Ex Parte GOODAY

Patent Trial and Appeal Board

Nov 14, 2018

14748258 (P.T.A.B. Nov. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/748,258 06/24/2015
67801 7590 11/16/2018
MARTIN D. MOYNIHAN d/b/a PRTSI, INC.
P.O. BOX 16446
ARLINGTON, VA 22215
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
MarkGOODAY
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.
63068 3217
EXAMINER
GAUTHIER, GERALD
ART UNIT PAPER NUMBER
2653
NOTIFICATION DATE DELIVERY MODE
11/16/2018 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):
usptomail@ipatent.co.il
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK GOODA Y 1
Appeal 2018-002611
Application 14/748,258
Technology Center 2600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1, 5, 6, 12, 13, 15, and 22-31, which are all of the claims pending
in the application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, Meters Music Limited, which, according to the
Appeal Brief, is the real party in interest. See App. Br. 2.
2 Claims 2--4, 7-11, 14, and 16-21 have been cancelled.
Appeal 2018-002611
Application 14/748,258
STATEMENT OF THE CASE
According to Appellant, the claims are directed to headphones having
a signal level meter on the exterior surface of the headphones. Abstract. 3
Claim 1, reproduced below, is representative of the claimed subject matter:
1. A headphone device, comprising:
a pair of headphone cans, each headphone can comprising
a generally cup-shaped can body, the can body having a concave
configuration such that a cavity is defined, the cavity being
enclosed by a user contacting portion, wherein the user
contacting portion is arranged in use to face internally towards
the head of the user such that it presses against or sits around the
ear of the user; and
a connecting band for connecting the pair of headphone
cans, each headphone can being mounted to an end of the
connecting band such that the user contacting portion of one
headphone can is facing the user contacting portion of the other
headphone can, wherein the connecting band is arranged in use
to sit around the head of the user such that the headphone cans
are aligned with the ears of the user,
wherein at least one or more of the headphone cans
compnse:
a transducer for converting electrical signals to audio
signals, the transducer being disposed within the cavity of the can
body and arranged to face internally towards the head of the user
such that in use the audio signals are directed towards the ear of
the user; and
a needle based analogue meter for providing a visual
indication of a property of the signal being input to or reproduced
by the transducer in the headphone can, the meter comprising a
3 This Decision refers to: (1) Appellant's Specification filed June 24, 2015
(Spec.); (2) the Non-Final Office Action (Non-Final Act.) mailed May 16,
2017; (3) the Appeal Brief (App. Br.) filed August 29, 2017; (4) the
Examiner's Answer (Ans.) mailed November 16, 2017; and (5) the Reply
Brief(ReplyBr.) filed January 14, 2018.
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Application 14/748,258
movable needle and a scale, the scale having units representative
of the property of the signal, wherein the units of the scale are
one of volume units (VU), peak signal level units, or sound
pressure level (SPL) units,
wherein the meter is calibrated such that the sensitivity of
the moveable needle to the signal being input to or reproduced
by the transducer corresponds to the units of the scale, and
wherein the meter is arranged on the exterior of the headphone
can such that it faces outwards so as to be visible to a third party
other than the wearer when being worn.
REFERENCES AND REJECTION
Claims 1, 5, 6, 12, 13, 15, and 22-31 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Yamashita (US 2007/0291955 Al;
published Dec. 20, 2007), McKee (US 6,023,515; issued Feb. 8, 2000), and
Lintz (US 2014/0112499 Al; published Apr. 24, 2014). Non-Final Act. 3-8.
Our review in this appeal is limited only to the above rejection and the
issues raised by Appellant. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. §§ 4I.37(c)(l)(iv) and 4I.39(a)(l).
ANALYSIS
"a property of the signal"
Appellant contends the Examiner erred in finding Yamashita teaches a
"meter for providing a visual indication of a property of the signal being
input to or reproduced by the transducer in the headphone can," as recited in
claim 1 and similarly recited in claim 24. App. Br. 10-11, 15-16; Reply
Br. 2-5. Specifically, Appellant argues Yamashita
shows the sound level at which the device is set and not the sound
level of the signal being input or reproduced by the transducer.
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Application 14/748,258
The display of Yamashita would remain the same for all parts of
an audio file, even when the audio file includes beats or silent
parts contrary to the claimed invention. The display of
Yamashita changes only when a user changes the volume setting
of the device.
