Ex Parte Smith

Board of Patent Appeals and Interferences

Aug 23, 2002

08478289 (B.P.A.I. Aug. 23, 2002)

-1-
The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte RANDALL C. SMITH
________________
Appeal No. 1998-2612
Application 08/478,289
________________
ON BRIEF
________________
Before HAIRSTON, JERRY SMITH and LALL, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 13, 16 and 17. Claims 1-
11 have been cancelled. Claims 12, 14 and 15 stand withdrawn
from consideration as being directed to a non-elected invention.
An amendment after final rejection was filed on October 27, 1997
but was denied entry by the examiner.
Appeal No. 1998-2612
Application 08/478,289
-2-
The disclosed invention pertains to an apparatus for
patching an outboard accessory device into a signal path of a
multi-channel music amplifier. More particularly, an effect-mix
variable device is coupled between send and receive terminals
which are optionally coupled to the outboard accessory device.
The effect-mix variable device is controllable by a user to
combine affected signal received from the outboard accessory
device with unaffected signal received from the send terminal.
Representative claim 13 is reproduced as follows:
13. An apparatus for patching an outboard accessory device
into a signal path of a multi-channel amplifier, the apparatus
comprising:

a plurality of variable attenuators each coupled to a
particular channel in the multi-channel amplifier for controlling
a channel signal amplitude;
a common effect-send terminal alternately coupled to one of
the plurality of variable attenuators for receiving an output
signal from the multi-channel amplifier, the common effect-send
terminal optionally coupled to an input of an outboard accessory
device;
a common effect-receive terminal optionally coupled to an
output of the outboard accessory device for receiving an outboard
output signal;
an effect-mix variable device which is electrically coupled
in parallel with the common effect send and receive terminals and
which is controllable by a user to combine a first user-
selectable amount of signal directly from the common effect send
terminal with a second user-selectable amount of signal directly
from the common effect receive terminal to form a mixed signal;
and
Appeal No. 1998-2612
Application 08/478,289
-3-
a variably controllable amplifier means coupled to the
effect-mix variable device for receiving the mixed signal and
delivering an amplified output signal to an output terminal.
The examiner relies on the following references:
Moog 4,180,707 Dec. 25, 1979
The admitted prior art disclosed by appellant.
Claims 13, 16 and 17 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness the examiner offers the
admitted prior art in view of Moog.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner’s answer.
Appeal No. 1998-2612
Application 08/478,289
-4-
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 13, 16 and 17. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Appeal No. 1998-2612
Application 08/478,289
-5-
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
by appellant [see 37 CFR § 1.192(a)].
With respect to claim 13, the examiner finds that the
admitted prior art teaches the claimed invention except for an
effect-mix variable device electrically coupled in parallel with
the common effect send and receive terminals, wherein the effect-
mix variable device is controllable by a user to provide an
effect output signal. The examiner cites Moog as teaching a
Appeal No. 1998-2612
Application 08/478,289
-6-
distortion sound effects circuit with its input coupled to the
clean output, and the output distortion circuit is proportionally
mixed with the clean output. The examiner finds that it would
have been obvious to the artisan to incorporate the effect-mix
variable device of Moog into the admitted prior art system
[answer, pages 3-4].
Appellant argues that there is no teaching or suggestion
to include the mixing circuitry of Moog into the admitted prior
art because the admitted prior art already includes the mixing
circuitry for blending affected signal with unaffected signal to
allow a user to precisely select to what degree the outboard
accessory device affects the signal. Appellant asserts that the
addition of mixing circuitry to the admitted prior art would be
superfluous and redundant [brief, pages 5-7].
The examiner responds that the proposed modification of
the admitted prior art is to only incorporate the mixing
circuitry as taught by Moog, not the whole outboard accessory
device as disclosed in Moog so that there would be no redundant
mixing circuitry after the modification [answer, page 6].
Appellant reiterates that the addition of mixing circuitry to the
admitted prior art is still redundant and superfluous [reply
brief].
Appeal No. 1998-2612
Application 08/478,289
-7-
We will not sustain the examiner’s rejection of claim 13.
We agree with appellant that there is no reason for the artisan
to add the circuitry of Moog, even if only the mixer, to the
admitted prior art disclosed in Figure 1 of the application. As
noted by appellant, the admitted prior art circuitry has already
performed all the desired mixing. The only basis for plugging
the Moog mixer between terminals 12 and 13 of the admitted prior
art comes from an improper attempt to reconstruct appellant’s
claimed invention in hindsight. Therefore, we will not sustain
the rejection as formulated by the examiner.
Since claim 16 depends from claim 13, we also do not
sustain the examiner’s rejection of claim 16. We note for the
record, however, that appellant’s separate argument for the
patentability of claim 16 is also correct. The examiner’s
finding that Moog is capable of being configured so that the
first and second user-selectable amounts are inversely related
does not support the obviousness of the claimed recitation that
the first and second user-selectable amounts are necessarily
inversely related. Moog does not teach or suggest that the
claimed relationship be achieved.
Appeal No. 1998-2612
Application 08/478,289
-8-
With respect to independent claim 17, we also do not
sustain the examiner’s rejection of claim 17 for reasons
discussed above with respect to claim 13. We also agree with
appellant’s separate argument that the proposed modification of
the admitted prior art with the circuitry of Moog would still not
provide a fixed resistance between the common effect send and
receive terminals nor would elements 34 and 38 of Moog be
electrically coupled in parallel with the common effect send and
receive terminals as recited in claim 17.
Appeal No. 1998-2612
Application 08/478,289
-9-
In summary, we have not sustained the examiner’s
rejection with respect to any of the claims on appeal.
Therefore, the decision of the examiner rejecting claims 13, 16
and 17 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
js/ki
Appeal No. 1998-2612
Application 08/478,289
-10-
James D. Ivey
3025 Totterdell Street
Oakland, CA 94611-1742