Ex Parte Norris

Patent Trial and Appeal Board

Apr 28, 2017

14510940 (P.T.A.B. Apr. 28, 2017)

United States Patent and Trademark Office
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.
14/510,940 10/09/2014 Elwood Grant Norris 31XJ-198027 2549
30764 7590 05/02/2017
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
12275 EL CAMINO REAL, SUITE 200
SAN DIEGO, CA 92130
EXAMINER
ZHANG, LESHUI
ART UNIT PAPER NUMBER
2654
NOTIFICATION DATE DELIVERY MODE
05/02/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
DOCKETING@ SHEPPARDMULLIN.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELWOOD GRANT NORRIS
Appeal 2017-006282
Application 14/510,94c1
Technology Center 2600
Before KRISTEN L. DROESCH, JOHNNY A. KUMAR, and
JOHN P. PINKERTON, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) from the Examiner’
Final Rejection of claims 1—21, all of the pending claims in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant indicates the real party-in-interest is Turtle Beach Corporation.
Br. 1.
Appeal 2017-006282
Application 14/510,940
BACKGROUND
The disclosed invention relates to an ultrasonic emitter system for
parametric audio speakers including a backing plate and an amplifier
integrated directly onto or into the backing plate. Spec. Abstract, || 2, 6.
CLAIMED SUBJECT MATTER
Representative claim 1, reproduced from the Claims Appendix of the
Appeal Brief, reads as follows (disputed limitation in italics)'.
1. An ultrasonic emitter configured to launch a pressure-
wave representation of an audio modulated ultrasonic carrier
signal into the air, comprising:
a backing plate having a conductive region;
a signal line carrying an audio signal used in modulation
of the audio modulated ultrasonic carrier signal;
an amplifier integrated directly onto or into the backing
plate for amplifying the audio modulated ultrasonic carrier
signal, wherein an emitting element in conjunction with the
backing plate launches the pressure-wave representation of the
audio modulated ultrasonic carrier signal into the air.
REFERENCES AND REJECTIONS ON APPEAL
Claims 1, 4—12, and 17—19 stand rejected under 35 U.S.C. § 103 as
unpatentable over Matsuzawa et al. (US 2008/0013761 Al; Jan. 17, 2008)
(“Matsuzawa”) and Tezuka (US 6,308,389 Bl; Oct. 30, 2001).
Claims 2, 3, 13—15, 20, and 21 stand rejected under 35 U.S.C. § 103
as unpatentable over Matsuzawa, Tezuka, and Miyazaki (US 2007/0121970
Al; May 31, 2007).
Claim 16 stands rejected under 35 U.S.C. § 103 as unpatentable over
Matsuzawa, Tezuka, and Anderson (US 5,721,783; Feb. 24, 1998).
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Application 14/510,940
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief and the Examiner’s Answer. Appellant’s
arguments are not persuasive of Examiner error. We agree with, and adopt
as our own, the Examiner’s factual findings and conclusions of law to the
extent consistent with the analysis below. We highlight and address specific
findings and arguments below for emphasis.
The Examiner finds that Matsuzawa teaches the limitations of
independent claims 1, 9, and 18 with the exception of “an amplifier
integrated directly onto or into the backing plate,” as recited in claims 1, and
18, and recited similarly in claim 9. See Final Act. 3—6 (citing Matsuzawa
1197, 107, 154, 210, 214, 215, Figs. 1, 1 IB, 11C, 17). The Examiner finds
that Tezuka teaches an ultrasonic transducer wherein an amplifier formed on
printed circuit board 10 is integrated directly onto or into a backing plate
comprising the combination of backing layer 1 and circuit board 10 in
Figure 2. See Final Act. 4—5 (citing Tezuka, 5:7—28, Abstract, Title, Figs. 1—
2). The Examiner determined it would have been obvious to one of ordinary
skill in the art at the time of the invention to apply the amplifier and backing
layer, wherein the amplifier is integrated directly onto or into the backing
plate, taught by Tezuka, to the amplifier and backing plate in the ultrasonic
emitter of Matsuzawa for the benefits of an improvement of mechanical and
acoustic performances under a variety of operating conditions, and a
reduction of manufacturing steps. See Ans. 5 (citing Tezuka 2:12—29, 7:65—
8:2).
