Ex parte SMITH

Board of Patent Appeals and Interferences

Mar 11, 1998

08037567 (B.P.A.I. Mar. 11, 1998)

Application for patent filed March 25, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JERRY R. SMITH
_____________
Appeal No. 96-2515
Application 08/037,5671
______________
ON BRIEF
_______________
Before URYNOWICZ, JERRY SMITH and BARRETT, Administrative Patent Judges.
URYNOWICZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1-7 and 9-20. The examiner has indicated that
claim 8 would be allowable if rewritten in independent form.
The invention pertains to a transducer device for the ear. Claim 1 is illustrative and reads as
Appeal No. 96-2515
Application 08/037,567
2
follows:
1. A transducer device operative to permit two-way communication between a user and
another party, said transducer device adapted to be placed proximately to the external auditory canal of a
user’s ear in order for the user to interface with communications apparatus and operative to produce audible
output in response to input signals received from said communications apparatus and operative to produced
output signals in response to audible input for transmission by said communications apparatus, comprising:
(a) a housing sized and configured to be positioned in a mounted state at a location
proximately to the external auditory canal of the user’s ear;
(b) a speaker element disposed in said housing in communication with said communications
apparatus, said speaker element operative to receive input signals and produce the audible output in response
thereto;
(c) a microphone element disposed in said housing in communication with said
communications apparatus, said microphone element oriented proximely to the ear when in the mounted state
and operative to receive audible input from a user and produce output signals in response thereto; and
(d) isolation means for acoustically isolating said microphone element sufficiently from said
speaker element such that the audible output from said speaker element does not create feedback to said
microphone element, said transducer device thereby operative to permit two-way communication between a
user and another party.

