Ex Parte Suzuki et al

Patent Trial and Appeal Board

Oct 23, 2014

11117608 (P.T.A.B. Oct. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KOJI SUZUKI and KOICHI SHIMAMURA

Appeal 2012-009396
Application 11/117,608
Technology Center 2600
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Before DONALD E. ADAMS, ERIC B. GRIMES, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

PAULRAJ, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellants have requested rehearing of the decision entered July 23,
2014 (“Decision”). The Decision affirmed the rejection of the claims for
obviousness. The request for rehearing is denied.

Appeal 2012-009396
Application 11/117,608

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ANALYSIS
Appellants request rehearing under 37 C.F.R. § 41.52(a)(4) on the
basis that our Decision contains an undesignated new ground of rejection. In
particular, Appellants assert that “the Examiner’s rejection [was] upheld
based on reference to Appellant’s disclosure, as well as case law not
presented by the Examiner” (Req. Reh’g 1).
“[T]he ultimate criterion of whether a rejection is considered ‘new’ in
a decision by the board is whether appellants have had fair opportunity to
react to the thrust of the rejection.” In re Kronig, 539 F.2d 1300, 1302
(CCPA 1976). Appellants have not convinced us that our Decision relies on
different facts, evidence, and/or reasoning such that Appellants did not have
a fair opportunity to respond to the thrust of the rejection. Based on the
combined teachings of Ase1 and Dry,2 the Examiner noted in the rejection
under appeal that
[I]t would have been obvious for one of the ordinary skills in
the art to “have tried” in placing the tweeter unit to any desired
possible locations on the panel and thereby being steerable
toward a user and that include if desired placing the tweeter unit
as being arranged lateral to the meter display section which
yield predictable result so as to provide better steering and
sound quality of the playback signal to the user at such location.

(Ans. 6.) Our Decision relied upon the basic thrust of the Examiner’s
rejection, and further pointed to the Specification’s acknowledgement that
“[i]t is known that the sounds in the high-note range has high directivity”
(Decision at 8, citing Spec. ¶ 9). During oral argument, Appellants’ counsel

1 Ase et al., US 6,225,584 B1, patented May 1, 2001.
2 Dry, US 2005/0135642 A1, published June 23, 2005.
Appeal 2012-009396
Application 11/117,608

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also acknowledged that the directional nature of high-note tweeters was
known in the art (Hr’g Tr. 4 ll. 9–12). We do not find our reliance on
Appellants’ own admissions concerning the directional nature of tweeters to
have altered the Examiner’s stated rationale to modify the arrangement of
tweeters in order to “provide better steering and sound quality of the
playback signal to the user” (Ans. 6). See In re Biedermann, 733 F.3d 329,
337 (Fed. Cir. 2013) (“A new ground of rejection, however, generally will
not be found based on the Board ‘further explain[ing] the examiner’s
rejection’ or the Board’s thoroughness in responding to an applicant’s
argument.”) (citation omitted).
Nor do we find the reliance on additional case law in our Decision to
constitute a new ground of rejection. We cited In re Kuhle, 526 F.2d 553,
555 (CCPA 1975) for the proposition that “[a] claimed modification to the
prior art may be obvious if the claimed structure performs the same function
as in the prior art and it presents no unexpected result over the prior art”
(Decision 7). We also cited In re Japikse, 181 F.2d 1019, 1023 (CCPA
1950) for the proposition that “[a]ltering a position of a component in a
device does not render the device patentable when operation of the device
would not thereby be modified” (id.). This case law merely further supports
the Examiner’s stated rationale that the arrangement of a midrange/woofer
unit and a tweeter unit in the manner claimed would “yield [a] predictable
result . . . so as to provide better enhance[d] sound quality of the playback
signal” (Ans. 6). See In re Adler, 723 F.3d 1322, 1328 (Fed. Cir. 2013)
(“While the Board’s explanation may go into more detail than the
examiner’s, that does not amount to a new ground of rejection.”).
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Application 11/117,608

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We thus find that our original Decision does not contain an
undesignated new ground of rejection and the Request for Rehearing is
Denied.
CONCLUSION OF LAW
The Request for Rehearing is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

DENIED

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