Ex Parte Volkenand et al

Patent Trials and Appeals Board

May 28, 2019

13824202 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/824,202 08/26/2013 Kai V olkenand
500 7590 05/30/2019
SEED INTELLECTUAL PROPERTY LAW GROUP LLP
701 FIFTH A VE
SUITE 5400
SEATTLE, WA 98104
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
720132.415USPC 7416
EXAMINER
LACYK, JOHN P
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
05/30/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAI VOLKENAND, FRITZ ICKLER, and
STEP AN PERPLIES
Appeal2018-002587
Application 13/824,202
Technology Center 3700
Before MICHAEL L. HOELTER, JEREMY M. PLENZLER, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action (Dec. 20, 2016) ("Final Act.") rejecting
claims 1-14, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons explained below, we are not informed of error in the
rejections. Accordingly, we AFFIRM.
1 The real party in interest is identified as Ondal Medical Systems GMBH.
Appeal Br. 1.
Appeal2018-002587
Application 13/824,202
Claimed Subject Matter
The claimed subject matter "relates to a console for medical-technical
supply in a treatment room, and in particular to a console having several
connectors or sockets for medical-technical supply or for withdrawal of
gases and/or electrical supply currents for medical-technical end devices."
Spec. 1:6-8. Claims 1 and 10 are independent. Claim 1, reproduced below
with selected limitations emphasized, illustrates the claimed subject matter.
1. A console for medical-technical devices in a treatment
room, the console comprising:
a support frame adapted for mounting in the treatment
room and having several connectors or sockets for medical-
technical supply; and
an audio playback system having a plurality of
loudspeakers oriented in different directions and a control unit,
the control unit integrated in the support frame for filling the
treatment room with predetermined soothing or therapeutic
sounds, wherein the audio playback system is a medically
approved device.
Appeal Br. 21 (Claims Appendix).
Rejections
I. Claims 13 and 14 stand rejected stand rejected under pre-AIA
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Final Act. 2-3.
II. Claims 1-5, 7, 8, and 10-14 stand rejected under pre-AIA 35
U.S.C. § I03(a) as unpatentable over Sutton (US 2010/0223857 Al,
published Sept. 9, 2010), Thomas (US 2008/0027574 Al, published Jan. 31,
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Application 13/824,202
2008), Culpepper (US 7,770,860 B 1, published Aug. 10, 2010), and Hsu
(US 2009/0103753 Al, published Apr. 23, 2009). Final Act. 3-6.
III. Claims 6 and 9 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Sutton and Knappe (EP 1,785,104, published
May 16, 2007). Final Act. 6. 2
DISCUSSION
Rejection I - 35 U.S. C. § 112, first paragraph
Claims 13 and 14
Appellants state that only the rejections of claims 1-12 are appealed.
Appeal Br. 2. "An appeal, when taken, is presumed to be taken from the
rejection of all claims under rejection unless cancelled by an amendment
filed by the applicant and entered by the Office." 37 C.F.R. § 41.3 l(c); see
also 76 Fed. Reg. 72,271 (Nov. 22, 2011) ("This final rule replaces the
Office's procedure under [ Ex parte Ghuman, 88 USPQ2d 14 78 (BP AI 2008)
(precedential)] and also simplifies practice for examiners by no longer
requiring examiners to cancel non-appealed claims."); 76 Fed. Reg. 72,280
(Nov. 22, 2011) ("Should an applicant desire to appeal less than all the
rejected claims without actually cancelling the claims, applicant may simply
say nothing as to the claims applicant does not wish to appeal and the Board
may simply affirm the rejection of those claims.").
Because Appellants have not cancelled claims 13 and 14, and do not
argue the rejection of these claims on appeal, we summarily sustain the
rejection of claims 13 and 14 under 35 U.S.C. § 112, first paragraph.
2 The Examiner's statement of the rejection of dependent claims 6 and 9
does not include Thomas, Culpepper, and Hsu, which were used in rejecting
independent claim 1.
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Application 13/824,202
RejectionII-35 U.S.C. § 103(a)
Claims 1-5, 7, 8, and 10---14
In rejecting claim 1, the Examiner finds Sutton teaches a modular
accessory system 100 that has a support frame 286 with several connectors
or sockets and an audio playback system that includes loudspeakers, and that
Sutton teaches the device may be used in a hospital room. Final Act. 3. The
Examiner finds Thomas teaches a "device that is used in a surgical
environment, specifically an operating room to provide soothing and/or
entertaining background." Id. (citing Thomas abstract). The Examiner finds
that because Thomas' device is taught as being used in an operating room, it
would be considered to be a "medically approved" device. Id. at 4. Thomas
also shows, the Examiner finds, "that the device includes a control unit that
is integrated into the device such that the operation of the device can be
controlled within the room." Id. (citing Thomas ,r 23). The Examiner finds
one of ordinary skill in the art would have had reason to modify Sutton to
include an integral control unit, namely because "this would allow for
control of the device by anyone within the room, without having to leave."
Id. The Examiner also finds one of ordinary skill in the art would have had
reason to modify Sutton "such that the support frame is mounted or
suspended from a ceiling mount," as taught by Culpepper, because
Culpepper "teaches that having a support system in a medical treatment
room mounted from a ceiling is well known." Id. at 5.
As to the limitation of the loudspeakers being oriented in different
directions, the Examiner finds Sutton teaches that the speakers are used to
produce stereo or surround effects using multiple speakers, and the
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Application 13/824,202
Examiner finds "[i]t is well known in stereo acoustics to use a plurality of
speakers oriented in different directions to produce a stereo or surround
effect." Id. (citing Sutton ,r 123). The Examiner also finds "Hsu teaches a
surround sound device that uses a tower including a plurality of speakers
that are oriented in different directions to produce a surround sound." Id.
The Examiner finds one of ordinary skill in the art would have had reason to
modify Sutton such that the plurality of speakers are oriented in different
