Ex Parte Strauser

Board of Patent Appeals and Interferences

Nov 28, 2011

11672784 (B.P.A.I. Nov. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JACK STRAUSER
____________________

Appeal 2010-002282
Application 11/672,784
Technology Center 3700
____________________

Before: EDWARD A. BROWN, CHARLES N. GREENHUT, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/672,784
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
20. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
The claims are directed to a karaoke device with integrated mixing,
echo and volume control. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A karaoke device comprising:
an enclosure;
a voice pickup element integrated into the enclosure, the
voice pickup element able to convert sound waves into an
electrical signal;
an audio input signal passing into the enclosure, the
audio input signal emanating from a DVD player;
a video input signal passing into the enclosure, the video
input signal emanating from the DVD player;
an electronic circuit within the enclosure for amplifying
the electrical signal, for controlling the amplitude of the
electrical signal and for mixing the electrical signal and the
audio input signal into a mixed audio signal;
the mixed audio signal passing out of the enclosure; and
the video input, signal passing directly out of the
enclosure on a video output signal.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sugiyama
Song
Chang
US 6,127,618
US 6,267,600 B1
US 7,203,330 B2
Oct. 3, 2000
Jul. 31, 2001
Apr. 10, 2007
Ueshima US 2004/0094018 A1 May 20, 2004

VOCOPRO DA-3700 OWNER'S MANUAL (Vocopro 2005) (hereinafter
“VocoPro”).

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REJECTIONS
Claims 1-3, 5, 7-9, and 11-14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ueshima, Sugiyama and VocoPro.
Claims 4, 6, and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ueshima, Sugiyama, VocoPro and Chang.
Claims 15, 16, and 18-20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ueshima, Sugiyama, and VocoPro and Song.
Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ueshima, Sugiyama, VocoPro, Song and Chang.