The references relied upon by the examiner are:
Konomi (Konomi ‘428) 4,516,428 May 14, 1985
Konomi (Konomi ‘867) 4,588,867 May 13, 1986
Moseley 5,001,763 Mar. 19, 1991
The appealed claims stand rejected as follows:
1. Claims 1-3, 7, 9-14 and 16-20 are rejected under 35U.S.C. § 102(b) as anticipated by
Konomi ‘867.
Appeal No. 96-2515
Application 08/037,567
3
2. Claim 15 is rejected under 35 U.S.C. § 102(b) as anticipated by Moseley.
3. Claims 1-4 are rejected under 35 U.S.C. § 102(b) as anticipated by Konomi ‘428.
4. Claims 4-6 are rejected under 35 U.S.C. § 103 as unpatentable over Konomi ‘867 in
view of Konomi ‘428.
The respective positions of the examiner and the appellant with regard to the propriety of
these rejections are set forth in the final rejection (Paper No. 8 1/2) and the examiner's answer and
supplemental answer (Paper Nos. 14 and 16, respectively) and the appellant's brief (Paper No. 13) and reply
brief (Paper No. 15).
Appellant's Invention
Appellant discloses a speaker and a microphone disposed within a housing to be positioned at
the external auditory canal of a user’s ear. The speaker receives input signals from communications apparatus
and produces an audible output in response thereto. The microphone receives audible input from the user and
produces output signals which may be transmitted by the communications apparatus. The microphone and the
speaker are acoustically isolated from one another such that the audible output from the speaker element does
not create feedback to the microphone.
The Rejection of Claims 1-3, 7, 9-14 and 16-20
under 35 U.S.C. § 102(b) over Konomi ‘867
At page 6 of its brief, appellant states that independent claims 1 and 16 fall. Considered with
Appeal No. 96-2515
Application 08/037,567
4
the fact that these claims are not specifically argued in the brief, the statement is taken to mean that the
examiner’s final rejection of these claims is not challenged on appeal. Accordingly, the rejection of claims 1
and 16 is sustained. Otherwise, appellant contends that the final rejection of his remaining claims should not
be sustained.
With respect to claim 2, which depends from claim 1, appellant argues that Konomi ‘867
does not disclose an acoustical dampening material between the speaker element and the microphone
element. We are not persuaded by this argument. In Fig. 5, Konomi shows an ear microphone with at least
the left vertical portion of dampening material 15, and dampening material 4, between speaker element 9 and
microphone element 2, 3. In a further embodiment, Fig. 6, Konomi shows dampening material 15 between
speaker element 9 and microphone element 2, 3.
With respect to claims 9 and 17, which depend from claims 1 and 16, respectively, appellant
asserts that Konomi ‘867 does not have an acoustic guide associated with the microphone element. We
disagree. We agree with the examiner that portion 2c of the ear microphone acts as an acoustic guide, and it
is evident that, as part of the ear microphone, it is associated with microphone element 3. This guide
inherently directs sound from the inner ear. Because the examiner relies on portion 2c, appellant’s sole
argument to the effect that portion 2b is not an acoustic guide is not relevant.
We are also of the opinion that Konomi’s pickup piece 2 is an acoustic guide. Speech of the
wearer is conducted to piece 2 as vibration which reaches microphone element 3 (column 3, lines 9-16).
Appeal No. 96-2515
Application 08/037,567
5
It is appellant’s position that Konomi ‘867 does not teach first and second acoustic guides
that are coaxial with one another as recited in dependent claim 11. Appellant contends, without elaboration,
that while Figs. 5 and 6 of the reference may disclose first and second acoustic guides, these guides are not
coaxial. This is not persuasive. For example, in Fig. 5 guide 6 is within guide 2c, and the two guides are
clearly coaxial.
Concerning claim 13, we agree with the examiner that Konomi’s waveguides have portions
thereof oriented orthogonally with respect to one another. Although the acoustic guides 2c and 6 in Fig. 5 of
the reference are not themselves orthogonal, the end face or portion of guide 6 at 6c is orthogonal to guide 2c
along its axis.
With respect to claims 14 and 20, appellant contends that the language of these claims is not
met by Fig. 5 of Konomi because the claims require that the guides be parallel, and guides 2b and 6 of
Konomi converge, and because the guides do not have outer portions in transverse planes. This contention is
not persuasive because guides 6 and 2c of the reference are parallel in the same sense that appellant’s guides
102 and 104 of its Fig. 5 are parallel. Furthermore, the guide openings at the left ends of the guides are in
“different transverse planes” as recited in claims 14 and 20.
Claims 3, 7, 10, 12, 18 and 19 are not separately argued and fall with claims 1, 2, 9, 11, 13,
14, 16, 17 and 20.
Appeal No. 96-2515
Application 08/037,567
6
The Rejection of Claim 15 under 35 U.S.C. § 102(b)
over Moseley
With respect to this rejection, appellant argues that Moseley does not teach that the input
transducer element 34 (microphone) located within the earphone housing 32 is capable of receiving audio
input from the user, and that the primary audio output vector and the primary audio input vector are oppositely
directed.
We will not sustain this rejection. Appellant is correct that the primary audio output vector
with respect to the output transducer 36 of Moseley is directed toward the user’s ear and that the primary
audio input vector with respect to the input transducer 34 is likewise directed toward the user’s ear. At
column 5, lines 41-43, Moseley discloses that the inside edges of the hollowed pole center has smooth
conically expanding sides 62 to direct the acoustical signal source to the input diaphragm.
Although we will not sustain the rejection for the reason given above, we are not persuaded
by the first of appellant’s two arguments. The first argument is not commensurate in scope with claim 15. In
paragraph (c), the claim recites “said microphone element oriented proximately to the ear when in the
mounted state and operative to receive audible input and produce output signals in response thereto,”. The
claim does not require that the audible input is from the user. The quoted language, above, is met by
Moseley’s teaching with respect to its disclosed earphones that a first electroacoustic transducer may be an
input transducer for converting sound waves to electric waves. See, for example, column 3, lines 17-22 and
Appeal No. 96-2515
Application 08/037,567
7
input transducer 34 of Fig. 2A.
The Rejection of Claims 1-4 under 35 U.S.C. § 102
