Ex Parte Sinclair

Patent Trial and Appeal Board

Jan 31, 2013

11166636 (P.T.A.B. Jan. 31, 2013)

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.
11/166,636 06/24/2005 Michael J. Sinclair 312604.02 6705
27366 7590 01/31/2013
WESTMAN CHAMPLIN (MICROSOFT CORPORATION)
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402
EXAMINER
KIM, PAUL D
ART UNIT PAPER NUMBER
3729
MAIL DATE DELIVERY MODE
01/31/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL J. SINCLAIR
____________________

Appeal 2010-006174
Application 11/166,636
Technology Center 3700
____________________

Before EDWARD A. BROWN, JAMES P. CALVE, and
CARL M. DEFRANCO, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-006174
Application 11/166,636

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 15-20. App. Br. 2. Claims 1-14 have been
withdrawn. Id. We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
We reverse.

THE CLAIMED SUBJECT MATTER
Claim 15, reproduced below, is the sole independent claim on appeal
and illustrative of the appealed subject matter:
15. A method of manufacturing an
accelerometer, the method comprising:
manufacturing a casing;
installing an electret, a back plate and an
electronic circuit in the casing;
installing a diaphragm in the casing; and
sealing the casing to isolate the diaphragm
from external acoustic signals.

THE REJECTIONS
Appellant requests review of the following rejections:
1. Claims 15 and 17-19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tanabe (US 2003/0068055 A1; pub. Apr. 10, 2003) and
Valderrama Reyes (US 2004/0255679 A1; pub. Dec. 23, 2004)
2. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Tanabe, Valderrama Reyes, and Varadan (US 5,366,664; iss. Nov. 22,
1994).
Appeal 2010-006174
Application 11/166,636

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3. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Tanabe, Valderrama Reyes, and Nakagawa (US 4,281,222; iss. Jul. 28,
1981).

ANALYSIS
Rejection of claims 15 and 17-19 – Tanabe and Valderrama Reyes
Claims 15 and 18
Claim 15 is directed to a method of manufacturing an accelerometer
comprising, inter alia, "installing a diaphragm in the casing" and "sealing
the casing to isolate the diaphragm from external acoustic signals." We
construe the claim terms "sealing" and "isolate" in view of Appellant's
Specification to mean that the casing itself is sealed such that the diaphragm
is isolated from external acoustic signals, so that the diaphragm is not
affected by acoustic waves. See App. Br. 2; Spec. 12, ll. 23-25, Figs. 5, 6.
The Examiner found that Tanabe discloses a process of making an
electret microphone comprising installing a diaphragm 10 in a casing 16
(shield case), and sealing the casing 16, but that Tanabe does not disclose
sealing the casing to isolate the diaphragm from external signals. Ans. 3
(citing Tanabe, paras. [0027] - [0031]; fig. 2).
The Examiner also found that Valderrama Reyes teaches a process of
making a microphone having an external high-resistant polymer casing and
multiple lateral insulating layers to prevent interference from external
acoustic noise. Ans. 3 (citing Valderrama Reyes, para. [0028]). The
Examiner concluded that it would have been obvious to one of ordinary skill
in the art to modify Tanabe's casing with Valderrama Reyes's teaching of an
external high-resistant polymer casing and multiple lateral insulating layers
to prevent interference from external acoustic noise in operation. Ans. 3.
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Application 11/166,636

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Appellant contends that Valderrama Reyes does not disclose sealing a
casing to isolate a diaphragm from external acoustic signals. App. Br. 3.
Valderrama Reyes describes a sensor array 210 depicted in Figure 3, that
includes microphone-type acoustic sensors 315, and states that "[t]he
microphones have an external high-resistant polymer casing and multiple
lateral insulating layers to prevent interference from external acoustic noise
when in operation." Valderrama Reyes, para. [0028](emphasis added).
Appellant contends that this reference to the polymer casing being "external"
indicates that the insulating layers are within (internal to) the polymer
casing, and thus do not seal the external polymer casing. App. Br. 4.
Appellant also contends that persons skilled in the art would not interpret
Valderrama Reyes as using a casing that is sealed because the microphone
"is provided to capture a sound signal of a mill such that 'the sound signal
produced by mill 100 is not altered.'" App. Br. 4 (citing Valderrama Reyes,
para. [0029]). Appellant contends that sealing the casing would keep the
microphone from capturing the actual sound signal and thus would destroy
the functionality of Valderrama Reyes. App. Br. 4. Appellant also contends
that persons skilled in the art "would recognize that the casing must be open
and not sealed in order to receive the sound signal produced by mill 100
without alteration." Id. (emphasis added).
In response, the Examiner stated that, according to paragraph [0028]
of Valderrama Reyes, "the microphone has [an] external high-resistance
polymer casing (for sealing) to prevent interference from external acoustic
noise when in operation[,]" and therefore the microphone that is produced by
Tanabe "is sealed or cased by the external high-resistance polymer casing
for preventing interference from external acoustic noise." Ans. 6.
Appeal 2010-006174
Application 11/166,636

