protective cover is not in
contact with the human body, the choice of material is not critical.
Therefore, the stated preference for a conductive protective cover does not
teach away from the claimed invention. See id.', Fulton, 391 F.3d at 1201.
Accordingly, we sustain the Examiner’s rejection of claim 1, along
with the rejection of claims 9 and 14, which are argued on substantially the
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Appeal 2016-006834
Application 12/501,961
same grounds (see App. Br. 10, 11) and dependent claims 2, 5, 8, 10, and 15,
which are not separately argued (see id.).
Appellants do not argue grounds of rejection R2, R3, and R4
separately. See App. Br. 12—13. Accordingly, we sustain the rejection of
claims 6, 7, 16, 17, 19, and 21 for the same reasons as discussed above.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1, 2, 5—10, 14—17, 19, and 21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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