Ex Parte Crutchfield

Board of Patent Appeals and Interferences

Jun 26, 2012

10045524 (B.P.A.I. Jun. 26, 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.
10/045,524 11/07/2001 Randolph E. Crutchfield ITL.0690US (P13221) 4270
21906 7590 06/27/2012
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
MEI, XU
ART UNIT PAPER NUMBER
2614
MAIL DATE DELIVERY MODE
06/27/2012 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
____________________

Ex parte RANDOLPH E. CRUTCHFIELD
____________________

Appeal 2009-013681
Application 10/045,524
Technology Center 2600
____________________

Before MAHSHID D. SAADAT, ERIC S. FRAHM, and
BRYAN F. MOORE, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 32-41. Claims 1-31 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part.
Exemplary Claims
Exemplary claims 32, 35, 38, and 41 under appeal read as follows:

32. An electrical device comprising:

a selectively variable impedance;

a control to receive one of at least two states and to change the
impedance of said selectively variable impedance to signal said state.

35. A method comprising:

receiving a selection of one of at least two states; and

varying the impedance of a selectively variable impedance in a first
device to develop a state signal for a remote second device to indicate said
selected state.

38. A digital audio player comprising:

an impedance level detector; and

an interface coupled to said detector to change the operation of said
digital audio player based on information provided by said impedance level
detector.

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41. The apparatus of claim 38 wherein said impedance level detector
detects an impedance which is indicative of a condition including one of a
play, a stop, a pause, or a rewind command.
Examiner’s Rejections
(1) The Examiner rejected claims 32-34 under 35 U.S.C. § 102(b) as
being anticipated by Nakabayashi (US 5,097,378). Ans. 3-4.1
(2) The Examiner rejected claims 35-37 under 35 U.S.C. § 102(b) as
being anticipated by Osawa (US 5,307,326). Ans. 4.2

(3) The Examiner rejected claims 38, 39, and 41 under
35 U.S.C. § 102(e) as being anticipated by Adams (US 6,594,366 B1). Ans.
4-5.3

1 Separate patentability is not argued for claims 33 and 34 (see App. Br. 10;
Reply Br. 1-2). We select claim 32 as representative of the group of claims
consisting of claims 32-34 rejected under 35 U.S.C. § 102(b) over
Nakayabashi, pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
See In re McDaniel, 293 F.3d 1379, 1383 (Fed. Cir. 2002) (“If the brief fails
to meet either requirement [of 37 CFR § 1.192(c)(7)], the Board is free to
select a single claim from each group of claims subject to a common ground
of rejection as representative of all claims in that group and to decide the
appeal of that rejection based solely on the selected representative claim.”).
In view of the foregoing, our analysis will only address the merits of
representative claim 32.
2 Separate patentability is not argued for claim 37 (see App. Br. 10-11;
Reply Br. 2). We select claim 35 as representative of the group of claims
consisting of claims 35 and 37 rejected under 35 U.S.C. § 102(b) over
Osawa, pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii). In view
of the foregoing, our analysis will only address the merits of representative
claim 35 and claim 36 separately argued.
3 Separate patentability is not argued for claim 39 (see App. Br. 11-12;
Reply Br. 2). We select claim 38 as representative of the group of claims
consisting of claims 38 and 39 rejected under 35 U.S.C. § 102(e) over
Adams, pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii). In
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(4) The Examiner rejected claim 40 as being unpatentable under
35 U.S.C. § 103(a) over Adams. Ans. 5-6.
Appellant’s Contentions
(1) Appellant contends that the Examiner erred in rejecting claims 32-
34 under 35 U.S.C. § 102(b) as being anticipated by Nakabayashi for
numerous reasons, including:
(i) Nakabayashi fails to use a selectively variable impedance to
signal a state as set forth in claim 32, and instead uses switch position
as shown in the chart in column 7, lines 40-45 (App. Br. 10);
(ii) Nakabayashi fails to perform impedance signaling or use
impedance levels to signal a state, as recited in claim 32 (App. Br.
10);
(iii) Nakabayashi fails to receive at least one of two states, as
recited in claim 32 (Reply Br. 1-2); and
(iv) Nakabayashi fails to disclose signaling the states by
changing impedance (Reply Br. 1-2).

view of the foregoing, our analysis will only address the merits of
representative claim 38 and claim 41 separately argued.

