Ex Parte Boesen

Patent Trial and Appeal Board

Dec 28, 2018

14815576 (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/815,576 07/31/2015
133690 7590 01/02/2019
Goodhue, Coleman & Owens, P.C.
12951 University Ave
Suite 201
Clive, IA 50325
FIRST NAMED INVENTOR
Peter V. Boesen
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.
BRAGI GmbH-P0031C 6817
EXAMINER
ETESAM, AMIR HOS SEIN
ART UNIT PAPER NUMBER
2655
NOTIFICATION DATE DELIVERY MODE
01/02/2019 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):
docketing@goodhue.com
eofficeaction@appcoll.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER V. BOESEN
Appeal 2018-004690
Application 14/815,576
Technology Center 2600
Before MAHSHID D. SAADAT, JUSTIN BUSCH, and
JASON M. REPKO, Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-23. Br. 6. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm-in-part.
1 According to Appellant, the real party in interest is Peter V. Boesen. Br. 4.
2 Throughout this opinion, we refer to the Final Rejection ("Final Act.")
mailed February 9, 2017; the Appeal Brief ("Br.") filed Sept. 5, 2017; and
the Examiner's Answer ("Ans.") mailed December 28, 2017.
Appeal 2018-004690
Application 14/815,576
THE INVENTION
Appellant's invention relates to using ear pieces to collect and
reproduce stereophonic sound. Spec. 8: 15-21. One embodiment has a
short-range transceiver to link with a phone or other device. Id. at 9: 17-24.
Claims 1, 15, and 21 are independent. Claim 1 is reproduced below:
1. A system comprising:
a left ear piece comprising an ear piece housing, a short
range transceiver disposed within the ear piece housing, at least
one input sensor disposed within the ear piece housing, and a
speaker disposed within the ear piece housing; and
a right ear piece comprising an ear piece housing, a short
range transceiver disposed within the ear piece housing, at least
one input sensor disposed within the ear piece housing, and a
speaker disposed within the ear piece housing;
wherein the system is adapted to play stereophonic audio
using the speaker of the left ear piece and the speaker of the right
ear piece; and
wherein the system is adapted to sense stereophonic audio
using the at least one input sensor of the left ear piece and the at
least one input sensor of the right ear piece.
THE EVIDENCE
The Examiner relies on the following as evidence:
Tillgren et al.
Niederdrank
Mellone et al.
Wagner
Freeman et al.
Ma et al.
Cole et al.
US 6,339,706 Bl
US 2004/0013280 Al
US 2004/0042629 Al
US 7,101,287 Bl
US 2008/0189110 Al
US 2009/0177097 Al
US 2010/0063931 Al
2
Jan. I 5, 2002
Jan. 22, 2004
Mar. 4, 2004
Sept. 5, 2006
Aug. 7,2008
July 9, 2009
Mar. 11, 2010
Appeal 2018-004690
Application 14/815,576
THE REJECTIONS
Claims 1, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tillgren, Freeman, and Mellone. Final Act. 5-7.
Claims 2, 3, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tillgren, Freeman, Mellone, and Wagner. Final Act. 7-8;
see Ans. 3 ( discussing Mellone' s application to the dependent claims). 3
Claims 4--9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Tillgren, Freeman, Mellone, and Ma. Final Act. 8; see Ans. 3
(discussing Mellone's application to the dependent claims).
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Tillgren, Freeman, Mellone, and Niederdrank. Final Act. 8-9.
Claims 15-19, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tillgren, Freeman, Wagner, Ma, and Mellone.
Final Act. 9-12.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Tillgren, Freeman, Wagner, Ma, Mellone, and Cole. Final Act. 12; see
Ans. 3 (discussing Mellone's application to the dependent claims).
Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Tillgren, Freeman, Wagner, Ma, Mellone, and Niederdrank.
Final Act. 13.
Claims 1-20 stand rejected on the ground of non-statutory double
patenting as being unpatentable over claims 1-36 of US 8,526,646 B2.
Final Act. 3.
3 Although Mellone is omitted from the rejection headings, the Examiner
states that Mellone is used in the rejection of the dependent claims. Ans. 3.
