Ex Parte 7194094 et al

Board of Patent Appeals and Interferences

Aug 24, 2012

95000499 (B.P.A.I. Aug. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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 7194094 CSM-012Xq700 9463
207 7590 08/24/2012
WEINGARTEN, SCHURGIN, GAGNEBIN & LEBOVICI LLP
TEN POST OFFICE SQUARE
BOSTON, MA 02109
EXAMINER
LEUNG, CHRISTINA Y
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/24/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
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 APPEAL

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Patent US 7,194,094 B2

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is coupled to a plurality of loudspeaker assemblies 410, which have a low
directivity index, that are disposed within a corresponding aperture 408 in
the ceiling 404 so as to provide an acoustic sound masking signal 421 in a
direct audio path into one or more masking zones within the office area 402.
'094 patent col. 10, ll. 37-50.

Claim Status/Representative Claim
Claims 1-34 are present, with claims 1, 14, and 28 independent. After
the Examiner rejected all the claims in rejections arising from Requester’s
original request for inter partes reexamination, Owner submitted a response
that included proposed amendments to the independent claims. The
Examiner subsequently withdrew all standing rejections and determined the
claims to be patentable. Representative claim 1 (as amended) is reproduced
below.

1. (Amended) A direct field sound masking system for
providing a direct path sound masking signal to the ears of a
listener in a predetermined area of a building, said
predetermined area including a ceiling and a floor, said system
comprising:

a sound masking signal generator comprising a plurality
of stored sets of information and operative to provide two or
more signal channels of mutually incoherent electrical sound
masking signals; and

a plurality of loudspeaker assemblies, each loudspeaker
assembly comprising an input coupled to said masking signal
generator to receive the electrical sound masking signal from
one channel of said generator,

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wherein each of the plurality of loudspeaker assemblies
is operative to emit an acoustic sound masking signal
corresponding to said electrical sound masking signal, wherein
each of the loudspeaker assemblies [has] comprises a cone
loudspeaker having a low directivity index, and

wherein each of the plurality of loudspeaker assemblies
is constructed and oriented to provide the acoustic sound
masking signal in a direct path to the ears of said listener in said
predetermined area.

Prior Art
Ritter US 4,686,693 Aug. 11, 1987
Schindler US 6,359, 636 B1 Mar. 19, 2002
Roy US 6,481,173 B1 Nov. 19, 2002
Horrall WO 99/46958 Mar. 10, 1999

Greg Dzubay, “Sound Masking for Offices Unmasked,” Sound
& Communications, pp. 34-46, December 1997;

1998 Bose Catalog, “Acoustimass ® 3 Series III speaker
system,” Bose Corporation, 1998;

Ashton Taylor, “Sound Masking Systems,” Atlas Sounds, 2000.

Requester’s Contentions
Requester contends that the Examiner erred in failing to enter
rejections against claims 1-34 over the prior art. The Examiner did not
adopt any of the grounds of rejection proposed by Requester in the
Comments filed April 1, 2010. Requester proposed the following grounds of
rejection in the Comments.
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I. Claims 1, 8-14, and 17-22 under 35 U.S.C. § 103(a) over
Horrall (“WO '958”) and Dzubay (Requester’s Comments 21-27).
II. Claims 1, 2, and 14-16 under 35 U.S.C. § 103(a) over WO '958
and Taylor (id. at 27-28).
III. Claims 2 and 16 under 35 U.S.C. § 103(a) over WO '958,
Taylor, and Bose (id. at 28).
IV. Claims 3-5, 7, 23-25, 27-32, and 34 under 35 U.S.C. § 103(a)
over WO '958, Dzubay or Taylor, and Ritter (id. at 28-29).
V. Claims 28-32 and 34 under 35 U.S.C. § 103(a) over WO '958,
Dzubay or Taylor, and Ritter (id. at 29).
VI. Claims 28-32 and 34 under 35 U.S.C. § 103(a) over WO '958,
Dzubay or Taylor, and Schindler (id.).
VII. Claims 8-11 and 17-19 under 35 U.S.C. § 103(a) over WO '958,
Dzubay or Taylor, and Roy (id.).
Although not addressed in Requester’s Comments, the Examiner
states that an earlier ground of rejection (Non-Final Action mailed Jan. 4,
2010, at 18-19) has been withdrawn (Action Closing Prosecution (ACP),
mailed Sep. 23, 2010, at 11-12): the rejection of claims 6, 26, and 33 under
35 U.S.C. § 103(a) over WO '958, Dzubay or Taylor, Ritter, and Schindler.
Although Requester’s Comments discussed “Farrell” and “HUSHER”
references to rebut arguments made in Owner’s Response (Requester’s
Comments 2), Requester did not propose any grounds of rejections that
included the references. Requester cannot propose any new grounds of
rejection that include “Farrell” or “HUSHER” in the Appeal Brief. See 37
C.F.R. § 41.67(c)(1)(vi) (“No new ground of rejection can be proposed by a
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third party requester appellant, unless such ground was withdrawn by the
examiner during the prosecution of the proceeding, and the third party
requester has not yet had an opportunity to propose it as a third party
requester proposed ground of rejection.”). See also Manual of Patent
Examining Procedure (MPEP) §§ 2666.05 and 2617, Eighth Ed., Rev. 7,
July 2008 (a newly proposed ground of rejection in the written comments
must comply with the guidelines for an original request for inter partes
reexamination).

