Ex Parte Hall et al

Board of Patent Appeals and Interferences

Jun 27, 2012

09740524 (B.P.A.I. Jun. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RONALD W. HALL, DARYL T. BURKHARD, and
HARRY B. TAYLOR
____________
Appeal 2010-002475
Application 09/740,524
Technology Center 2600
____________

Before KALYAN K. DESHPANDE, JASON V. MORGAN, and
MICHAEL R. ZECHER, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
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Application 09/740,524

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 23-40. Claims 1-22 have been cancelled. Br. 4.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a system, method, and apparatus for establishing
operational settings between a programmable headset and a programming
unit. According to Appellants, the programming unit communicates with
the programmable headset by sending infrared light signals via an infrared
light emitter located on the programmable unit to an infrared light detector
located on the programmable headset. See Abstract.
Illustrative Claim
23. A system of programmable headsets comprising:
(a) a plurality of programmable headsets, wherein each
headset comprises:
(i) a headband; and
(ii) an electronics housing including:
(1) a headset infrared light detector arranged
to receive infrared light signals, convert the
infrared light signals into electric signals and
supply the electric signals to an output, the headset
infrared light detector being located in a detector
portion of the electronics housing;
(2) a headset signal processing device with
an input coupled to the output of the headset
infrared light detector for processing the electric
signals supplied by the headset infrared light
detector;
(3) a transmitter operably connected to the
headset signal processing device; and
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(4) a receiver operably connected to the
headset signal processing device; and
(b) a programming unit comprising:
(i) a programming unit signal processing device
with an output; and
(ii) a programming unit infrared light emitter
operable connected to the output of the programming unit
signal processing device;
(iii) wherein the programming unit signal
processing device is configured to output a signal to the
programming unit infrared light emitter containing the
operation frequency for the transmitter and the receiver
for transmission by the programming unit infrared light
emitter to the headset infrared light detector.

Prior Art Relied Upon
Lee US 5,247,380 Sept. 21, 1993
Ruppert US 6,236,969 B1 May 22, 2001
(filed July 31, 1998)
Takahashi US 6,525,854 B1 Feb. 25, 2003
(filed Dec. 23, 1998)

3M Headset Intercom System Model C960, Operating Instructions,
pp. i-iv and 1-21 (1999) (“3M”).

Rejections on Appeal
Claims 23-25, 27-30, 32, 35, and 37-40 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of 3M and Ruppert.
Ans. 3-13.
Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of 3M, Ruppert, and Takahashi. Ans. 13-
15.
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Claim 31 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of 3M, Ruppert, Takahashi, and well
known prior art (otherwise known as Official Notice). Ans. 15-17.
Claims 33, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of 3M, Ruppert, and Lee. Ans. 17-
19.
Examiner’s Findings and Conclusions
The Examiner finds that 3M’s disclosure of using a wired connection
to program the headset to the same channel as the base station, in
conjunction with Ruppert’s infrared (“IR”) communication between the base
station and the headset, teaches or suggests an IR communication from the
base unit that contains the operation frequency of the transmitter and
receiver for transmission to the telephone headset’s IR interface, as required
by independent claim 23. See Ans. 4-8 and 21-23. Further, the Examiner
finds multiple suggestions or motivations derived from the teachings of 3M
and Ruppert that support the incorporation of an IR interface/communication
between 3M’s base station and headset. See Ans. 6 and 24-33. The
Examiner also finds that since the suggestions or motivations are derived
from the cited prior art, the obviousness rejection of independent claim 23 is
not based on impermissible hindsight. Ans. 33.
Appellants’ Contentions
With respect to independent claim 23, Appellants contend that
Ruppert does not teach or suggest an IR communication from the base unit
that contains the operation frequency for the transmitter and the receiver for
transmission to the telephone headset’s IR interface. Br. 11. Further,
Appellants argue that the Examiner does not provide a sufficient motivation
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to combine 3M and Ruppert because the Examiner only addresses the first
modification to 3M’s system—namely adding an IR port—not the second
modification to 3M’s system—namely configuring 3M’s base station to send
an IR signal containing the operating frequency via an IR port to the headset.
See Br. 12. Appellants also allege that the Examiner engages in
impermissible hindsight reconstruction. See Br. 12-13. Appellants rely
upon the same arguments presented for the obviousness rejection of
independent claim 23 to rebut the obviousness rejection of independent
claims 32 and 35. See Br. 14-15.