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Appeal 2018-004690
Application 14/815,576
Claims 1-23 stand provisionally rejected on the ground of non-
statutory double patenting as being unpatentable over claims 1-20 of co-
pending applications 14/927,388, 14/883,600, and 14/883,593. Final Act. 3-
4.
THE REJECTION OVER TILLGREN, FREEMAN, AND MELLONE
We have reviewed this rejection in light of Appellant's arguments that
the Examiner erred. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). "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." Id. Arguments that Appellant could have made-but chose not
to make in the Briefs-are deemed waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellant argues that "the teachings of Tillgren regarding inputting a
command or receiving audio information at a microphone are irrelevant
because claim 1 does not recite" these features. Br. 17. Appellant argues
that "Freeman, which is relied upon as teaching the purchasing of an item or
service through an electronic device by voice command, is immaterial to
claim 1, as nothing in claim 1 is related to purchasing items or services." Id.
In Appellant's view, "the Examiner failed to meet his burden of factually
supporting a prima facie obviousness rejection regarding claim 1" because
the "teachings of Tillgren and Freeman identified by the Examiner do not
teach what is recited in claim 1." Id.
Put simply, Appellant argues that the Examiner has not made a prima
facie case of obviousness because the Examiner discusses features that the
claim does not expressly recite. Id. at 15-18. Appellant, however, does not
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Application 14/815,576
point to any claimed features missing from the combination of Tillgren,
Freeman, and Mellone. See id. Nor does Appellant present a substantive
argument about the Examiner's reasons for combining the references. See
id.
We agree that the Examiner discusses features not expressly recited in
the claim. Id. But claim 1 recites the transitional term "comprising." "The
transition 'comprising' in a method claim indicates that the claim is open-
ended and allows for additional steps." Invitrogen Corp. v. Biocrest Mfg.,
L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003). To be sure, we determine what
features the transitional phrase excludes, or not, on a case-by-case basis in
view of the Specification and the claims.
Here, we are unpersuaded that the claim excludes purchasing of an
item or service through an electronic device by voice command or receiving
audio information at a microphone. The Specification discloses a
communication device with a short range transceiver that allows the user to
communicate purchasing requests. Spec. 21: 16-20. Moreover, claim 11,
which indirectly depends from claim 1, recites that the ear pieces are
configured for receiving purchase requests. So although the Examiner
discusses features that are not expressly recited, those features fall within the
claim's scope. On this record, we are unpersuaded that the Examiner erred
in rejecting claim 1
Claim 10
Claim 10 depends from claim 1 and further recites, in part, "the left
ear piece is a left ear bud and the right ear piece is a right ear bud."
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Application 14/815,576
The Examiner rejects claim 10 as obvious over Tillgren, Freeman, and
Mell one. Final Act. 5-7. The Examiner finds that Mellone teaches a
stereophonic set of earphones. Id. at 7 (citing Mellone Abstract). The
Examiner finds that Mell one's earphones can be earbuds. Ans. 3.
Appellant argues that "none of the references cited by the Examiner
teach or address the left ear piece being a left ear bud and the right ear piece
being a right ear bud." Br. 18. Appellant argues that the Examiner has not
addressed claim 10' s language and has not presented a prima facie case of
obviousness. Id. at 19.
We agree with the Examiner that Mellone' s earphones can be ear
buds. Ans. 3. Although Mellone teaches an earpiece with a sound delivery
tube 308, Mellone further explains that tube 308 "could be eliminated and
replaced with a pivotable ear bud form factor." Mellone ,r 17 (emphasis
added). On this record, we are unpersuaded that the Examiner erred in
rejecting claim 1 0.
Accordingly, we sustain the rejection of claim 10. We also sustain the
rejection of claim 11, which is not separately argued with particularity (see
Br. 20).