as Anticipated by Konomi ‘428
It is the examiner’s position that these claims are anticipated by the embodiment illustrated in
Fig. 5 of Konomi ‘428.
Appellant argues with respect to dependent claim 2 that the ‘428 patent does not teach a
layer of acoustic dampening material interposed between the speaker element and the microphone element.
As to dependent claim 4, appellant contends that, as illustrated by its various embodiments such as in Figs. 3
and 5, the primary audio output vector and the primary audio input vector are diametrically opposed.
Appellant asserts that due to the cantilevered orientation of the acoustic guide G associated with speaker E in
Fig. 5 of Konomi ‘428, the feature recited in claim 4 indicating the vectors are in opposite directions is not
taught by the reference.
We disagree with appellant’s argument and will sustain this rejection of claims 1-4. With
respect to dependent claim 2, in Fig. 5 of the ‘428 patent, Konomi shows a layer of acoustic dampening
material comprising a vertical layer comprising the left side of dampening material F that is interposed between
the speaker element E and the microphone A.
As to claim 4, there is no recitation that the vectors are diametrically opposed; the claim
merely indicates that the microphone element and the speaker element are oriented so that their vectors are in
Appeal No. 96-2515
Application 08/037,567
8
opposite directions. The microphone and speaker elements A and E, respectively, are clearly oriented in Fig.
5 of the ‘428 patent so that their vectors are in opposite directions. The fact that the axis of the acoustic guide
G of the reference is oriented to be slightly angular with respect to the direction of the microphone input
vector and that the guide causes the output vector of the speaker to assume a slightly modified direction is not
relevant. However, even if claim 4 required that the input vector and the output vector must be oppositely
directed, the vectors of the reference are so oriented in that the output vector is directed toward the inner ear
of the wearer and the input vector is directed away from the inner ear.
Claim 3 is not seperately argued and falls with claims 1, 2 and 4.
The Rejection of Claims 4-6 under 35 U.S.C. §103
as Unpatentable over Konomi ‘867 in view of Konomi ‘824
The examiner’s position with respect to this rejection is that it would have been obvious for
one of ordinary skill in the art to substitute microphone apparatus A, Fig. 3A, of Konomi ‘824 for the
microphone apparatus 3 in the earphone of Fig. 5 of Konomi ‘867.
With respect to claim 4, appellant argues that Konomi ‘867 does not teach the structure of
the microphone and the speaker elements having vectors in opposite directions and that, from reading Konomi
‘428, it is not clear what the actual orientation of the input vector of microphone A is.
Appellant contends, even assuming that this input vector is directed oppositely from the output
vector of the speaker element, it would not have been obvious to substitute the electrostatic ear microphone A
Appeal No. 96-2515
Application 08/037,567
9
of Konomi ‘428 for the piezoelectric microphone 3 in Konomi ‘867. It is asserted that the input vector of
piezoelectric device 3 is not in the opposite direction of the output vector for speaker 9 in Konomi ‘867 and it
would destroy this teaching to substitute for piezoelectric piece 3, a microphone element having both a
different construction entirely and a different input vector orientation.
With respect to claim 6, appellant argues to the effect that none of the damping means or
isolation material of either reference is in contact with piezoelectric material 3.
We will sustain this rejection of claims 4-6. With respect to claim 4, it is considered apparent
that the microphone A and speaker element 9 would have vectors in opposite directions. Speaker 9 of
Konomi ‘867 has its output vector in the direction of the user’s ear, to the left as Fig. 5 is viewed. In contrast,
microphone element A of Konomi ‘428 has its primary input vector away from the user’s ear. This is clear
from the fact that vibrating electrode 6 is perpendicular to the speech of the wearer, which is conducted to
pickup element B and is converted into electrical signals by microphone A.
We do not agree with appellant that combining the teachings of the two references would
have been destructive and unobvious. The Konomi ‘428 patent alone teaches that microphone apparatus A
(Fig. 3A) for use in the earphone of Fig. 5 could be substituted for dissimilar microphone apparatus in the
similarly constructed earphone of Fig. 1 to produce an operative device. The earphone of Fig. 1 of Konomi
‘428 is identical to the earphone illustrated in Fig. 5 of Konomi ‘867, and the
Appeal No. 96-2515
Application 08/037,567
10
teaching of Konomi ‘428 in its Figs. 1 and 5 would have suggested to one of ordinary skill in the art to
substitute microphone apparatus A of the reference for the microphone apparatus 3 in the earphone of Fig. 5
of Konomi ‘867.
Claim 6 recites that the microphone element contacts the layer of acoustical damping material.
Appellant argues the only damping material in the embodiments of Konomi ‘867 are elements 4, 6, 7 and 17
and none of the embodiments shows piezoelectric element 3 in contact with any of them. The examiner’s
position is that, with respect to Fig. 6, pickup piece 2 and piezoelectric element 3 comprise a microphone
element that contacts damping layer 15. Appellant has not addressed the examiner’s position, and an
inspection of Fig. 6 shows that microphone element 2,3 contacts acoustical damping material 14 and 15.
Claim 5 is not separately argued and it falls with claims 4 and 6.
Summary
In summary:
a) the decision of the examiner to reject claims 1-3, 7, 9-14 and 16-21 under 35 U.S.C
§ 102(b) as anticipated by Konomi ‘867 is sustained.
b) the decision of the examiner to reject claims 1- 4 under 35 U.S.C. § 102(b) as
anticipated by Konomi ‘428 is sustained.
c) the decision of the examiner to reject claims 4-6 under 35 U.S.C. § 103 as unpatentable
Appeal No. 96-2515
Application 08/037,567
11
over Konomi ‘867 in view of Konomi ‘428 is sustained.
d) the decision of the examiner to reject claim 15 under 35 U.S.C. § 102(b) as anticipated by
Moseley is reversed.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
STANLEY M. URYNOWICZ )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LEE BARRETT )
Administrative Patent Judge )
Appeal No. 96-2515
Application 08/037,567
12

Appeal No. 96-2515
Application 08/037,567
13
TIMOTHY J. MARTIN, P.C.
TIMOTHY J. MARTIN
CARL SCHAUKOWITCH
9250 W. 5th AVE.,
STE. 200
LAKEWOOD, CO 80226