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We agree with Appellant that Valderrama Reyes' disclosure that the
external high-resistant polymer casing and multiple lateral insulating layers
prevent interference from external acoustic noise does not support the
Examiner's finding that Valderrama Reyes discloses sealing the external
polymer casing, much less to isolate the diaphragm from external acoustic
signals so that the diaphragm is not affected by acoustic signals.
We also agree with Appellant that the Examiner has not articulated an
adequate reason with a rational underpinning as to why one of ordinary skill
in the art would have sealed the casing of Tanabe's microphone "to isolate
the diaphragm from external acoustic signals." Like Valderrama Reyes'
microphone, Tanabe's device is also a microphone. Tanabe states that
"[w]hen the diaphragm electrode 10 is vibrated by air entering the frame 8,
the capacitance of the condenser changes with the vibration of the
diaphragm electrode 10 to generate an electric signal." See Tanabe, para.
[0031]. In Tanabe, air that enters the frame 8 through an opening in the case
16 affects the diaphragm electrode 10 to enable it to vibrate and the device
to function as a capacitive microphone. Accordingly, we do not sustain the
rejection of claim 15, and claims 17 and 19, which depend therefrom.

Rejection of claim 16 – Tanabe, Valderrama Reyes, and Varadan
Claim 16 depends from claim 15 and recites "sealing the casing
comprises placing a plug in a hole of the casing." The Examiner relied on
Varadan for teaching an electromagnetic shielding material (EMI/EMC)
gasket for enclosing an opening to prevent interference from external
acoustic noise. Ans. 4 (citing Varadan, col. 1, ll. 10-35). The Examiner
concluded that it would have been obvious to modify the Tanabe electret
Appeal 2010-006174
Application 11/166,636

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microphone, as modified by Valderrama Reyes, by providing Varadan's
electromagnetic shielding material to prevent interference from external
acoustic noise in operation. Ans. 4.
Appellant correctly contends that Varadan describes using an
EMI/EMC gasket to surround an opening, which is not a disclosure of
placing a plug in a hole of an enclosure. App. Br. 6. The Examiner did not
make a finding that Varadan's gasket is used to prevent interference from
external acoustic noise. Appellant also contends that persons skilled in the
art would not apply Varadan's electromagnetic (noise) isolation techniques
to the microphones of Tanabe and Valderrama Reyes, as the functionality of
these microphones would be destroyed because air must be able to enter
Tanabe's microphone for it to work, and Valderrama Reyes' microphone
would not be able to capture the actual sound signal produced by the mill.
Id. at 7. We agree that the Examiner did not articulate an adequate reason
with a rational underpinning as to why one of ordinary skill in the art would
have modified the microphone of either Tanabe or Valderrama Reyes in
view of Varadan by sealing the casing by plugging a hole to prevent
interference from external acoustic noise in operation. Accordingly, we do
not sustain the rejection of claim 16.

Rejection of claim 20 – Tanabe, Valderrama Reyes, and Nakagawa
Claim 20 depends from claim 15 and recites "further comprising
installing a dampening material that is in contact with the diaphragm before
sealing the casing." The Examiner relied on Nakagawa for teaching a
process of making an electret microphone including "a damping material
(21) in contact with the diaphragm." Ans. 4 (citing Nakagawa, fig. 2).
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Appellant contends that Nakagawa's dampening material 21 is not "in
contact with" diaphragm 16 in Figure 2. App. Br. 2; see also Reply Br. 1-2.
We agree. Figure 2 of Nakagawa shows that the back electrode 19 is
positioned between the damper material 21 and diaphragm 16. The damper
material 21 is spaced from, not in contact with, diaphragm 16, in
Nakagawa's electret microphone. The Examiner's application of Nakagawa
with respect to claim 20 does not cure the deficiencies of Tanabe and
Valderrama Reyes discussed supra in regard to the rejection of claim 15.
We do not sustain the rejection of claim 20.

DECISION
The Examiner's decision rejecting claims 15-20 is REVERSED.

REVERSED

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