THE REJECTION OVER TILLGREN, FREEMAN, MELLONE, AND
WAGNER
Appellant argues that Tillgren, Freeman, and Wagner do not teach a
system adapted to play stereophonic audio using the speakers of the ear
pieces or adapted to sense stereophonic audio using the input sensors of the
ear pieces. Br. 20-21. Appellant argues that, in the rejection of claim 1, the
Examiner expressly stated that Tillgren and Freeman lack this feature and
the Examiner relies on Mellone to cure this deficiency. Id. at 21 ( citing
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Application 14/815,576
Final Act. 6-7). Appellant argues that "the Examiner failed to properly
ascertain the differences between the prior art and the Applicant's claimed
invention as required by law" because "Mellone is not relied upon in the
rejections of claims 2, 3, 13, and 14." Id.
In the Answer, the Examiner states that claims 2, 3, 13, and 14 are
rejected under Mellone in addition to the other references. Ans. 3. Also,
because the dependent claims incorporate the limitations of independent
claim 1, we understand the Examiner's discussion of the features recited in
claim 1 to apply to dependent claims 2, 3, 13, and 14. See Final Act. 5-8.
Appellant does not rebut the Examiner's explanation regarding
Mellone. Nor does Appellant point out an error apart from the omission of
Mellone from the heading of the rejection of claims 2, 3, 13, and 14. See
Br. 20-21. On this record, we are unpersuaded that the Examiner erred in
rejecting these claims.
THE REJECTION OVER TILLGREN, FREEMAN, MELLONE, AND
NIEDERDRANK
Claim 12 depends from claim 10. In arguing for the patentability of
claim 12, Appellant refers to the arguments presented for claim 10. See
Br. 23 ("[C]laim 12 depends on claim 10, which is believed to be allowable
for reasons discussed in VII.A.2 above."). For the reasons discussed in
connection with claim 10, we also sustain the rejection of claim 12.
THE REJECTIONS BASED ON MA
The Examiner rejects claims 4--9 and 15-23 over Ma and various
combinations of Tillgren, Freeman, Mellone, Niederdrank, Wagner, and
Cole. See Final Act. 8-13; Ans. 3.
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Appellant argues that Ma does not qualify as prior art. Br. 22, 27-33.
We agree.
The Examiner explains that Ma is cited to address the temperature and
pulse oximeter sensors in hearing devices, which are not found in the parent
application. Ans. 3--4. Appellant, however, asserts that the pulse oximeter
sensors are supported by the Specification because page 1 incorporates U.S.
Patent Application Publication US 2003/0115068 to Boesen, which
discloses a pulse oximeter sensor in at least Figure 6. See, e.g., Br. 9. As
Appellant points out (Br. 22, 27-33), this application is a continuation of
Application 13/967,415, filed on August 15, 2013, which itself is a
continuation of Application 11/761,850, filed on June 12, 2007. See
Spec. 1:5-11 (referring to the earlier-filed applications). So these parent
applications contain the same reference to Boesen's device. See '850
application, Spec. 1; '415 application, Spec. 1. The '850 application's filing
date of June 12, 2007 is before the filing date of Ma's provisional
application: January 7, 2008.
Because Ma does not qualify as prior art, we do not sustain the
rejections of claims 4--9 and 15-23.
THE DOUBLE PATENTING REJECTIONS
We decline to reach the Examiner's provisional rejections of claims
1-23 on the ground of non-statutory double patenting because it would be
premature to do so at this time. See Ex parte Moncla, 95 USPQ2d 1884,
1885 (BP AI 2010) (precedential); see also MPEP § 804 LB I .iv. (9th ed.
Rev. 08.2017, Jan. 2018) (providing guidance when a Board decision does
not reach provisional double patenting rejection).
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Application 14/815,576
Appellant does not provide any arguments on the ground of non-
statutory double patenting of claims 1-20 as being unpatentable over claims
1-36 of US 8,526,646 B2. See Br. Thus, Appellant has waived any appeal
of this rejection. See 37 C.F.R. § 4I.37(c)(l)(iv). On this record, we decline
to decide the appeal as to this rejection.
CONCLUSIONS
We sustain the rejections of claims 1-3 and 10-14 under
35 U.S.C. § 103.
We do not sustain the rejections of claims 4--9 and 15-23 under
35 U.S.C. § 103.
We do not reach the double patenting rejections of claims 1-23.
DECISION
We affirm-in-part the Examiner's decision to reject claims 1-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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