directions "since it is well known to orient speakers in different directions to
produce a stereo or surround sound effect as shown by Hsu and from
common knowledge of acoustics and stereo or surround sound." Id.
Appellants argue that, "without the benefit of hindsight, a skilled
artisan would not have the requisite motivation or suggestion to orient
speakers in [Sutton's] entertainment module 364, 364' in different
orientations as claimed in independent claim 1, given that such a
modification would be impractical, if even physically possible." Appeal Br.
17. Appellants contend it would have been impractical to mount Sutton's
speakers in different directions because the panel of Sutton's entertainment
module includes pins urging the panel in a direction perpendicular to the
plane of the front surface of Sutton's framework, so a speaker would have to
have been mounted in a side of the panel or a back side facing the wall. See
id. We agree with the Examiner, however, that Appellants' arguments as to
impracticality of the modification ignore the rejection as a whole, which is
based on modifying Sutton not only in view of Hsu, but also in view of
Thomas and Culpepper. Ans. 2. Mounting Sutton's framework including
loudspeakers on multiple faces of a column, such as that taught in
Culpepper, results in speakers facing in different directions.
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Appellants contend that mounting Sutton's support frame or
framework 124 on Culpepper' s square-shaped column "would be counter to
Sutton's intended purpose" because Sutton's framework 124 would protrude
well beyond the periphery of Culpepper's narrow column. See Appeal Br.
17-18. Appellants argue this would result in a cluttered environment and
exposed wiring, which would be counter to Sutton's purpose of providing
routing paths and retainers for wiring in order to provide an uncluttered
appearance while facilitating access to the wiring behind the panels and
modules. Id. at 18. The Examiner responds that the wires would clearly be
hidden from view behind the modules and run up and down through the
middle of the column. Ans. 4.
The Examiner's rejection is not based on mounting panels (such as
those taught in Sutton) of any particular size to a column (such as that shown
in Culpepper) of any particular dimensions. Even if general sizes could be
inferred from Sutton and Culpepper, we agree with the Examiner that "the
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference." Ans. 3
(citing In re Keller, 642 F.2d 413 (CCPA 1981)). One of ordinary skill in
the art would have been able to adapt Sutton's modules with loudspeakers
for mounting on a column such as that taught in Culpepper without causing
the module to protrude past the edge of the column to expose the wires.
Appellants contend the Examiner's reasoning for combining the
teachings of the references is based on hindsight, but do not explain why the
Examiner's findings and reasoning as to why one of ordinary skill in the art
would have combined teachings of the references is in error. See Appeal Br.
19. Accordingly, we are not informed of error in the rejections on this basis.
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Appellants argue Sutton already teaches loudspeakers, so "[a]dding an
angularly oriented loudspeaker to the entertainment module 364,364', as
asserted by the Examiner, would not only be impractical, if physically even
possible, but clearly superfluous." Id. The Examiner's rejection, however,
is not based merely on adding additional speakers to Sutton's framework.
The Examiner's rejection involves mounting Sutton's speaker modules (or
frame surrounding the modules) on multiple faces of a column like the one
shown in Culpepper, such that they are oriented in different directions as
shown in Hsu, which is not superfluous to Sutton's teachings.
Although Appellants also contend in the Reply Brief that "the
Examiner fails to adequately explain why a skilled artisan would be
motivated to modify Sutton in the manner proposed," Reply Br. 3, we do not
agree. Appellants do not persuasively dispute the Examiner's finding that
one of ordinary skill in the art would have suspended Sutton's frame from a
ceiling mount because having a support system in a medical treatment room
mounted from a ceiling, as shown in Culpepper, is well known. Final Act. 5.
The Examiner's finding that such an arrangement is well known implies that
the advantages of such an arrangement are also well known, 3 and we agree
that the proposed modification is, therefore, no more than the combination of
known elements to obtain predictable results. "[W]hen a patent simply
arranges old elements with each performing the same function it had been
known to perform and yields no more than one would expect from such an
3 Culpepper provides that "[c]eiling-mounted medical service columns
provide several advantages, especially in the surgical, emergency room and
critical care settings. Articulating arm assemblies have greatly improved
movability of these columns." Culpepper col. 1, 1. 66-col. 2, 1. 2.
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arrangement, the combination is obvious." KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (internal quotation omitted).
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of claim 1 under
35 U.S.C. § 103(a) as unpatentable over Sutton, Thomas, Culpepper, and
Hsu. For the same reasons, we sustain the rejection of claims 2-5, 7, 8, and
10-12, which are rejected on the same ground and argued based on
dependency from claim 1 or based on the same arguments as claim 1. See
Appeal Br. 19-20.
Because claims 13 and 14 are specifically excluded from Appellants'
arguments on appeal, see Appeal Br. 9, we summarily sustain the rejection
of these claims under 35 U.S.C. § 103(a).
RejectionIII-35 U.S.C. § 103(a)
Claims 6 and 9
Appellants argue "[ c ]laims 6 and 9 are allowable at least for being
dependent from allowable independent claim 1." Appeal Br. 20. In light of
our affirmance of the rejection of claim 1, we sustain the rejection of claims
6 and 9 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's decision to reject claims 13 and 14 under
35 U.S.C. § 112, first paragraph.
We affirm the Examiner's decision to reject claims 1-14 under 35
U.S.C. § 103(a).
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Application 13/824,202
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)(l )(iv).
AFFIRMED
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