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(2) Appellant contends that the Examiner erred in rejecting claims 35-
37 under 35 U.S.C. § 102(b) as being anticipated by Osawa for numerous
reasons, including:
(i) even if Osawa’s impedance adjusting circuit 11 varies
impedance, it fails to develop a state signal for a remote second device
to indicate the selected state, as recited in claim 35 (App. Br. 10-11);
(ii) Osawa fails to translate a cassette player command by
varying impedance, as recited in claim 36 (App. Br. 11);
(iii) Osawa fails to disclose any state signaling, as recited in
claim 35 (Reply Br. 2); and
(iv) there is no basis for the Examiner’s argument at the top of
page 8 of the Answer (Reply Br. 2).
(3) Appellant contends that the Examiner erred in rejecting claims 38,
39, and 41 under 35 U.S.C. § 102(e) as being anticipated by Adams for
numerous reasons, including:
(i) Adams fails to disclose an interface that changes the
operation of the digital audio player, as recited in claim 38 (App. Br.
11-12); and
(ii) Adams fails to detect impedance indicative of a play, stop,
pause, or rewind command, as recited in claim 41, and Adams just
detects what type of headphones are connected (App. Br. 11-12); and
(iii) the Examiner fails to address the merits of claim 41 (Reply
Br. 3).
(4) Appellant contends (App. Br. 12) that the Examiner erred in
rejecting claim 40 under 35 U.S.C. § 103(a) as being unpatentable over
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Adams because Adams fails to disclose detecting four impedance levels, as
recited in claim 40.
Issues on Appeal
Based on Appellant’s arguments, the following issues are presented
on appeal:
(1) Has the Examiner erred in rejecting claims 32-34 as being
anticipated by Nakabayashi because Nakabayashi fails to teach a
“selectively variable impedance,” and “a control to receive one of at least
two states and to change the impedance of said selectively variable
impedance to signal said state,” as recited in claim 32?
(2) Has the Examiner erred in rejecting claims 35-37 as being
anticipated by Osawa because (i) Osawa’s impedance adjusting circuit 11
fails to provide a state signaling function, as recited in claim 35, and (ii)
Osawa fails to teach translating a cassette player command by varying the
impedance, as recited in claim 36?
(3) Has the Examiner erred in rejecting claims 38 and 39 as being
anticipated by Adams because Adams fails to teach an interface for changing
the operation of the digital audio player based on information provided by an
impedance level detector, as recited in claim 38?
(4) Has the Examiner erred in rejecting claim 41 as being anticipated
by Adams because Adams fails to teach “detect[ing] an impedance which is
indicative of a condition including one of a play, a stop, a pause, or a rewind
command,” as recited in claim 41?
(5) Did the Examiner err in rejecting claim 40 as being obvious
because Adams fails to teach or suggest detecting at least four impedance
levels, as recited in claim 40?
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief (App. Br. 10-12) and the Reply Brief (Reply
Br. 1-3) that the Examiner has erred.
First Issue: Claims 32-34
We disagree with Appellant’s conclusions regarding the anticipation
rejection over Nakabayashi as to claims 32-34 (see supra Appellant’s
Contentions (1)(i)-(iv)). With regard to the rejection of claims 32-34, we
adopt as our own (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken, and (2) the reasons set forth by
the Examiner in the Examiner’s Answer in response to Appellant’s Appeal
Brief (Ans. 3-4 and 6), with one exception. We do not agree with the
Examiner (Ans. 3 and 6) that the controller 5 shown in Nakabayashi’s
Figures 1 and 2 and described column 6, line 53 through column 7, line 57
meets the “control” limitation set forth in claim 32.4 Instead, we find that
Nakabayashi’s disclosure of control logic circuit 6, which receives 2-bit
control signals (i.e., signals with at least two states) from controller 5,
decodes the control signals, and selects which switches 9-12 are to be
energized (col. 7, ll. 25-35). We concur with the conclusions reached by the
Examiner as to the rejection of claims 32-34.
Nakabayashi teaches a “selectively variable impedance,” and “a
control to receive one of at least two states and to change the impedance of
said selectively variable impedance to signal said state,” as recited in claim

