Ex Parte BETZ et al

Patent Trials and Appeals Board

Feb 14, 2019

14964531 - (D) (P.T.A.B. Feb. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/964,531 12/09/2015
22918 7590 02/19/2019
PERKINS COIE LLP - PAO General
P.O. BOX 1247
SEATTLE, WA 98111-1247
FIRST NAMED INVENTOR
Lorenz BETZ
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.
110971-9027.USOl 1071
EXAMINER
TRAN,CONP
ART UNIT PAPER NUMBER
2654
NOTIFICATION DATE DELIVERY MODE
02/19/2019 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOREN BETZ, LUTZ EHRIG, and DANIEL BEER
Appeal2018-006718
Application 14/964,531 1
Technology Center 2600
Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN,
Administrative Patent Judges.
CYGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-29. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm-in-part.
1 According to Appellants, the real party in interest is Fraunhofer-
Gesellschaft zur Foerderung der angewandten Forschung e.V. App. Br. 3.
Appeal2018-006718
Application 14/964,531
Disclosed Invention and Exemplary Claims
The disclosed invention relates to arrays of electroacoustic actuators,
such as those used in loudspeaker arrays. Spec. 1. Such arrays, consisting
of five or more actuators, are configured in two branches connected in
parallel or in series. Spec. 3--4. The use of modified Bessel weighting, and
the particular connectivity of actuators within each branch, provide an
electrical impedance in the range of the impedance of the loudspeakers used,
permitting the use of conventional amplifiers. Spec. 5.
Independent claims 1 and 18 are exemplary of the disclosed invention,
and read as follows (with key limitations of the claims emphasized):
1. An array of electroacoustic actuators, comprising:
at least five electroacoustic actuators,
wherein the electroacoustic actuators are connected such
that, in a first parallel branch, at least two electroacoustic
actuators are connected in series and, in a second parallel
branch, an electroacoustic actuator is connected in series to a
parallel connection of two electroacoustic actuators,
wherein the first parallel branch is connected in parallel
to the second parallel branch, and
wherein the parallel branches connected in parallel are
configured to be driven by an actuator amplifier.
18. An array of electroacoustic actuators, comprising:
at least five electroacoustic actuators,
wherein the electroacoustic actuators are connected such
that, in a first serial branch, at least two electroacoustic
actuators are connected in parallel and, in a second serial
branch, an electroacoustic actuator is connected in parallel to
a serial connection of two electroacoustic actuators, wherein
an electroacoustic actuator in the first serial branch is of
opposite polarity relative to another electroacoustic actuator in
the first serial branch,
wherein the first serial branch is connected in series to
the second serial branch, and
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Appeal2018-006718
Application 14/964,531
wherein the serial branches connected in series are
configured to be driven by an actuator amplifier.
Independent claim 1 7 recites a method of producing a system
having limitations commensurate with either of claim 1 or claim 18.
Dependent claims 2-16 and 19-29 recite or incorporate limitations
commensurate with the above-emphasized limitations of claims 1 and
18, respectively.
Examiner's Rejections
The Examiner rejects claims 1-3, 5, 8-10, 12-15, 17-20, 22-24, and
26-29 under 35 U.S.C. § 103 as being obvious over Franssen et al. (U.S.
4,399,328, issued August 16, 1983) (hereinafter Franssen).
The Examiner rejects claims 4, 11, and 25 over the combination of
Franssen and Keele, Jr. (Effective Performance of Bessel Arrays, 38 J. Audio
Engineer. Soc. 723, October 1990) (hereinafter Keele, Jr.).
The Examiner rejects claim 6 over the combination of Franssen and
Kim et al. (U.S. 2003/0095680 Al, published May 22, 2003) (hereinafter
Kim).
The Examiner rejects claims 7 and 21 over the combination of
Franssen and Sporer et al. (U.S. 2012/0008812 Al, published January 12,
2012) (hereinafter Sporer).