Reply Br. 4; App. Br. 16 ( emphasis omitted).
We are not persuaded. The Examiner finds (Non-Final Act. 3--4), and
we agree, Yamashita's "wireless headphone" having "a sound volume
display unit 5" placed on the exterior of the wireless headphone (Yamashita
,r 25, Fig. 1 ), teaches a "meter for providing a visual indication of a property
of the signal being input to or reproduced by the transducer in the headphone
can."
Appellant's argument that Yamashita's "set volume" is not a property
of the signal reproduced by the headphones (App. Br. 16; Reply Br. 2-5) is
not commensurate with the scope of the claims. The claims do not define or
limit what "a property of the signal" is, and in particular, do not preclude a
set volume level signal property. The set volume level of Yamashita, even if
set by a device, establishes the loudness of the signal being reproduced, and,
as such, the set volume level is a signal property. Indeed, Appellant's
Specification confirms that a set volume level is a property of a signal being
reproduced by headphones. The Specification describes that "any third party
can quickly and easily check the volume being input to the headphones ...
If the volume level is unsuitable ... it may then be adjusted externally," i.e.,
set. Spec. 4:28-5:12 (emphasis added). As the Appellant points out,
Yamashita's headphones display a "current sound volume level" that may
be adjusted externally. Reply Br. 3 ( citing Yamashita ,r,r 7, 30). As such,
consistent with Appellant's Specification, Yamashita's set volume level
teaches a signal property.
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Application 14/748,258
Accordingly, we are not persuaded the Examiner erred in finding
Yamashita teaches a "meter for providing a visual indication of a property of
the signal being input to or reproduced by the transducer in the headphone
can," as recited in claim 1 and similarly recited in claim 24.
Improper Combination
Appellant contends the Examiner improperly combined Yamashita
and Lintz. App. Br. 17-20; Reply Br. 5---6. Specifically, Appellant argues
"the Examiner has failed to provide any reasoning as to why the prior art
documents would be combined." App. Br. 17-18 ( emphasis omitted).
Appellant further argues "Yamashita teaches against the combination with
Lintz." Id. at 20 (emphasis omitted). Still further, Appellant argues the
combination "would change the principle of operation of Yamashita." App.
Br. 20; see Reply Br. 6 ( emphasis omitted).
We are not persuaded. As discussed supra, we agree with the
Examiner's finding that Yamashita teaches headphones with an externally
arranged volume meter. Non-Final Act. 2-3. We also agree with the
Examiner's finding that Lintz's "needle-based analog VU meter[]" (Lintz
,r 61) teaches "a needle based analogue meter for providing a visual
indication of a property of the signal being input to or reproduced" (Non-
Final Act. 5).
Although Appellant argues that the Examiner does not provide any
reasoning for the combination (App. Br. 17-18), the Examiner articulates
reasoning for the combination of Yamashita and Lintz that is supported by
rational underpinning. Specifically, the Examiner states the combination
"modif[ ies] Yamashita" by "[ u] sing [the] VU meter of Lintz instead of'
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Yamashita' s meter. Ans. 4. That is, the Examiner "substitute[ es] ... one
element for another known in the field" (KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398,416 (2007)), specifically, an analog meter for a digital meter.
Furthermore, the Examiner states that substituting an analog meter for
a digital meter that "changes the look of the meter" is "a design choice" that
allows "the user to easily observ[ e] the real time changing of the input
signal." Ans. 4, 8.
We agree with the Examiner that it is rational to substitute analog and
digital meters in order to choose between known manners of representing
signal information. The modification is no more than the predictable use of
prior-art elements according to their established functions. KSR, 550 U.S. at
41 7 ("if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious."). Furthermore,
Lintz supports the Examiner's conclusion that is it obvious to use either a
digital or analog meter because Lintz describes that both analog and digital
meters can be used to represent signals. Lintz ,r 61 ("The audio production
console 10 disclosed herein may use said analog meters, or more preferably
may represent the positioning of the needle in a digital environment, such as
on an LCD or comparable digital display.").
Further, Appellant's argument that "Yamashita teaches against the
combination with Lintz" (App. Br. 20) ( emphasis omitted) is not persuasive.
To teach away, a reference must "criticize, discredit, or otherwise discourage
the solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant,
however, has not identified where Yamashita criticizes, discredits, or
otherwise discourages substituting an analog meter for a digital meter.
