Ex parte MENGEL

Board of Patent Appeals and Interferences

Oct 21, 1998

08227301 (B.P.A.I. Oct. 21, 1998)

Application for patent filed April 13, 1994. According to appellant,1
this application is a continuation of Application 08/077,319, filed June 15,
1993 (abandoned); which is a continuation of Application 07/751,736, filed
August 29, 1991 (abandoned).
1
Paper No. 46
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte CLARE L. MENGEL
______________
Appeal No. 96-1739
Application 08/227,3011
_______________
ON BRIEF
_______________
Before JERRY SMITH, BARRETT and LEE, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal No. 96-1739
Application 08/227,301
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 25 and 28-35. Claims
1-24, 26 and 27 have been cancelled. Claim 36 was also
rejected by the examiner, however, appellant has indicated
that the appeal with respect to claim 36 is dropped [brief,
page 1].
The invention pertains to a method for avoiding short
circuit cancellation of acoustical energy from opposite sides
of a low frequency piston loudspeaker. Specifically, a planar
open cell foam having a uniform cross section is selected and
attached to the front of the loudspeaker cone so that the
acoustic radiation coming out of the foam is 180 degrees out
of phase with respect to the front of the piston loudspeaker
and in phase with respect to the rear side of the piston
loudspeaker.
Representative claim 25 is reproduced as follows:
25. A method for avoiding short circuit cancellation of
acoustical energy from opposite sides of a low frequency
piston loudspeaker, the method comprising the steps of:
a) providing a low frequency piston loudspeaker with the
piston being in a cone shape supported by a frame, the
loudspeaker having a diameter of at least twelve inches, the
cone having a front side and a rear side activatable for
acoustically moving air;
Appeal No. 96-1739
Application 08/227,301
3
b) attaching planar open cell foam having a uniform cross
section and comprising randomly oriented contractible cells
either directly to the front side of the cone or to the frame
in front of the cone to enclose a volume of air between the
front side of the piston loudspeaker and the open cell foam
such that the open cell foam is energizable responsive to
activation of the piston loudspeaker;
c) activating the piston loudspeaker at a low frequency
such that all points of the cone surface move in phase to
acoustically move air towards the open cell foam;
d) engaging the foam with the acoustically moved air such
that the contractible cells contract and the foam becomes
elastically stiff, and thereby energizing the foam with the
acoustically moved air such that the foam acoustically
radiates one hundred and eighty degrees out of phase with
respect to the front side of the piston loudspeaker and in
phase with respect to the rear side of the same piston
loudspeaker to thereby avoid short circuit cancellation of
acoustical energy.
The examiner relies on the following references:
Broadley 3,187,832 June 08,
1965
Long 3,735,336 May 22,
1973
Pohlmann et al. (Pohlmann) 4,161,995 July 24,
1979
King 4,387,787 June 14,
1983
Claims 25 and 28-35 stand rejected under 35 U.S.C. §
112, second paragraph, for failing to particularly point out
and distinctly claim the invention. Claim 25 also stands
Appeal No. 96-1739
Application 08/227,301
4
rejected under 35 U.S.C. § 103 as being unpatentable over Long
in view
of King and Broadley. Claims 28-35 also stand rejected under
35 U.S.C. § 103 as being unpatentable over Long in view of
Broadley, King or Pohlmann. A rejection of claims 28-35 under
the first paragraph of 35 U.S.C. § 112 was withdrawn by the
examiner in response to appellant’s brief [substitute answer,
page 7].
Appeal No. 96-1739
Application 08/227,301
5
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answers for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner, the arguments
in support of the rejections and the evidence of obviousness
relied upon by the examiner as support for the obviousness
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that claims 25 and 28-35 particularly point out the
invention in a manner which complies with 35 U.S.C. § 112. We
are also of the view that the collective evidence relied upon
and the level of skill in the particular art would not have
suggested to one of ordinary skill in the art the obviousness
Appeal No. 96-1739
Application 08/227,301
6
of the invention as set forth in claims 25 and 28-35.
Accordingly, we reverse.
We consider first the rejection of claims 25 and 28-35
under the second paragraph of 35 U.S.C. § 112. The examiner’s
rejection states the following:
The claimed terms “low”, “substantially”,
“generally” and “about” render the claims
indefinite [substitute answer, page 4].
It is the examiner’s position that these are terms of degree
for which no appropriate standard has been provided in the
disclosure for measuring that degree. The examiner concludes
that the artisan would not be apprised of the scope of the
invention when the claims are read in light of the disclosure.
Appellant provides arguments as to why the criticized terms
would be clearly understood by the artisan when such terms are
interpreted in light of the disclosure [brief, pages 8-12].
The general rule is that a claim must set out and
circumscribe a particular area with a reasonable degree of
precision and particularity when read in light of the
disclosure as it would be by the artisan. In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Acceptability
of the claim language depends on whether one of ordinary skill
Appeal No. 96-1739
Application 08/227,301
7
in the art would understand what is claimed in light of the
specification. Seattle Box Co., v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984).
We basically agree with appellant’s position as set
forth in the brief. It appears that the examiner wants some
specific values for what are considered “low frequency”
signals even though the description makes it clear that the
values of low frequency which are subject to cancellation are
a function of the dimensions of the loudspeaker. Therefore,
the low frequencies which are affected by the invention vary
as a function of the dimensions of the loudspeaker. We agree
with appellant that the artisan would understand that a
frequency which is subject to cancellation in the manner
described in the disclosure is a “low frequency” within the
meaning of the claimed invention. Low frequency is a relative
term which would be clear to the artisan in the context of the
disclosure.
We are also of the view that the claim recitations of
“substantially preventing air displaced,” “generally planar,”
“substantially uniform cross section,” “substantially 180 out o
Appeal No. 96-1739
Application 08/227,301
8