The Examiner rejects claim 16 over the combination of Franssen and
Baird (U.S. 2008/0013759 Al, published January 17, 2008) (hereinafter
Baird).
The Examiner rejects claims 24, 2 7, and 2 8 under 3 5 U.S. C. § 112(b)
as being indefinite for failing to particularly point out and distinctly claim
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Application 14/964,531
the subject matter for which the inventor or a joint inventor regards as the
invention.
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 3-37) in light
of Appellants' contentions that the Examiner has erred (App. Br. 9-22;
Reply Br. 2-11 ). Further, we have reviewed the Examiner's response to
Appellants' arguments (Ans. 36-49). As an initial matter, we find that
Appellants have not contested the Examiner's rejections of claims 24, 27,
and 28 under 35 U.S.C. § 112(b); 2 accordingly, we sustain those rejections.
We agree with Appellants' contention that the Examiner erred in
rejecting the pending claims (1-29) under 35 U.S.C. § 103 over Franssen.
Appellants contend that Franssen lacks the series/parallel configuration of
electroacoustic actuators ( also referred to as "transducers") that is
specifically set forth in claims 1, 17, and 18. App. Br. 10-11. Appellants
further contend that the Examiner has not set forth sufficient reasoning to
modify the configuration of electroacoustic actuators in Franssen, by
changing certain specific actuator-actuator connections from series to
parallel (or vice-versa), so as to form the exact circuit configuration claimed
by Appellants. App. Br. 19-22. Specifically, Appellants point to the
Examiner's reference to Franssen's statement that, "[i]n practice a directivity
2 See App. Br. 22. The Appellants are "amenable to deleting ... the
objected passage of claim 24." Reply Br. 2. However, Appellants have not
filed such an amendment in a paper separate from the appeal brief as
required by USPTO procedure. MPEP 1206(!). Nor would any amendment
filed after the jurisdiction has passed to the Board be considered prior to the
final decision of the Board, absent remand for consideration of the
amendment. See Id.; 37 C.F.R. § 4I.33(c).
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Appeal2018-006718
Application 14/964,531
pattern for the arrangement can be obtained which, in the optimum case, is
identical to the directivity patterns of the individual transducers." App. Br.
19-20. Appellants contend that this would fail to lead one of ordinary skill
in the art to modify the series/parallel connectivity of the transducers, much
less to modify the connectivity so as to result in Appellants' claimed
invention. Id.
Appellants additionally note that their Specification discusses the
operation of Franssen's invention, in its "Background of the Invention"
section. App. Br. 11. 3 Appellants contend that the claimed configuration of
transducers provides an improved load impedance as compared to the
configuration of transducers in Franssen, thereby avoiding a high current
that may otherwise "result in the destruction of devices." App. Br. 17-18,
citing Spec. 1-3.
The Examiner has found that Franssen does not disclose the
configurations of transducers expressly recited in claims 1, 17, and 18. Ans.
16, 38, 40. Nonetheless, the Examiner has found the claimed configuration
of transducers to be obvious because Franssen discloses five transducers
connected in a circuit and there are a finite number of ways in which five
transducers can be connected in series/parallel configurations. Final Act. 5;
Ans. 39.
For example, claim 1 requires a first branch having two actuators
connected in series and a second branch having an actuator connected in
series to two actuators connected in parallel, where both branches are
connected in parallel. The Examiner finds Franssen to show a circuit
3 Appellants' Specification discusses EP 0034844, which is the "European
counterpart" of Franssen. App. Br. 11.
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Appeal2018-006718
Application 14/964,531
(Figure 2a) having two branches connected in parallel, with the first branch
having two actuators (1, 5) connected in series. Ans. 38-39. The Examiner
finds Franssen's circuit's second branch to have three actuators (2, 3, 4),
which are connected in parallel rather than having one actuator connected in
series to two actuators that are connected in parallel. Final Act. 4--5; Ans.
