10836814 (B.P.A.I. Jan. 25, 2012)

Ex Parte Melillo

Board of Patent Appeals and InterferencesJan 25, 2012

10836814 (B.P.A.I. Jan. 25, 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. 10/836,814 04/30/2004 Louis Melillo 1860-0005 9267 7590 01/25/2012 Maginot, Moore & Beck LLP Chase Tower 111 Monument Circle, Suite 3250 Indianapolis, IN 46204-5109 EXAMINER SAUNDERS JR, JOSEPH ART UNIT PAPER NUMBER 2614 MAIL DATE DELIVERY MODE 01/25/2012 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 LOUIS MELILLO _____________ Appeal 2009-012908 Application 10/836,814 Technology Center 2600 ____________ Before JOSEPH F. RUGGIERO, MARC S. HOFF, and ELENI MANTIS MERCADER, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2009-012908 Application 10/836,814 2 Appellant requested a rehearing of our decision dated September 28, 2011, wherein we affirmed the rejections of claims 21-32. Appellant has raised no arguments with respect to affirmed claims 12 and 15-17. Thus, we will not address affirmed claims 12 and 15-17. A. The use of a transformer to configure the loudspeaker is not precluded by claims 29-32 Appellant argues that if Sahyoun’s loudspeaker was configured for 70 volts, then the loudspeaker would not require a step-down transformer to be connected between the 70 volt source and the loudspeaker (Reh’g. Req. 1-3). Appellant explains that if Sahyoun’s loudspeaker was configured for 70 volts, then the Sahyoun loudspeaker would not require that a step-down transformer be connected between the 70 volt source and the loudspeaker (Reh’g. Req. 2). We are not persuaded by Appellant’s arguments for the same reasons we articulated in our opinion, and which we re-iterate herein. Sahyoun’s loudspeakers meet the claim limitation because Sahyoun’s loudspeakers are “capable of” performing the intended function of being used with a 70 volt audio amplifier signal by utilizing a transformer. See In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). Furthermore, we previously agreed with the Examiner’s reliance (Ans. 12) on Appellant’s specification for the function of a transformer , wherein “Appellant’s specification states ‘commercial system installers have employed transformers to step down the Appeal 2009-012908 Application 10/836,814 3 voltage at the loudspeaker to allow for the use of 4 or 8 ohm loudspeakers with 70 or 100 volt systems’” (emphasis added) (Opinion 7-8). Therefore, Sahyoun’s loudspeakers, without any physical modification, are “capable of” use with a 70 volt audio signal with a transformer to step down the voltage at the loudspeaker, and thus, the loudspeakers are “configured for use with a 70 volt amplifier signal” as recited in claim 29. Furthermore, as we previously stated, claim 29 is open- ended because of the transitional term “comprising” in the preamble, and thus, the claim does not exclude the use of a transformer (see Ans. 12-13) so that the loudspeaker is configured by being connected to the transformer to step down the voltage for use with a 70 volt amplifier signal. While Appellant further argues that, based on Appellant’s own Specification, the elimination of the stepped down transformer is one of the stated objectives of the present invention (Reh’g. Req. 2), we do not read limitations from the Specification in to the claim. Although claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Thus, nothing in the recited claim language precludes the use of a transformer to configure the loudspeaker for use with a 70 volt amplifier signal. Nor does the claim recite the transitional term “consisting” which would exclude any additional elements, such as a transformer from being Appeal 2009-012908 Application 10/836,814 4 interpreted as the element that configures the loudspeaker to step down the voltage. Thus, we will sustain the Examiner’s rejection of claim 29 and dependent claims 30-32 which fall with claim 29. B. Claims 21-28 were rejected over a combination of references including DiSanza, and not DiSanza alone Appellant argues that DiSanza does not teach or suggest that the same speaker could or should be used as both a loudspeaker and headphone speaker (Reh’g. Req. 5). Accordingly, the prior art contains no teaching of using the extreme maximum impedance of a headphone speaker (60 ohm) and the extreme minimum impedance of a loudspeaker (4 ohm) in the same adjustable loudspeaker (Reh’g. Req. 5). We do not agree with Appellant’s arguments. As we previously stated (opinion 10), the Examiner reasons, and we agree, that DiSanza suggests the limitation at issue (Ans. 7-9, 15-16). DiSanza’s paragraph [0036] teaches that speakers for headphones may have an impedance value between 16 and 60 ohms and speakers may have an impedance value between 4 and 16 ohms (see FF 5 in our opinion). As we again previously stated (opinion 10-11), we agree with the Examiner that it would have been obvious to modify the single loudspeaker of Sahyoun as modified by the teaching of Vonlanthen to use various configurations of voice coils, and to use the impedance values 64 ohms and another impedance of 4 ohms as taught by DiSanza depending on the use of Appeal 2009-012908 Application 10/836,814 5 the speaker. The teaching relied upon in DiSanza is that depending on the type of use, speakers having different impedances are needed: for a headphone speaker, 16 to 60 ohms; for standard loudspeakers, 4 to 16 ohms (¶ [0036]). DiSanza’s relied upon teaching, would allow the single speaker of Sahyoun as modified by Vonlanthen’s various voice coils to alter the combination of those voice coils so that the resulting impedances allow different applications of the single versatile speaker as either a conventional speaker or as a headphone speaker (see Ans. 9). We did not rely on DiSanza’s teaching of two separate types of speakers; rather, we relied on DiSanza’s teaching that different impedance values are needed for different speaker uses. One cannot show non-obviousness by attacking references individually (i.e., DiSanza not teaching a single speaker) where the rejections are based on combinations of references (i.e., Sahyoun in combination with Vonlanthen teach a single speaker with various coil combinations resulting different impedances). See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Thus, we will sustain the Examiner’s rejection of claim 21 and dependent claims 22-28. ORDER Therefore, based on the foregoing discussion, we remain of the opinion that we appropriately affirmed the Examiner’s rejection of the claims. Appellant’s request for rehearing has been granted to the Appeal 2009-012908 Application 10/836,814 6 extent that our decision has been reconsidered, but such a request is denied with respect to making any modifications to the decision. 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). REHEARING DENIED