Ex Parte Rosener et al

Patent Trial and Appeal Board

Jun 24, 2016

12695486 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/695,486 01/28/2010
32681 7590 06/28/2016
PLANTRONICS, INC.
IP Department/Legal
345 ENCINAL STREET
P.O. BOX635
SANTA CRUZ, CA 95060-0635
FIRST NAMED INVENTOR
Douglas K. Rosener
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.
01-7584/US 7998
EXAMINER
EASON, MATTHEW A
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
06/28/2016 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@plantronics.com
francois .devilliers@plantronics.com
neely.frazier@plantronics.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS K. ROSENER and BARRY J. LEE
Appeal2014-008523
Application 12/695,486
Technology Center 2600
Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-008523
Application 12/695,486
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
5, 8, 9, 12-15, and 18-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The invention relates to a capacitive touch sensor that includes an
electrode that is directly coupled to a sensor circuit, and an additional
"floating" electrode that is not mechanically connected to the sensor circuit
(Spec. i-fi-120-22). Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A headset comprising:
a decoupled electrically conductive material disposed
within proximity of a headset surface adapted to be brought in
contact with a user ear, wherein a first capacitance is formed
when the headset surface is brought in contact with the user ear,
wherein the headset surface comprises an insulating material
disposed over the decoupled electrically conductive material, the
insulating material configured to contact the user ear when the
headset is in a donned state;
a coupled electrically conductive material disposed in
proximity to the decoupled electrically conductive material, the
coupled electrically conductive material and decoupled
electrically conductive material forming a capacitor having a
second capacitance in series with the first capacitance; and
a processor coupled to the coupled electrically conductive
material adapted to receive signals from the coupled electrically
conductive material to determine a measured capacitance
associated with the first capacitance and the second capacitance
indicating a headset donned state or a headset doffed state.
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Appeal2014-008523
Application 12/695,486
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Okushima et al.
Philipp
US 2005/0001633 Al Jan. 6, 2005
US 2007/0121959 Al May 31, 2007
REJECTION
The Examiner made the following rejection:
Claims 1-5, 8, 9, 12-15, and 18-20 stand rejected under 35 U.S.C
§ 103 (a) as being unpatentable over Philipp and Okushima.
ANALYSIS
The Examiner finds the combination of Philipp and Okushima teaches
all the limitations of independent claim 1 except "wherein the headset
surface comprises an insulating material disposed over the decoupled
electrically conductive material, the insulating material configured to contact
the user ear when the headset is in a donned state" (Final Act. 2--4).
However, the Examiner finds this limitation "would have been obvious to
try with the limited choices of placement to locate the decoupled electrode
[of Okushima] behind the insulating material of the earpad 106 [of Philipp]
as a matter of design choice" (Final Act. 4). Appellants contend Okushima
teaches away from placing the decoupled touch electrode beneath an
insulating material and that such placement is not a mere design choice
(App. Br. 8-12).
Philipp discloses a headset that detects user presence and includes a
sense plate 160 underneath a cover 106, with a sense plate connector 154
connecting the sense plate to a charge sensing circuit 152 (Philipp, i-fi-1 57,
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Appeal2014-008523
Application 12/695,486
59---60; Fig. 3). Okushima discloses a human body sensor with an electrode
A inside a sensor case 11 and connected to a detection circuit 40, and an
additional touch electrode A outside of the sensor case for receiving human
contact (Okushima, i-fi-165-66; Figs. 4A and 4B). Thus, we find Philipp
teaches "a coupled electrically conductive material" which is beneath an
"insulating material," and Okushima teaches "a decoupled electrically
conductive material" but which is not located beneath an "insulating
material." Thus, as the Examiner concedes (Final Act. 4 ), the references do
not specifically teach "an insulating material disposed over the decoupled
electrically conductive material," as recited in claim 1, and we find such
arrangement would not have been obvious.
We are persuaded by Appellants' argument (App. Br. 8-12) that the
Examiner erred in finding it would have been obvious to try, or a matter of
design choice, to locate Okushima's touch electrode (i.e., the "decoupled
electrically conductive material") beneath Philipp's headset cover 106 (i.e.,
the "insulating material"). The Supreme Court has explained the obvious-to-
try rationale as follows:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 412 (2007). In this case,
however, the Examiner has not shown there was any design need or market
pressure to solve an identified problem that would lead to the claimed
invention. The Examiner asserts that locating "the decoupled electrode
behind the insulating material of the earpad 106 ... would be more pleasant
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Appeal2014-008523
Application 12/695,486
to wear for extended periods than a copper foil directly touching the ear of
the user" (Final Act. 4--5). However, we find one of ordinary skill in the art
would not have considered the comfort of Philipp' s headset cover 106 as
answering a design need to solve a problem relating to Okushima's
invention, which is drawn toward an "object detection sensor suitably used
as, for example, a switch for opening and closing operations of a trunk of a
vehicle" (Okushima, i-f 2). Therefore, we find it would not have been
obvious to try placing Okushima's touch electrode beneath an insulating
material such as Philipp' s headset cover.
Further, we find it would not have been a matter of mere design
choice to locate Okushima's touch electrode beneath an insulating material.
The Examiner has not shown that Okushima's invention would perform
equally well with the touch electrode inside the sensor case. Rather,
Okushima's placement of the touch electrode outside the sensor case is part
of a solution to a recognized problem, namely, weakened sensitivity in a
prior art sensor with a sole electrode located inside the sensor case (see
Okushima, i-f 9). To solve that problem, Okushima added the touch electrode
outside the sensor case to provide the required capacitive sensitivity
(Okushima, i-fi-110-13, 65).
We are, therefore, constrained by the record to find the Examiner
erred in rejecting independent claim 1, independent claims 8 and 14 which
recite commensurate limitations, and dependent claims 2-5, 9, 12, 13, 15,
and 18-20 for similar reasons.
CONCLUSION
The Examiner erred in rejecting claims 1-5, 8, 9, 12-15, and 18-20
under 35 U.S.C. § 103(a).
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Application 12/695,486
DECISION
For the above reasons, the Examiner's rejection of claims 1-5, 8, 9,
12-15, and 18-20 is reversed.
REVERSED
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