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Furthermore, Appellant's argument that "[ w ]ith the amended display
Yamashita is not able to control and synchronize between the devices as
desired" (App. Br. 20) is unpersuasive as it is supported only by attorney
argument, which "cannot take the place of evidence." In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974). Appellant does not adequately explain why
or provide evidence that substituting one known manner of displaying audio
information for another would render Yamashita inoperable or change
Yamashita's principle of operation. Furthermore, as discussed supra, Lintz
describes that it is within the ordinary artisan's skill to substitute analog and
digital meters. Lintz ,r 61. Appellant also argues the Examiner's cited
motivation ("to enable the user to easily observ[ e] the real time changing of
the input signal" (Ans. 4, 8)) "is based on hindsight" because "[t]he
Examiner failed to show why Yamashita would be interested in observing
real time changing of the input signal." We find this argument unpersuasive
of Examiner error. The Federal Circuit has "[held] that while an analysis of
obviousness always depends on evidence that supports the required Graham
factual findings, it also may include recourse to logic, judgment, and
common sense available to the person of ordinary skill that do not
necessarily require explication in any reference or expert opinion." Perfect
Web Techs., Inc. v. Info USA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009); see
also Nat 'l Steel Car, Ltd. v. Canadian Pacific Ry., Ltd., 357 F.3d 1319, 1337
(Fed. Cir. 2004) ("It has long been the law that the motivation to combine
need not be found in prior art references, but equally can be found 'in the
knowledge generally available to one of ordinary skill in the art."' ( quoting
In re Jones, 958 F.2d 347, 351 (Fed. Cir. 1992))).
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Accordingly, we are not persuaded the Examiner erred by improperly
combining Yamashita, McKee, and Lintz.
Objective Indicia of Non-Obviousness
Appellant contends the claims are non-obvious based on Andy
Boxall's article, "Meters By Ashdown OV-1: Our First Take" ("First
Take"). App. Br. 20-22; Reply Br. 6-7. In particular, Appellant argues the
article "praises the claimed meter," "indicates that the [ external] meter is
special," and "acknowledges the benefit of the claimed" external meter.
App. Br. 20-21.
We have carefully considered Appellant's evidence of non-
obviousness, but we are not persuaded the Examiner erred in concluding the
claims are obvious. Appellant first highlights the article's praise of
"headphones with an active VU meter." First Take, 2-3. "Evidence that the
industry praised a claimed invention or a product that embodies the patent
claims weighs against an assertion that the same claimed invention would
have been obvious." Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1053
(Fed. Cir. 2016); accord Institut Pasteur & Universite Pierre Et Marie Curie
v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013) ("[I]ndustry praise ...
provides probative and cogent evidence that one of ordinary skill in the art
would not have reasonably expected [the claimed invention]."). While we
acknowledge that industry praise weighs against a finding of obviousness,
here, the claims do not recite an "active VU meter." Instead, claim 1, for
example, recites "a needle based analogue meter." See Appeal Br. 23. As
such, the allegedly non-obvious active VU meter Appellant relies on is not
reflected in the claim language and thus Appellant fails to demonstrate the
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industry praise directed toward an "active VU meter" is relevant to the
claimed invention. That is, here, Appellant has not established that "the
industry praised [the] claimed invention or a product that embodies the
patent claims." Apple Inc., 839 F.3d at 1053. Furthermore, the benefits of
an external meter discussed by the article - the external meter "can be used
by onlookers to judge whether the volume is too loud" and the external
meter provides "visual excitement" (id. at 3--4)- are benefits Yamashita
provides. Yamashita' s sound volume display unit 5 is an external meter (see
Fig. 1) that displays "the sound volume or the like" (Yamashita ,r 26); thus,
it follows that an onlooker would be able to judge whether the volume is too
loud and that the meter provides visual excitement. As such, the allegedly
non-obvious benefits to an external meter that Appellant relies on are found
in the prior art and do not persuade us the claims are non-obvious.
Accordingly, we are not persuaded the Examiner erred in concluding
the claims are obvious. We, therefore, sustain the 35 U.S.C. § 103 rejection
of independent claims 1 and 24, as well as the 35 U.S.C. § 103 rejection of
dependent claims 5, 6, 12, 13, 15, 22, 23, and 25-31, which are not argued
separately. See App. Br. 22.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1, 5, 6, 12, 13, 15, and22-3I.
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.
§ 41.50(±).
AFFIRMED
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