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Application 14/510,940
Appellant asserts “Tezuka teaches an ultrasonic transducer mounted
outside of, but on top of a backing layer ‘for damping ultrasonic waves’
where ‘[s]tacked flexible printed boards ... are buried in this backing
layer.’” App. Br. 8 (citing Tezuka 5:8—10, 6:14—22). Appellant contends
that Tezuka discloses explicitly that the layer into which the amplifier is
buried is used for damping ultrasonic waves, and that layer is a soft resin
having high ultrasonic damping performance. See id. (citing Tezuka 6:14—
22). Appellant argues that because Tezuka discloses that the backing layer
is used for damping ultrasonic waves, and the printed circuit boards are
buried in the backing layer, Tezuka’s “backing layer will ultimately damp
ultrasonic wave representations of an amplified audio signal.” Id. Similar to
the previous arguments, Appellant argues that the emitting element and
backing plate work together to launch the ultrasonic signal, and, therefore,
the backing plate is not used to damp the pressure wave. See id. at 13.
We are not persuaded by Appellant’s arguments because Appellant
does not direct us to objective evidence (e.g., testimony by one with ordinary
skill in the art) to support the assertion that Tezuka’s “backing layer will
ultimately damp ultrasonic wave representations of an amplified audio
signal.” See Br. 8. Argument of counsel cannot take the place of evidence
lacking in the record. See Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA
1977); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). We also are not
persuaded by Appellant’s suggestion that Tezuka’s backing layer will damp
all emitted ultrasonic wave representations, because, as noted by Appellant,
“Tezuka teaches using an ultrasonic wave damping layer to acoustically
‘insulate’ the printed circuit boards from the active transducer.” Br. 12.
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Application 14/510,940
Appellant also argues that the prior art references are not properly
combinable because the proposed modification would render the prior art
inoperable or unsatisfactory for its intended purpose. See Br. 9. Appellant
contends that “the proposed modification requires either embedding the
purported backing plate of Matsuzawa’s (elements 35 and 12) in an
ultrasonic energy damping backing layer, or replacing the purported backing
plate of Matsuzawa with a printed circuit board and an amplifier embedded
in the energy damping backing layer.” Id. Appellant argues that in either
case, the embedding of a conductive element in an ultrasonic energy
damping resin would render the emitter of Matsuzawa inoperable and,
therefore, unsatisfactory for its intended purpose. See id. at 9—10; see also
id. at 14 (similar argument specific to limitations of independent claim 9), id.
at 16—17 (similar argument specific to limitations of independent claim 18).
Appellant’s arguments are not persuasive because the Examiner does not
propose embedding Matsuzawa’s backing plate or conductive element into
Tezuka’s damping backing layer, and does not propose replacing
Matsuzawa’s backing plate with a printed circuit board and an amplified
embedded in the energy damping backing layer. See Final Act. 5.
Appellant also argues that the prior art references are not properly
combinable because Tezuka teaches away from the claimed invention. See
Br. 9—10. Appellant argues that the “claims also require that the emitter
‘launch a pressure wave representation of the audio modulated ultrasonic
carrier signal into the air,”’ but “the ultrasonic wave damping backing layer
of Tezuka plays no part in the emission of any wave,” and “is merely a
platform upon which an entirely separate emitter element is mounted.” Id. at
10; see id. at 13 (arguing that claim 1 requires the emitting element and
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Application 14/510,940
backing plate work together to launch the ultrasonic signal and, therefore,
the backing plate is not used to damp the pressure wave.).
