Ex Parte Debettencourt et al

Patent Trial and Appeal Board

Mar 27, 2013

11211064 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LISA DEBETTENCOURT and NEIL W. GRIFFITHS

Appeal 2011-001531
Application 11/211,0641
Technology Center 2600
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Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed August 24, 2005. The real party in interest is Bose
Corporation. (App. Br. 1.)
Appeal 2011-001531
Application 11/211,064

2

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-8, 10, and 12-38, which are all the claims
remaining in the application. Claims 9 and 11 have been canceled. (App.
Br. 1.) We have jurisdiction under 35 U.S.C. § 6(b). An Oral Hearing was
held on March 14, 2013.
We affirm.
Appellants’ Invention
The invention at issue on appeal concerns systems and methods for
controlling an audio system including an audio device and a remote
(external) controller with a control switch that controls functions of the
audio device as well as external devices connected to the audio device.
(Spec. ¶¶ [0001]-[0004], [00028]; Abstract.)2
Representative Claim
Independent claim 1, reproduced below with disputed limitations
italicized, further illustrates the invention:
1. An audio system comprising:
an audio device for processing an audio signal;
a remote controller separate from the audio device and
having a control switch, constructed and arranged to control a
function of the audio device; and
an external device coupled to the audio device through a
coupling constructed and arranged to modify the function of the
audio device such that the control switch controls a modified

2 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed May 26, 2010; and Reply Brief (“Reply Br.”) filed September 8, 2010.
We also refer to the Examiner’s Answer (“Ans.”) mailed August 18, 2010.
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function of the audio device when the external device is coupled
to the audio device.
Rejection on Appeal
The Examiner rejects claims 1-8, 10, and 12-38 under 35 U.S.C.
§ 103(a) as being unpatentable over US Pat. Pub. No. 2004/0151327 A1,
published Aug. 5. 2004 (“Marlow”) and US Pat. Pub. No. 2003/0007649
A1, published Jan. 9, 2003 (“Riggs”).

ISSUES
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
Does the Examiner err in finding that the combination of Marlow and
Riggs is properly combinable and collectively would have taught or
suggested “[a]n audio system comprising[] an audio device,” “a remote
controller . . . having a control switch,” and “an external device coupled to
the audio device through a coupling constructed and arranged to modify the
function of the audio device such that the control switch controls a modified
function of the audio device when the external device is coupled to the audio
device” as recited in claim 1?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own.

Appeal 2011-001531
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ANALYSIS
Based on Appellants’ arguments (App. Br. 2, 9-13), we select
independent claim 1 as representative of Appellants’ arguments and
groupings with respect to claims 1-8, 10, and 12-38. 37 C.F.R.
§ 41.37(c)(1)(iv).
The § 103 Rejection of Claims 1-8, 10, and 12-38
Appellants contend that the combination of Marlow and Riggs fails to
teach or suggest certain features of the claimed invention and is not properly
combinable. (Br. 10-13; Reply Br. 3-4.) Specifically, Appellants contend:
Construing the claims as one of ordinary skill in the art would,
in light of the specification, requires noting that FIG. 1
discloses audio device 101 coupled to a number of external
devices with remote controller 116 having a control switch that
controls a modified function of the audio device when the
external device is coupled to the audio device. This limitation is
not disclosed in the primary reference or the secondary
reference. The secondary reference is only cited for a separate
remote controller, but neither reference discloses the limitation
of the external device coupled to the audio device through a
coupling constructed and arranged to modify the function of the
audio device such that the control switch controls a modified
function of the recited audio device when the external device is
coupled to the audio device.
Accordingly, it is impossible to combine the references to
meet the limitations of the rejected claims.
. . . .
Further, modifying the primary reference to include a
remote control separate from the audio device and having a
control switch, constructed and arranged to control a function of
the audio device, would destroy the integration between the car
audio system itself and an external device sought in the primary
reference.
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(App. Br. 10-11, 13.)
The Examiner sets forth a detailed explanation of the obviousness
rejection in the Examiner’s Answer with respect to each of the claims (Ans.
3-15) and, in particular, the rejection of claim 1 (Ans. 3-4, 14-15).
Specifically, the Examiner provides a detailed explanation with respect to
Marlow’s disclosure of an audio system including an audio device and a
controller with a control switch controlling functions of the audio device and
which also controls audio device functions modified by coupling an external
device. (Ans. 3-4, 14 (citing Marlow, ¶¶ [0041]-[0042], [0044]; Figs. 1, 9.)
The Examiner further explains that Riggs describes a remote controller that
controls audio system functions. (Ans. 3-4, 14 (citing Riggs, ¶ [0043]; Figs.
3.) The Examiner also provides a rationale for combining Riggs with
Marlow: “so that the user can conveniently control multiple electronic
devices without having to reach for the actual electronic device.” (Ans. 4.)
We adopt these findings and this reasoning as our own.
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s findings and ultimate conclusion that the
combination of Marlow and Riggs is properly combinable and would have
taught or at least suggested the disputed features of claim 1. Accordingly,
we sustain the Examiner’s rejection of claim 1 for the reasons set forth in the
Answer, which we incorporate herein by reference. (Ans. 3-4, 14-15.) We
limit our additional analysis to the following points of emphasis.
We initially note the argued limitation fails to distinguish the claimed
invention from the prior art either structurally or functionally. Specifically,
the recited feature – a “control switch” that “controls a modified function of
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the audio device” when “an external device [is] coupled to the audio device
through a coupling constructed and arranged to modify the function of the
audio device” (claim 1) – recites functional language that is merely a
statement of intended use or purpose of the control switch and which
“usually will not limit the scope of the claim because such statements
usually do no more than define a context in which the invention operates.”
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003).
Even if we arguendo ascribe some patentable weight to the limitation,
as explained by the Examiner, Marlow and Riggs teach or at least would
have suggested this broadly claimed feature. (Ans. 3-4, 14.) Marlow
describes “an audio device integration system” (Marlow ¶ [0041]) that
integrates external devices, for example a CD changer, with a car
stereo/radio wherein the car radio controls the functionality of the external
device. (Ans. 3-4, 14; Marlow, ¶¶ [0041]-[0042], [0044].) Riggs describes
a remote control that controls an “in-dash stereo.” (Ans. 3-4, 14; Riggs, ¶
[0043].)
With respect to Appellants’ combinability arguments, the Examiner
provides a rationale for combining the references (supra) – “control[ling]
multiple electronic devices without having to reach for the actual electronic
device” (Ans. 4, 15), i.e., improved functionality and ease of use. Therefore,
the Examiner has stated “some rational underpinning to support the legal
conclusion of obviousness,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)), and
Appellants have not shown error therein.
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We further conclude that it would have been well with the skill of one
skilled in the art to combine such known techniques to provide a remote
control, as taught by Riggs, that controls add on external devices through an
in-dash audio device (head unit / car radio) as taught by Marlow. See KSR,
550 U.S. at 417 (“[I]f 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 unless its
actual application is beyond his or her skill” (citations omitted)).
Thus, Appellants do not persuade us of error in the Examiner’s
obviousness rejection of independent claim 1 or independent claims 20 and
30 and dependent claims 2-8, 10, 12-19, 21-29, and 31-38 not separately
argued with particularity (App. Br. 9-13). Accordingly, we affirm the
Examiner’s obviousness rejection of claims 1-8, 10, and 12-38.

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1-8, 10, and 12-38 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1-8, 10, and 12-38.
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

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