4 Claim 32 recites “a control to receive one of at least two states and to
change the impedance of said selectively variable impedance to signal said
state” (claim 32).
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32. Because Nakabayashi discloses 2-bit control signals (i.e., signals having
at least two states) sent from controller 5 to control logic circuit 6 for
selecting variable impedance switches 9-12 for activation (col. 7, ll. 15-48),
Nakabayashi teaches using a selectively variable impedance to signal a state
as set forth in claim 32. In this light, Appellant’s argument (see supra
Appellant’s Contention (1)(i); App. Br. 10), that Nakabayashi’s use of
switch position as shown in the chart in column 7, lines 40-45 is not the
same as changing an impedance of a selectively variable impedance to signal
a state, is not persuasive.
Appellant’s argument (see supra Appellant’s Contention (1)(ii); App.
Br. 10) that Nakabayashi fails to teach “impedance signaling” or the use of
“impedance levels” to signal a state, as recited in claim 32 is not
commensurate in scope with the actual language of claim 32 and is therefore
not persuasive.
In view of the foregoing, we will sustain the Examiner’s anticipation
rejection of claim 32, as well as claims 33 and 34 which depend therefrom.
Second Issue: Claims 35-37
With regard to the rejection of claims 35-37 as being anticipated by
Osawa, we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken, and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Appeal Brief (Ans. 4 and 7-8). We concur with the conclusions
reached by the Examiner as to the rejection of claims 35-37.
We do not agree with Appellant’s contentions (App. Br. 10-11; Reply
Br. 2) that Osawa’s impedance adjusting circuit 11 fails to disclose
developing a state signal for a remote second device to indicate the selected
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state, or state signaling, as set forth in claim 35. Osawa discloses that
impedance adjusting circuit 11 receives the selection of one of at least two
states (e.g., ON/OFF control signal S2 described at col. 1, ll. 55-68; col. 2, ll.
1-11 and 60-62) and varies impedance (col. 4, ll. 3-11 describing impedance
modulator 11 as modulating or varying the impedance) in a first device (Fig.
1, element 2 which is a cassette player) to develop a state signal for a remote
second device (Fig. 1, element 3).
With regard to claim 36, we agree with the Examiner (Ans. 4 and 8)
that Osawa’s ON/OFF control signal S2 (see col. 1, ll. 55-68; col. 2, ll. 1-11
and 60-62; col. 3, ll. 64-68) is a variable impedance which is a cassette
player command which is translated, as recited in claim 36 (App. Br. 11;
Reply Br. 2).
In view of the foregoing, we do not agree with Appellant’s
contentions that the Examiner erred with respect to the rejection of claims
35-37 (see supra Appellant’s contentions (2)(i)-(iv)), and we will sustain the
Examiner’s anticipation rejection of claim 35, as well as claims 36 and 37
which depend therefrom.
Third Issue: Claims 38 and 39
With regard to the rejection of claims 38 and 39 as being anticipated
by Adams, we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken, and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Appeal Brief (Ans. 4-5 and 8). We concur with the conclusions
reached by the Examiner as to the rejection of claims 38 and 39.
We do not agree with Appellant’s contention that the Examiner erred
because Adams fails to disclose an interface that changes the operation of
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the digital audio player, as recited in claim 38 (App. Br. 11-12).
Specifically, Adams discloses an interface (switches S1 and S2 and control
208 shown in Fig. 3 and jack 120 shown in Fig. 1) coupled to an impedance
level detector 210 that changes the operation of the device (e.g., between
AM/FM mode or telephone mode as described at col. 1, ll. 51-67; col. 3, ll.
62-67; col. 4, ll. 16-25) based on the information provided by the impedance
level detector 210 (see Ans. 4-5 and 8). Thus, Adams discloses an interface
for changing the operation of the digital audio player based on information
provided by an impedance level detector, as recited in claim 38.
In view of the foregoing, we do not agree with Appellant’s
contentions that the Examiner erred with respect to the rejection of claims 38
and 39 (see supra Appellant’s contention (3)(i)), and we will sustain the
Examiner’s anticipation rejection of claim 38, as well as claim 39 which
depends therefrom.
Fourth Issue: Claim 41
We agree with Appellant’s contention (App. Br. 11-12; Appellant’s
Contention (3)(ii) supra) that (i) Adams fails to detect impedance indicative
of a play, stop, pause, or rewind command, as recited in claim 41, and (ii)
instead Adams just detects what type of headphones are connected (see, e.g.,
Adams at ). We do not agree with the Examiner’s determination that
Adams’ detection of device operation being in the AM/FM radio mode or