ANALYSIS
Section 112
Requester alleges (App. Br. 7-8) that the Examiner refused to adopt
various proposed rejections under 35 U.S.C. § 112. However, Requester’s
Comments filed April 1, 2010 (10-11) suggested a 35 U.S.C. § 112, first
paragraph rejection for lack of written description. The Examiner provided
reasons why the rejection was not adopted (ACP 4), and Requester did not
address the proposed rejection in the Appeal Brief.
The only other rejection proposed in the Comments that is based on an
identified paragraph of § 112 is a rejection for “indefiniteness” under “35
U.S.C. 112, first paragraph” (Comments 11-13). We find that the Examiner
did not err in declining to adopt the muddled rejection set forth in the
Comments. We therefore sustain the Examiner’s refusal to adopt the
rejection under 35 U.S.C. § 112, first paragraph, for indefiniteness.
Any new grounds of rejection that might be proposed in the Appeal
Brief are untimely, and accordingly have not been considered. See 37
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C.F.R. § 41.67(c)(1)(vi); MPEP §§ 2666.05 and 2617. In any event, to the
extent that the remarks at pages 11 through 13 of the Comments may have
been intended to set forth a rejection for lack of enablement (§ 112, first
paragraph) or for indefiniteness (§ 112, second paragraph), we are not
persuaded that either rejection would be sound. Moreover, as noted by
Owner (Respondent Br. 10), a rejection based on the position that one of
ordinary skill in the art would not know how to make a cone loudspeaker
having a low directivity index would be inconsistent with Owner’s
arguments concerning unpatentability over the prior art.

Section 103(a)
The Examiner finds that the prior art submitted by Requester fails to
teach cone loudspeakers, having a low directivity index, outputting sound
masking signals in a direct path to a listener’s ears as recited in each of
independent claims 1, 14, and 28. Right of Appeal Notice mailed Jan. 25,
2011 at 2. Requester proposes § 103(a) rejections that rely on the
combination of WO '958 and Dzubay or Taylor as supplying the missing
teachings identified by the Examiner. However, Requester’s arguments in
support of the rejections are based on the '094 patent’s disclosure as it relates
to a cone loudspeaker having a low directivity index.
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angle from an infinitesimally small sound source at the same
location in an infinite baffle at frequencies less than 6000 Hz, as
measured in any 1/3 octave band.

'094 patent col. 9, ll. 45-56.
The '094 patent thus seems to provide a detailed definition of what is
meant by a loudspeaker having a low directivity index. However, Requester
refers to text in column 10 of the patent.
One method of achieving a loudspeaker with a low
directivity index is to have the diameter of the effective aperture
of emitter 306 [Fig. 3] less than or equal to the wavelength of
the highest frequency of interest in the sound masking
spectrum. Such a low directivity index is most easily achieved
when the speaker output of each of the loudspeaker assemblies
has an effective aperture area that is equal to the area of a circle
of an [sic] diameter of between 1.25'' and 3''. In a preferred
embodiment, the diameter of the effective aperture of the
emitter 306 is 1.25''. This diameter of the effective aperture of
emitter 306 provides an emitter with an axial directional index
at 3000 Hz that is less than 1 dB greater than an infinitesimally
small sound source and an axial directional index at 6000 Hz
that is less than 3 dB greater than an infinitesimally small sound
source.

'094 patent col. 10, ll. 13-27.
According to Requester, the column 10 text of the '094 patent
“discloses that cone loudspeakers have a low directivity index when the
wavelength of the ‘highest frequency of interest’ is less than or equal to the
diameter of the emitter of the loudspeaker.” App. Br. 21. Requester submits
Table I (id. at 20-21), which shows selected “maximum emitter diameters”
or wavelengths in inches with their respective corresponding frequency in
Hertz. For example, a wavelength of 3.000 inches is a frequency of 4,504
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Hz, a wavelength of 1.689 inches is a frequency of 8,000 Hz, and a
wavelength of 1.25 inches is a frequency of 10, 809 Hz. “Accordingly, even
a 16” loudspeaker (see Table I) will have a low directivity index when the
‘highest frequency of interest’ is less than 800 Hz.” Id. at 21.
The column 10 text of the '094 patent referenced by Requester does
not specify a “highest frequency of interest in the sound masking spectrum.”
A “highest frequency of interest” in a sound masking spectrum is the highest
frequency component of sound for which the system would be expected or
designed to provide acceptable masking of the sound. As Requester
indicates, the '094 patent describes a preferred embodiment of about or “at
least” 8,000 Hz. App. Br. 18-19. However, a close review of the '094 patent
reveals that the “highest frequency of interest” is not some single
determinate value but a consequence of design considerations that take into
account the physical configuration of the space of interest.
The '094 patent teaches that sound masking spectra in open plan
offices have been empirically derived. '094 patent col. 4, ll. 20-26.
However, the open plan spectra may, but do not necessarily, correspond to
other office plans or structures.
Such spectra have been found to provide both effective masking
of speech sound intruding into an office and unobtrusive quality
of masking sound when used in a typical office with
sufficiently high partial height office partitions that act as
acoustical barriers between work stations, particularly at high
frequencies. These spectra have also been found to work
adequately in some other office settings with sufficient high
frequency inter-office speech attenuation.

