Ex Parte 7194094 et al

Patent Trial and Appeal Board

Mar 21, 2013

95000499 (P.T.A.B. Mar. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,499 11/17/2009 INV001 7194094 CSM-012Xq700 9463
207 7590 03/22/2013
PRETI FLAHERTY BELIVEAU & PACHIOS LLP
TEN POST OFFICE SQUARE
BOSTON, MA 02109
EXAMINER
LEUNG, CHRISTINA Y
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/22/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
LENCORE ACOUSTICS CORP.
Requester and Appellant

v.

Patent of ACENTECH, INC.
Patent Owner and Respondent
____________________

Appeal 2012-007320
Reexamination Control 95/000,499
Patent US 7,194,094 B2
Technology Center 3900

____________

Before HOWARD B. BLANKENSHIP, KEVIN F. TURNER, and
THOMAS L. GIANNETTI, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge

DECISION ON REQUEST FOR REHEARING
Appeal 2012-007320
Reexamination Control 95/000,499
Patent US 7,194,094 B2

2
INTRODUCTION
Third Party Requester has filed (Sept. 24, 2012) a Request for
Rehearing (37 C.F.R. § 41.79(a)(1)) that contends we erred in the Decision
on Appeal mailed August 24, 2012, in which we affirmed the Examiner’s
decision favorable to the patentability of claims 1-34. Patent Owner has
filed (Oct. 24, 2012) Comments in Opposition to Requester’s request for
rehearing (37 C.F.R. § 41.79(c)).

DISCUSSION
37 C.F.R. § 41.79 provides in pertinent part:
(1) The request for rehearing must state with particularity
the points believed to have been misapprehended or overlooked
in rendering the Board’s opinion reflecting its decision.
Arguments not raised in the briefs before the Board and
evidence not previously relied upon in the briefs are not
permitted in the request for rehearing except as permitted by
paragraphs (b)(2) and (b)(3) of this section.

(2) Upon a showing of good cause, appellant and/or
respondent may present a new argument based upon a recent
relevant decision of either the Board or a Federal Court.

(3) New arguments responding to a new ground of
rejection made pursuant to § 41.77 (b) are permitted.

Requester contends that “the Board’s Decision should include an
evaluation of all of the elements in at least the independent claims in order to
narrow the issues for appeal.” Req. R’hg 5-6.
Requester does not explain how an evaluation by the Board of “all of
the elements” in the independent claims would serve to “narrow the issues
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for appeal.” In any event, Requester admits that “the Examiner found all of
the elements in the claims to be disclosed by the prior art except for the low
directivity of the cone loudspeakers.” Id. at 5. Requester did not allege in
the briefs that the Examiner erred in pertinent findings apart from those
related to the directivity of the loudspeakers. Accordingly, we did not set
forth any separate evaluation with respect to the Examiner’s findings that
Requester did not contest.
Filing a Board appeal does not, unto itself, entitle an
appellant to de novo review of all aspects of a rejection. If an
appellant fails to present arguments on a particular issue – or,
more broadly, on a particular rejection – the Board will not, as a
general matter, unilaterally review those uncontested aspects of
the rejection.

Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(citations omitted). “[I]t has long been the Board’s practice to require an
applicant to identify the alleged error in the examiner’s rejections.” In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). It is also the Board’s practice
to require an appellant to identify the alleged error in the Examiner’s refusal
to reject claims. See 37 C.F.R. § 41.67(c)(1)(vii) (“Any arguments or
authorities not included in the brief permitted under this section or §§ 41.68
and 41.71 will be refused consideration by the Board, unless good cause is
shown.”).
Requester also submits that our finding that the '094 patent teaches
that the “highest frequency of interest” is a consequence of design
considerations that take into account the physical configuration of the space
of interest means that the value will change every time the furniture in a
room is rearranged, or when the number of persons in the space changes.
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Req. Rh’g 6. However, the Decision noted teachings in the '094 patent
relating to acoustical barriers and office divider arrangements in office
settings. Decision 10-11. Requester identifies no teachings in the patent
that indicate the “highest frequency of interest” is a function of furniture
arrangement or the number of persons in a space. Moreover, Requester
(Req. Rh’g 7) misquotes the '094 patent, which describes a path in which the
acoustic masking signals are not reflected or diffracted by objects or surfaces
as a “direct audio path,” not as the “space of interest.” See '094 patent col. 7,
l. 65 - col. 8, l. 2; col. 9, l. 34.
Further, contrary to Requester’s allegation, we did not indicate that
“Section 112 can never be used to evaluate claims in an inter partes
reexamination. . . .” Req. Rh’g 9. We simply pointed out that claims
amended in the '094 patent during this proceeding were presumed to have
the same or narrower scope than the patent claims, and thus could not be
challenged for lack of enablement. Requester has not submitted any theory
in support of how even though a patent claim cannot be challenged on the
basis of enablement -- because the challenge is limited to rejections over
patents or printed publications (35 U.S.C. §§ 301, 311) -- a claim having the
same or a narrower scope than the patent claim can be challenged as lacking
enablement.
Requester also seems to confuse the inherent description of a “cone”
loudspeaker with alleged inherency of a low directivity index. See Req.
Rh’g 5. Although Requester suggests that Owner has “limited the definition
of low directivity cone loudspeakers to loudspeakers having a diameter of
less than 4 inches” (id.), Requester does not point to any clear admission
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from Owner that every cone loudspeaker that has a diameter of less than four
inches falls within the scope of the claims.
Requester submits that the Examiner’s Action Closing Prosecution
(ACP) raised new issues relating to 35 U.S.C. § 112, second paragraph, that
Requester had no opportunity to address. Req. Rh’g 10. In particular,
Requester submits that claim 1 does not specify a range of cone sizes and
thus can be broadly interpreted to include four-inch cone loudspeakers that
do not have low directivity. Id. at 12. However, breadth is not to be equated
with indefiniteness. In re Miller, 441 F.2d 689, 693 (CCPA 1971).
Moreover, Requester had the opportunity to raise the issue of indefiniteness
after the ACP but prior to rehearing, in the Appeal Brief (filed Aug. 12,
2011). Requester suggested the claims were indefinite for failing to set forth
the method used for achieving a cone loudspeaker with a low directivity
index, and for failing to set forth the frequency range of the sound masking
signals. Requester App. Br. 39-40. Requester did not suggest that the
claims were indefinite under 35 U.S.C. § 112, second paragraph, because the
claims were broad in scope.
We disagree that our reviewing court recently stated that the level of
ordinary skill in the pertinent art “should be a secondary consideration in an
obviousness inquiry.” Req. Rh’g 14. We have not considered the new
evidence submitted with the Request, purportedly permitted by 37 C.F.R.
§ 41.79(b ), in the guise of being timely in view of the “recent” case of In re
Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,
676 F.3d 1063 (Fed. Cir. 2012). Requester does not show “good cause” for
presenting new arguments (§ 41.79(b)) in view of our reviewing court’s
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unsurprising statement that the obviousness inquiry should be expansive and
flexible, and that the courts should look at any secondary considerations that
would prove instructive. Moreover, although new arguments in a rehearing
may be permitted under limited circumstances (37 C.F.R. § 41.79(b)(2), (3)),
submission of new evidence is not permitted. See 37 C.F.R. § 41.79(b)(1)
(“Arguments not raised in the briefs before the Board and evidence not
previously relied upon in the briefs are not permitted in the request for
rehearing except as permitted by paragraphs (b)(2) and (b)(3) of this
section.”) (emphasis added).
In any event, Requester appears to proffer the new evidence as
tending to show what one of ordinary skill in the art would have known
about cone loudspeakers and directivity. The new evidence thus does not
address the '094 patent’s definition of “low directivity index” set forth in
column 9, which we found to be controlling with respect to claim
interpretation -- a fact that Requester acknowledges. See Req. Rh’g 13.
We have not addressed other new arguments that Requester raises in
the Request for Rehearing that could have been earlier presented. See 37
C.F.R. § 41.79(b)(1). However, to the extent that some arguments might be
considered timely, we find the arguments to be adequately addressed in
Owner’s Comments in Opposition.

DECISION
We have granted Requester’s request for rehearing to the extent that
we have reconsidered our decision affirming the Examiner’s decision
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favorable to the patentability of claims 1-34, but we decline to modify our
decision in any way.
Requests for extensions of time in this proceeding are governed by 37
C.F.R. § 1.304(a).

DENIED

alw

Patent Owner:

WEINGARTEN, SCHURGIN, GAGNEBIN & LEBOVICI, LLP
TEN POST OFFICE SQUARE
BOSTON, MA 02109

Third Party Requester:

HOFFMAN & BARRON, LLP
6900 JERICHO TURNPIKE
SYOSSET, NY 11791