II. ISSUE
Did the Examiner err in concluding that the combination of 3M and
Ruppert renders independent claims 23, 32, and 35 unpatentable? In
particular, the issue turns on whether:
(a) the combination of 3M and Ruppert teaches or suggests
“wherein the programming unit signal processing device is configured to
output a signal to the programming unit infrared light emitter containing the
operation frequency for the transmitter and the receiver for transmission by
the programming unit infrared light emitter to the headset infrared light
detector,” as recited in independent claim 23, and similarly recited in
independent claims 32 and 35; and
(b) the Examiner provides an articulated reason with some rational
underpinning to combine 3M and Ruppert.

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III. ANALYSIS
We have reviewed the Examiner’s obviousness rejections in light of
Appellants’ contentions that the Examiner has erred. We disagree with
Appellants’ conclusions. The Examiner summarizes and addresses each of
Appellants’ contentions with respect to independent claims 23, 32, and 35.
See Ans. 19-34. Accordingly, we adopt as our own: 1) the findings and
reasons set forth by the Examiner in the Final Rejection from which this
appeal is taken (see Ans. 3-19); and 2) the reasons set forth by the Examiner
in the Answer in response to Appellants’ Brief (see Ans. 19-34).
Nonetheless, we highlight specific findings and arguments as follows.
In contesting the rejection of independent claim 23, we note that
Appellants merely attack Ruppert in isolation, rather than attack the
combined teachings of 3M and Ruppert relied upon by the Examiner to
formulate the rejection of the disputed claim limitation. See Br. 11. This
argument is unavailing because it focuses primarily on Ruppert’s alleged
shortcomings. It does not persuade us of error in the Examiner’s position,
which is based on the collective teachings of 3M and Ruppert. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.”).
Further, we are not persuaded by Appellants’ argument that the
Examiner does not provide a sufficient motivation to address the second
significant modification to 3M’s system—namely configuring 3M’s system
to send an IR signal containing the operating frequency via an IR port to the
headset. See Br. 12. Nor are we persuaded by Appellants’ argument that the
Examiner engages in impermissible hindsight reconstruction. See Br. 12-13.
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Upon reviewing the record before us, we find that the Examiner’s
suggestions to modify 3M with the teachings of Rupert in order to achieve
the claimed invention suffice as articulated reasons with some rational
underpinnings to establish a prima facie case of obviousness. See Ans. 8 and
23-33.
In addition, we find that an ordinarily skilled artisan would have
found it obvious to substitute 3M’s wired connection used to establish the
same operation channel between the base station and headset (22-23; Figure
22), with Ruppert’s wireless connection between the IR interface located on
the base unit and the IR port located on the telephone headset (col. 6, l. 63-
col. 7, l. 13). We note that the mere substitution of Ruppert’s wireless
connection for 3M’s wired connection predictably uses prior art elements
according to their established functions—an obvious improvement. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Moreover, Appellants
have not provided any evidence that such a substitution is beyond the level
of an ordinarily skilled artisan. See Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
It follows that the Examiner has not erred in rejecting independent
claims 23, 32, and 35, and dependent claims 24-31, 33, 34, and 36-40 not
separately argued with particularity.

IV. CONCLUSION
The Examiner has not erred in rejecting claims 23-40 as being
unpatentable under 35 U.S.C. § 103(a).

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V. DECISION
We affirm the Examiner’s decision to reject claims 23-40.
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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