'094 patent col. 4, ll. 26-34.
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The '094 patent teaches further that acoustical barriers may be used to
reduce high frequencies of intruding speech. “Unfortunately, it can be
shown that this level of sound with the typically used spectrum is largely
ineffective for sound masking in an office setting without significant
acoustical barriers to reduce high frequencies of intruding speech sound.”
Col. 4, ll. 39-43. Further, the '094 patent teaches that particular office
divider arrangements may be beneficial in reducing the high frequency
component of the speech spectrum received by a listener (col. 7, ll. 16-20,
39-46). Still further, the patent teaches that the preferred embodiment is
directed to office configurations having lower or no barriers between
individual workers (col. 8, ll. 41-51).
Thus, the '094 patent understandably sets forth a range for the
diameters of effective aperture areas that may be acceptable for a desired
low directivity index (1.25 to 3 inches), but does not purport that any
diameter in the range would be acceptable for any “highest frequency of
interest in the sound masking spectrum.” In any event, the preferred
embodiment of the '094 patent’s diameter of the effective aperture of the
emitter (1.25 inches) corresponds to a frequency of 10,809 Hz, according to
Requester’s Table I, which is comfortably above the patent’s preferred
embodiment directed to a sound masking spectrum of about or “at least”
8,000 Hz.
We therefore find that the '094 patent’s column 10 teachings of the
diameter of the effective area of an emitter as it relates to a low directivity
index is not inconsistent with the definition for “low directivity index” set
forth in column 9 of the patent, and does not serve as an alternative
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definition for the term. The column 10 teachings merely set forth guidelines
or a starting point for a loudspeaker assembly that might be acceptable for
particular sound masking spectra in a particular application and particular
acoustic environment. We agree with the Examiner that the '094 patent does
not teach that all cone loudspeakers with a 1.25 to 3 inch effective aperture
diameter have a low directivity index.
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004) (citations omitted). The Office must apply the broadest
reasonable meaning to the claim language, taking into account any
definitions presented in the specification. Id. (citations omitted). This rule
of construction applies to reexaminations as well as initial examinations. Id.
(citation omitted). We disagree that “low directivity” is an inherent
characteristic of all cone loudspeakers (App. Br. 17), in view of the
teachings of the '094 patent.
Our conclusion that the Examiner’s claim interpretation is reasonable
is determinative as to all the claims on appeal. The prior art that Requester
submits in the proposed § 103(a) rejections to supply the missing teachings
identified by the Examiner in independent claims 1, 14, and 28 have not
been demonstrated, at least, to describe or teach a cone loudspeaker having a
low directivity index as taught by the '094 patent; a low directivity index in
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particular as defined at column 9, lines 45 through 56 of the patent.1 As
none of the references proposed to be applied against dependent claims have
been shown to remedy the deficiencies in the rejections proposed against the
independent claims, we sustain the Examiner’s refusal to adopt any of
Requester’s proposed grounds of rejection.

DECISION
The Examiner’s decision favorable to the patentability of claims 1-34
is affirmed.
Requests for extensions of time in this proceeding are governed by 37
C.F.R. §§ 1.304(a), 1.956, and 41.79(e).

AFFIRMED

1 Although we do not necessarily agree with Requester that a determination
of whether a cone loudspeaker has a low directivity index could only be
made after extensive testing (Rebuttal Br. 5-6), that the determination might
be difficult does not mean that the invention could not be practiced without
undue experimentation. Moreover, amended claims 1, 14, and 28 are
narrower than, or at least no broader than, patent claims 1, 14, and 28.
Requester has not proposed any rejection under 35 U.S.C. § 314 based on an
amendment enlarging the scope of the claims. Challenges to patent claims
in the instant proceeding are limited to rejections over patents or printed
publications. See 35 U.S.C. §§ 301, 311. Enablement cannot be challenged
for claims having the same (or narrower) scope than the patent claims.
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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

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