OPINION
The rejections of claims 1-3, 5, 7-9, 11-16, and 18-20 are affirmed.
Appellant argues claims 1-3, 5, 7-9 and 11-14 as a group. Br. 13-19.
Regarding each of claims 2, 3, 6, 7, 9 and 11-14, Appellant generally alleges
that the applied prior art does not render obvious the claimed subject matter.
Br. 19-21. A statement which merely points out what a claim recites will not
be considered an argument for separate patentability of the claim. See 37
C.F.R. § 41.37(c)(1)(vii). 37 C.F.R. § 41.37(c)(1)(vii) requires more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art. See In re Lovin 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Thus, we select claim 1 as the representative claim, and claims 2, 3, 5, 7-9
and 11-14 will stand or fall with claim 1. See id.
Appellant argues claims 15-16 and 18-20 as a separate group. Br. 23-
25. In rejecting claims 15-16 and 18-20 the Examiner relied upon the same
prior art and reasoning as in the rejection of claim 1. Cf. Ans. 3-5 with Ans.
10-12. The Examiner additionally relies upon Song for teachings related to
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wireless microphones. Ans. 10-12. Appellant does not contest the
Examiner’s application of Song. Rather, regarding claims 15, 16 and 18-20,
Appellant merely repeats the arguments presented regarding claim 1, and
additionally notes that Song does not cure the perceived deficiency in the
Examiner’s rejection. Br. 23-25. Thus, our resolution of the issues raised by
Appellant concerning claim 1 will also be dispositive regarding the issues
raised by Appellant concerning claims 15, 16, and 18-20.
Regarding claim 1, Appellant does not contest any of the Examiner’s
core factual findings concerning Sugiyama, VocoPro and Ueshima and we
adopt these finding as our own. Appellant contends that the Examiner’s
proposed combination is improper because there was no motivation to
combine Sugiyama or VocoPro with Ueshima because Ueshima has an
internal source of audio from the content stored on the memory chip, and
VocoPro and Sugiyama rely on a DVD player and unspecified external
source of audio, respectively. Br. 15. Appellant contends there is no reason
to have two different sources of karaoke content. Id. This argument does not
address the Examiner’s position. The Examiner proposes to substitute, not
add to, Ueshima’s internal source of content with an external source
according to the teachings of Sugiyama and VocoPro. Ans. 4-5. We are
mindful of the fact that the references themselves do not discuss the specific
advantages of the Examiner’s proposed substitution. The Federal Circuit has
stated that “rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
However, a reason, suggestion, or motivation to combine reference
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teachings need not be explicitly stated in the references themselves in order
to support such rejections. See Perfect Web Techs., Inc. v. Info USA, Inc.,
587 F. 3d 1324, 1329-30 (Fed. Cir. 2009) (citing Ball Aerosol & Specialty
Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) and
Ruiz v. A.B. Chance Co., 234 F.3d 654, 665 (Fed. Cir. 2000)). The Examiner
articulated three different reasons why one of ordinary skill in the art would
have found it desirable to substitute an external or DVD source for the
internal memory of Ueshima: reducing weight and/or power consumption of
the handheld unit, and/or allowing alternative audio and video inputs. See
Ans. 5; Fin. Rej. 4. Appellant does not discuss the Examiner’s proposed
reasons and therefore has not provided persuasive arguments as to why any
of these reasons lacks a rational underpinning. We additionally note that
mere silence on the subject of providing external content does not amount to
“teaching away” by Ueshima since Ueshima “does not criticize, discredit, or
otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004); contra Br. 17.
Appellant additionally points out the lack of specific structures, such
as a television in Sugiyama. Br. 15. Sugiyama was cited for the teaching of
providing an external signal input to supply content to a karaoke device.
Ans. 4 citing Sugiyama, col. 6, ll. 14-21. The lack of a video signal,
specifically, would not affect this teaching since the specific nature of the
signal, whether audio and video or audio alone, is not critical to it.
What a reference teaches or suggests must be examined in the
context of the knowledge, skill, and reasoning ability of a
skilled artisan. What a reference teaches a person of ordinary
skill is not limited to what a reference specifically “talks about”
or what is specifically “mentioned” or “written” in the
reference.
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Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005).
Nor is it limited to the specific structure disclosed therein. In re Nievelt, 482
F.2d 965, 968 (CCPA 1973). The relevant inquiry is whether the claimed
subject matter would have been obvious to those of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Furthermore, VocoPro is also
cited by the Examiner for this same teaching and specifically discusses a
video input and television output. Ans. 4 citing VocoPro p. 6. Thus, even if
one of ordinary skill in the art were to require the guidance of such an
express teaching, Sugiyama need not provide it since obviousness is
determined in light of the combined teachings of the cited references.
Appellant additionally argues that “none of the references show audio
and video passing into a hand-held enclosure.” Br. 17. However, first, claim
1 does not require the enclosure to be hand-held. Claim 8 recites a related,
but broader, limitation requiring the enclosure to be “in the shape of a hand-
held microphone.” Second, nonobviousness cannot be established by
attacking references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). While no single reference cited by the Examiner
discloses the feature mentioned by Appellant, a structure having such a
feature would result from applying the teachings of Sugiyama and VocoPro
to Ueshima as proposed by the Examiner.
Whenever obviousness is found with respect to the subject matter on
appeal and, as here, Appellant furnishes evidence of secondary
considerations, it is our duty to reconsider the issue of obviousness anew,
carefully weighing the evidence for and against obviousness. See, e.g., In re
Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990). Appellant furnished a
declaration (“Decl.”) dated December 23, 2008, and a supplemental
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declaration (“Supp. Decl.”) dated March 4, 2009, both of which were made
by the sole inventor Jack Strauser and allege commercial success of the
claimed invention.
In the ex parte process of examining an application for a patent, the
U.S. Patent and Trademark Office lacks the means or resources to gather
evidence which supports or refutes an applicant’s assertion of commercial
success. Consequently, the Office must rely upon applicants to provide hard
evidence thereof. In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). Gross
sales figures (see Decl. para. 4 and Supp. Decl. para. 4) and comparative
costs (see Decl. paras. 5-8; Supp. Decl. paras. 6, 9, 10) do not demonstrate
commercial success absent evidence as to market share. See, e.g., Cable
Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1026-27 (Fed. Cir.
1985); Ans. 18. Appellant’s showing that there was commercial success of
an article which embodied the invention (see Decl. para. 4, App’x I; Supp.
Decl. para. 4, App’x I and IV) is not sufficient. See Ex parte Remark, 15
USPQ2d 1498, 1502-03 (BPAI 1990). An applicant must show that the
claimed features were responsible for the commercial success of an article if
the evidence of nonobviousness is to be accorded substantial weight. See In
re Huang, 100 F.3d at 140. The inventor’s opinion as to the purchaser’s
reason for buying the product is insufficient to demonstrate a nexus between
the sales and the claimed invention. See id. While Appellant states that he
has not contributed to advertising or marketing programs for the article,
there is no evidence of record to show that retailers have not done so on his
behalf. See Supp. Decl. para. 5. The presence of Appellant’s product in
major retail outlets, along with the lower cost and retail price of Appellant’s
product as compared to his competitor’s weighs against, not in favor of, the
claimed features being responsible for the alleged commercial success.
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Displacement of the “Leadsinger” product, if it is similar to the closest prior
art described by Ueshima and priced and marketed similarly to Appellant’s
device, could be evidence of commercial success attributable to the claimed
features. See Supp. Decl. para. 7. However, the record does not contain any
hard evidence that the “Leadsinger” product is substantially the same as that
described by Ueshima. Nor does the record contain any hard evidence of the
alleged displacement in the marketplace, or that the claimed features, as
opposed to advertising, cost or price, were responsible for such a
displacement. Appendix III of Appellant’s supplemental declaration
establishes that Leadsinger was readily available online and at some retail
stores as of February 19, 2009. However, this availability is not compared
with any other time. We are mindful of the fact that obtaining actual sales
data from a competitor may prove difficult. However, without this or some
other hard evidence which supports Appellant’s assertion we are left only
with the conclusory opinions of an interested person, the sole inventor, and
few facts to buttress them. Although such opinions have some probative
value, they carry little weight when considered in light of all the evidence of
record. See, e.g., In re Brandstadter, 484 F.2d 1395, 1406 (CCPA 1973); In
re McKenna, 203 F.2d 717, 720 (CCPA 1953).
Having now considered all the evidence presented by Appellant and
weighing all the evidence anew, it is our conclusion that the evidence for
obviousness outweighs the evidence against obviousness. See, e.g., In re
Fenton, 451 F.2d 640, 643 (CCPA 1971). Accordingly we sustain the
Examiner’s rejections of claims 1-3, 5, 7-9, 11-16, and 18-20.