the telephone mode “inherently indicates that [the] device is in the play
mode or play command” (Ans. 5). Similarly, we do not agree with the
Examiner’s position that Adams’ mode switching “would have met the
claimed invention as recited in claim 41” (Ans. 9 (emphasis added)).
Sensing a change in impedance to determine that a device is in an AM/FM
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radio mode or in a telephone mode, as in Adams, is not the same as detecting
impedance indicative of a play, stop, pause, or rewind command as set forth
in claim 41. And, such a mode determination does not inherently teach such
command(s).
Because Adams fails to teach “detect[ing] an impedance which is
indicative of a condition including one of a play, a stop, a pause, or a rewind
command,” as recited in claim 41, we will not sustain the Examiner’s
rejection of claim 41 under 35 U.S.C. § 102(e).
Fifth Issue: Claim 40
The issue raised regarding claim 40 in this appeal requires us to
interpret claim 40 giving the claim terms thereof the broadest reasonable
interpretation consistent with the Specification. See, e.g., In re Suitco
Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010) (quoting In re ICON
Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citing In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004))); In re
Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
Claim 40 merely requires that the impedance level detector recited in
base claim 38 from which it depends “detects one of at least four impedance
levels.” Notably, the language of claim 40 does not place any limitation on
what the four impedance levels are, or preclude one or more of those
impedance levels from being the same. In addition, the language of claim 40
only requires the detection of one impedance level.
Adams discloses a sensing circuit for sensing impedance levels for
two channels, where there are four possible impedance levels that can be
detected, since there are two possible impedance levels associated with each
channel (i.e., low and high). Adams at col. 1, ll. 58-64; col. 4, ll. 16-25. The
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four possible impedance levels associated with the two channels are used to
detect three possible conditions: (1) both channels are at low impedance and
stereo headphones 101 are connected; (2) one channel has low impedance
representing earphones 112 and 114, the other channel has high impedance
representing microphone 110, and telephone headset 103 is connected; and
(3) neither channel is at low impedance (i.e., both channels are at a high
impedance level) and nothing is connected (see col. 1, ll. 58-64; col. 4, ll.
16-25).
In this light, Appellants have not persuaded us that Adams’ sensing
methodology and device is not encompassed by the language of claim 40 on
appeal. We agree with the Examiner (see Ans. 5-6 and 9-10) that the subject
matter recited in claim 40 is unpatentable under 35 U.S.C. § 103(a) over
Adams, and we will sustain the Examiner’s obviousness rejection.
Additionally, in our view Adams anticipates claim 40 in light of our
discussion supra regarding the operation of Adams.
A disclosure that anticipates under 35 U.S.C. § 102 also renders the
claim unpatentable under 35 U.S.C. § 103, for "anticipation is the epitome of
obviousness." Jones V. Hardy, 727 F.2d 1524, 15292 (Fed. Cir. 1984). See
also In re Fracalossi, 681 F.2d 792,794 (CCPA 1982); In re Pearson, 494
F.2d 1399, 1402 (CCPA 1974).
Because “a rejection for obviousness under § 103 can be based on a
reference which happens to anticipate the claimed subject matter” (In re
Meyer, 599 F.2d 1026, 1031 (CCPA 1979)), and Adams anticipates the
apparatus of claim 40, we will sustain the Examiner’s obviousness rejection
of claim 40.

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CONCLUSIONS
(1) The Examiner did not err in rejecting (a) claims 32-34 under
35 U.S.C. § 102(b) as being anticipated by Nakabayashi; (b) claims 35-37
under 35 U.S.C. § 102(b) as being anticipated by Osawa; (c) claims 38 and
39 under 35 U.S.C. § 102(e) as being anticipated by Adams; or (d) claim 40
as being unpatentable under 35 U.S.C. § 103(a) over Adams.
(2) The Examiner erred in rejecting claim 41 as being anticipated
under 35 U.S.C. § 102(e) over Adams.

DECISION
The Examiner’s rejection of claims 32-34 under 35 U.S.C. § 102(b) as
being anticipated by Nakabayashi is affirmed.
The Examiner’s rejection of claims 35-37 under 35 U.S.C. § 102(b) as
being anticipated by Osawa is affirmed.
The Examiner’s rejection of claims 38 and 39 under
35 U.S.C. § 102(e) as being anticipated by Adams is affirmed.
The Examiner’s rejection of claim 41 under 35 U.S.C. § 102(e) as
being anticipated by Adams is reversed.
The Examiner’s rejection of claim 40 as being unpatentable under
35 U.S.C. § 103(a) over Adams is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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