3 8-39. The respective configurations of claim 1, illustrated by Appellants'
Specification Figure 3, 4 and Franssen Figure 2a are reproduced below:
Specification Figure 3
\.~ .. -- 'v .. ··-- .. ,.i
"l-lOb
Franssen Figure 2a
,w ... l···
7
.... 1 ............................ ~ ................ ~
: ~ ~
I
~ I
~""l,----
·, .
.,.1
} FIG.2a
Figure 3 depicts five actuators arranged in a configuration of series and
parallel connections as set forth in claim 1. Figure 2a depicts five actuators
arranged in a configuration of series and parallel connections as set forth in
Franssen.
The Examiner finds that, "when facing a design need of providing an
arrangement for the three actuators in the second parallel branch, the
designer could have chosen one of the well-known finite choices to arrange
the three actuators based on designer's needs." Id. The Examiner states,
4 Appellants point to Figure 3 as illustrating claim 1. Ans. 10.
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Appeal2018-006718
Application 14/964,531
"one of ordinary skill in the art could have pursued the known potential
solutions with a reasonable expectation of success." Id. The Examiner
further found Franssen to motivate such modification of the disclosed
actuator configurations because Franssen suggests that a "directivity pattern
for the arrangement can be obtained, which, in the optimum case, is identical
to the directivity patterns of the individual transducers." Id., citing Franssen
col. 6, 11. 30-33.
We do not agree with the conclusions of the Examiner. Obviousness
may also be established by some teaching or motivation to modify the
teachings of the prior art to produce the claimed invention. In re Kahn, 441
F.3d 977, 986 (Fed. Cir. 2006). The Examiner relies upon Franssen's
discussion of obtaining a directivity pattern as a motivation or reason to
rearrange the transducers to match the claimed configuration. Ans. 39.
However, the Examiner has not pointed to any portion of Franssen that
relates the directivity pattern, or changes thereto, to a specific series/parallel
configuration of transducers. Rather, Franssen discusses the directivity
pattern in terms of the "conversion factors" used with the amplitude control
devices in converting an electric signal into an acoustic signal ( e.g., as
emitted from a transducer-loudspeaker array). Franssen col. 6, 11. 1-33. We
agree with Appellants that the Examiner has not sufficiently explained how
Franssen's discussion of a directivity pattern provides motivation to
configure the series/parallel connections of the transducers to that claimed
by Appellants.
Obviousness may also be found where a claimed device differs from a
prior art device merely by a rearrangement of parts such that the "operation
of the device would not thereby be modified." In re Japikse, 181 F.2d 1019,
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Application 14/964,531
1032 (CCPA 1950). In the present instance, Appellants have pointed to their
Specification to show that the operation of the prior art Franssen's device
would be modified by such rearrangement; i.e., Appellants' transducer
configuration would exhibit an improved load impedance as compared to the
configuration of transducers in Franssen so as to avoid a high current that
may otherwise "result in the destruction of devices." App. Br. 17-18, citing
Spec. 1-2. The Examiner has not presented any finding to the contrary that
would support a conclusion that rearranging the transducers would fail to
affect the operation of the transducer circuit. See, e.g., Ans. 45.
Obviousness may alternatively be found where there is a "design need
or market pressure to solve a problem, and there are a finite number of
identified predictable solutions" such that the use of options known to a
person of ordinary skill might show the result to be the product not of
innovation but of ordinary skill and common sense. KSR Intern. Co. v.
Teleflex Inc., 550 U.S. 398,421 (2007). However, obviousness is not to be
found by "merely throwing metaphorical darts at a board, in hopes of
arriving at a successful result," in absence of direction from the prior art. In
re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
Litigation," 676 F.3d 1063, 1070-1071 (Fed. Cir. 2012). Moreover, the
obviousness inquiry must "guard against slipping into hindsight" and "resist
the temptation to read into the prior art the teachings of the invention in
issue." Graham v. Deere, 383 U.S. 1, 36 (1966).