The rejections of claims 4, 6, 10 and 17 are reversed.
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Claims 4, 10, and 17 recite similar limitations to each other. Claim 6
depends from claim 4. The Examiner cited Sugiyama’s microphone volume
controller 16, sound effect signal generation path 18 and combining circuits
39 as a combination of switches for selecting one of three modes as recited
in the claims. Ans. 8; see Sugiyama, col. 6, ll. 14-44. Indeed, Sugiyama
describes a circuit arrangement that would appear to be capable of allowing
a user to select the relative levels of the audio, microphone and digital signal
processing inputs, thereby providing functionality similar to that claimed.
However, the gist of the invention is not the test. See W.L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir. 1983). The claims
contain a specific structure, a switch having at least three positions, for
performing that function. In an effort to make up for this deficiency, the
Examiner additionally cites Chang and VocoPro. Ans. 8-9, 14-15.
Chang teaches a microphone 9 having a switching unit moving
between ON and OFF positions of the microphone. See, e.g., Fig. 7. We find
nothing in the prior art to teach or fairly suggest using such a device to
control any inputs other than the microphone’s itself, such as a DVD player
or echo. Appellant’s own Specification is the only evidence of record
suggesting such an arrangement. However, obviousness may not be
established using hindsight or in view of the teachings or suggestions of the
inventor. W.L. Gore & Assocs., 721 F.2d at 1551, 1553. “To use the
invention as a template for its own reconstruction [is] an illogical and
inappropriate process by which to determine patentability.” Sensonics, Inc.
v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citation omitted).
It is unclear what portion of VocoPro the Examiner is referring to by
reference to “figure on pg. 1.” See Ans. 9, 14. There is no figure on page 1
of VocoPro. Thus, we are left to assume that the Examiner is referring to the
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cover page which shows VocoPro’s control panel. VocoPro’s control panel
includes separate dials for controlling the Mic, Music and Echo. A selector
switch having three positions capable of performing the claimed function is
not apparent in this figure. Thus, even if one were to incorporate VocoPro’s
teachings regarding the Mic, Music and Echo control with the disclosure of
the other prior art, it would not yield the claimed subject matter.

DECISION
The Examiner’s rejection of claims 1-3, 5, 7-9, and 11-14 as being
unpatentable over Ueshima, Sugiyama and VocoPro is affirmed.
The Examiner’s rejection of claims 15, 16, and 18-20 as being
unpatentable over Ueshima, Sugiyama, and VocoPro and Song is affirmed.
The Examiner’s rejection of claims 4, 6, and 10 as being unpatentable
over Ueshima, Sugiyama, VocoPro and Chang is reversed.
The Examiner’s rejection of claim 17 as being unpatentable over
Ueshima, Sugiyama, VocoPro, Song and Chang is reversed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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