of phase,” “about 12 inches” and “about one inch thick” are
sufficiently clear in light of the disclosure as to satisfy
the requirements of 35 U.S.C. § 112. As appellant points out,
these terms are used to indicate that an insignificant
deviation from the literal value can occur as long as the
deviation has an inconsequential effect on the performance of
the invention. Those persons skilled in this art would be
presumed to know what deviations have a consequential effect
on performance and which deviations have an inconsequential
effect on performance. Such artisans, therefore, should
understand the scope of the invention set forth in the claims.
Since we agree with appellant that the artisan having
considered the specification of this application would have no
difficulty ascertaining the scope of the invention recited in
claims 25 and 28-35, the rejection of these claims under the
second paragraph of 35 U.S.C. § 112 is not sustained.
We now consider the rejection of claim 25 under 35
U.S.C. § 103 as unpatentable over the teachings of Long, King
and Broadley. In rejecting claims under 35 U.S.C. § 103, it
is incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
Appeal No. 96-1739
Application 08/227,301
9
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual deter-
minations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (CCPA 1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
As indicated by the cases just cited, the examiner has
Appeal No. 96-1739
Application 08/227,301
10
at least two responsibilities in setting forth a rejection
under 35 U.S.C. § 103. First, the examiner must identify all
the differences between the claimed invention and the
teachings of the prior art. Second, the examiner must explain
why the identified differences would have been the result of
an obvious modification of the prior art. In our view, the
examiner has
not properly addressed his first responsibility so that it is
impossible that he has successfully fulfilled his second
responsibility.
The examiner cites Long as the primary reference and
indicates only two differences between the invention of claim
25 and Long. First, the examiner notes that Long does not
teach a loudspeaker having a diameter of at least twelve
inches. Broadley teaches a loudspeaker cone having a diameter
of twelve inches, and the examiner asserts that it would have
been obvious to increase the Long loudspeaker to twelve inches
in view of Broadley’s teachings. Second, the examiner notes
that Long does not teach attaching the open cell foam directly
to the front side of the cone or to the frame in front of the
cone. Broadley and King teach attaching a material to the
Appeal No. 96-1739
Application 08/227,301
11
cone or cone support to improve sound quality. The examiner
concludes that it would have been obvious to the artisan to
attach the open foam cell of Long in the manner taught by
Broadley or King [answer, pages 4-5].
Appellant argues that both modifications to Long
proposed by the examiner are not suggested within the applied
references and would have a deleterious effect on the
performance of the Long loudspeaker. Appellant also argues
that the combination proposed by the examiner still does not
address certain limitations of claim 25. We basically agree
with all the arguments of appellant as set forth in the
briefs.
There would apparently be no reason to modify the Long
high frequency loudspeaker to be at least twelve inches in
diameter and to attach the unattached foam cell lens to the
cone or cone assembly. These modifications would not be
suitable for enhancing the operation of the Long loudspeaker
in the intended high frequency operating range. All the
evidence of record in this case suggests that the
modifications proposed by the examiner reduce the efficiency
of the Long loudspeaker.
Appeal No. 96-1739
Application 08/227,301
12
It is also clear that the examiner has not properly
considered specific limitations of claim 25. The foam cell of
Long does not have a uniform cross section despite the
examiner’s assertions to the contrary. The loudspeaker of
Long modified to be larger with an attached open cell foam
would not have the claimed properties that the foam cells
contract to become elastically stiff and the radiation from
the foam would not have the in and out of phase properties
recited in claim 25. The examiner simply asserts that these
properties would be present
in the modified loudspeaker of Long despite all the evidence
of record in this case which suggests otherwise.
Thus, we are of the view that the examiner has not
established a prima facie case of the obviousness of claim 25.
Since we do not sustain the rejection of claim 25 based on
obviousness, we need not consider appellant’s arguments
related to “secondary considerations” of nonobviousness.
We now consider the rejection of claims 28-35 under
35 U.S.C. § 103 as unpatentable over Long in view of Broadley,
King or Pohlmann. The examiner observes that the only
difference between Long and the claimed invention is
Appeal No. 96-1739
Application 08/227,301
13
“attaching said foam to said loudspeaker, either directly or
indirectly, with an air-tight attachment to create an
operative portion of said foam, the air tight attachment
substantially preventing air displaced by movement of said
piston from passing between the operative portion of the foam
and the piston” [answer, page 5]. Each of Broadley, King and
Pohlmann teaches attaching a material to the cone or cone
assembly of a loudspeaker. The examiner asserts that it would
have been obvious to the artisan to attach the
foam cell in Long in the manner suggested by Broadley, King or
Pohlmann [Id. at pages 5-6].
Appellant notes several limitations of independent
claim 28 which are the same as or similar to recitations
previously discussed with respect to claim 25. For reasons we
have discussed above, we agree with appellant that there is no
suggestion within the applied references to support the
modifications proposed by the examiner, and the examiner has
failed to properly consider specific recitations of the
claims. Therefore, we do not sustain the rejection of
claims 28-35 as unpatentable over Long in view of Broadley,
King or Pohlmann.
Appeal No. 96-1739
Application 08/227,301
14
In summary, the rejection of claims 25 and 28-35 under
the second paragraph of 35 U.S.C. § 112 is not sustained. The
rejection of claims 25 and 28-35 under 35 U.S.C. § 103 is not
sustained. Accordingly, the decision of the examiner
rejecting claims 25 and 28-35 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
LEE E. BARRETT ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMESON LEE )
Administrative Patent Judge )

JS/cam
Appeal No. 96-1739
Application 08/227,301
15
Steven P. Shurtz
William, Brinks, Hofer, Gibson & Lione
P. O. Box 10395
Chicago, IL 60610