Here, the Examiner has not shown the existence of a design need to
solve a problem. Instead, the Examiner states "when facing a design need" a
designer could select one of the possible transducer configurations "based on
designer's needs." Ans. 39. This merely presupposes a need instead of
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Application 14/964,531
providing any specific design need so as to guide one of ordinary skill in the
art in modifying the circuit of Franssen and in selecting the configuration of
Appellants' claim 1. Nor, as discussed supra, does the Examiner's reliance
on Franssen's discussion of obtaining a directivity pattern provide any
design need relating to the series/parallel configuration of the transducers
within the circuit. There may be, as asserted by the Examiner, a finite
number of possible configurations for a given number transducers being
connected in either series or parallel connections. Ans. 39. 5 However, only
those configurations having differences from the prior art such that the
claimed invention as a whole would have been obvious are precluded from
patenting by 35 U.S.C. § 103.
The test for obviousness is "expansive and flexible," permitting
consideration of "interrelated teachings of multiple patents, [the] effects of
demands known to the design community or present in the marketplace;
[the] background knowledge possessed by a person having ordinary skill in
the art;" additionally, one can "consider the inferences and creative steps a
person of ordinary skill in would employ." KSR Intern. Co. v Teleflex Inc.,
550 U.S. at 415,418. However, other than the fact that the claimed
configuration of transducers appears in Appellants' disclosure, the Examiner
has provided insufficient explanation as to why one having ordinary skill in
the art would rearrange Franssen's circuit to result in the circuit of
5 Appellants dispute the Examiner's characterization that only three
transducers would be reconfigured, but not the underlying concept of
rearranging a finite number of Franssen's transducers. Reply Br. 3--4. We
note the Examiner does not explain why one would modify only three
actuators, or only five actuators, or be restricted from adding additional
circuit components based on "designer's needs."
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Application 14/964,531
Appellants' claim 1. We agree with Appellants that the Examiner's
rejection relies instead upon hindsight reconstruction of Appellants' claims.
See App. Br. 21-22; Reply Br. 3.
The Examiner's rejection of claim 18 is based upon the same rationale
for rearranging elements of Franssen's actuators to meet the claimed
configuration of claim 18. The Examiner finds Franssen to disclose circuits
(Figures 4a, 4b) that lack, in a second branch serially connected to the first
branch, an actuator connected in parallel to a serial connection of two
actuators. Final Act. 18-19. The Examiner finds that claim 18 would be
obvious over Franssen's disclosed circuits for the same reasons as for claim
1. Final Act. 19-20. For the same reasons discussed above, we agree with
Appellants that the Examiner's rejection of claim 18 is in error.
Furthermore, as claim 1 7 presents a method of producing an array of
actuators having the structure of either claim 1 or claim 18, we agree with
Appellants that the Examiner's rejection of claim 17 is in error.
For the above-described reasons, the Examiner has failed to set forth a
sufficient factual basis supporting the rejection of independent claims 1, 17,
and 18. Because "dependent claims are nonobvious if the independent
claims from which they depend are nonobvious," the rejections of dependent
claims 2-16 and 19-29 are also reversed. In re Fritsch, 972 F.2d 1260,
1266 (Fed. Cir. 1992). Accordingly, we do not sustain the Examiner's
rejection of claims 1-29 under 35 U.S.C. § 103.
DECISION
For the above-described reasons, the Examiner's rejections of claims
1-29 under 35 U.S.C. § 103 are reversed, and the Examiner's rejection of
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Application 14/964,531
claims 24, 27, and 28 are affirmed under 35 U.S.C. § 112(b). Accordingly,
we affirm the decision of the Examiner rejecting claims 24, 27, and 28, and
we reverse the decision of the Examiner rejecting claims 1-23, 25-26, and
29. Because some, but not all, of the claims remain under a rejection that
has been affirmed, we affirm-in-part.
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
11