We are not persuaded that Tezuka teaches away from the claimed
invention because Tezuka’s backing layer may have a different purpose.
Although Appellant highlights differences between Tezuka and the claimed
invention, Appellant does not address sufficiently whether Tezuka suggests
that the developments flowing from its disclosures are unlikely to produce
the objectives of Appellant’s invention. See Syntex (U.S.A.) LLC v. Apotex,
Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005), In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). A teaching of something different does not constitute a
teaching away.
Related to the previous arguments, Appellant contends that there is no
teaching, suggestion, or motivation to integrate an amplifier onto the
backing plate of Matsuzawa because Matsuzawa is directed to an ultrasonic
speaker for audio applications, and Tezuka is directed to an ultrasonic
diagnostic apparatus that relies on a two-dimensional array transducer. See
Br. 10-11. Appellant asserts that “the problems [] sought to be solved by
Tezuka are not faced by one seeking to create an ultrasonic audio speaker
such as in Matsuzawa.” See id. at 10; see also id. at 10-11 (highlighting
differences and problems addressed in Tezuka and Matsuzawa, citing
Tezuka 1:63—2:24, Matsuzawa H 16, 18—21). Appellant also argues that
“the goal/purpose of Tezuka is contrary to an integrated amplifier for
amplifying an audio modulated ultrasonic carrier signal in an ultrasonic
emitter for launching a pressure-wave representation of the audio modulated
ultrasonic carrier.” Id. at 18.
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Application 14/510,940
We are not persuaded by Appellant’s arguments because the use of
patents as references is not limited to what the patentees describe as their
own inventions or to the problems with which they are concerned, as they
are a part of the literature and are relevant for all they contain. In re Heck,
699 F.2d 1331, 1333 (Fed. Cir. 1983), citing In re Lemelson, 397 F.2d 1006,
1009 (CCPA 1968). To the extent that Appellant argues Tezuka is non-
analogous art (see Br. 10-11, 19), Appellant’s argument is not persuasive
because Appellant does not meaningfully address the Examiner’s finding
that Tezuka is in an analogous field of endeavor because it is directed to an
ultrasonic transducer. See Br. 10-11; Final Act. 4. In addition, although
Appellant highlights differences between Tezuka and the claimed invention,
Appellant does not address sufficiently why Tezuka is not in the field of
Appellant’s endeavor or is not reasonably pertinent to the particular problem
with which the inventor was concerned. See In re Kahn, 441 F.3d at 987; In
reBigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); see Br. 10-11.
Also related to the previous arguments, Appellant takes issue with the
change in position in the Notice of Panel Decision from Pre-Appeal Brief
Review mailed November 23, 2015 compared to the position in the Final
Rejection. See Br. 19. Appellant argues that it is improper to find in the
Final Rejection that Tezuka teaches an amplifier integrated directly onto or
into the backing plate for amplifying the audio modulated ultrasonic carrier
signal and later find in the Notice of Panel Decision that Tezuka does not
necessarily disclose the amplifier is for amplifying audio modulated
ultrasonic carrier signals. See id. at 18—19; Final Act. 4—5; Notice of Panel
Decision from Pre-Appeal Brief Review 2.
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We are not persuaded that the change in position amounts to
reversible error because, as noted by the Examiner, Matsuzawa also teaches
an amplifier for amplifying the audio modulated ultrasonic carrier signal.
See Notice of Panel Decision from Pre-Appeal Brief Review 2; see also
Final Act. 4 (finding Matsuzawa teaches an amplifier for amplifying the
audio modulated ultrasonic carrier signal). Thus, we agree that it would
have been obvious to one with ordinary skill in the art at the time of the
invention to apply the amplifier integrated onto or into the backing plate, as
taught by Tezuka, to the amplifier and backing plate in the ultrasonic emitter
as taught by Matsuzawa for the benefit of reducing manufacturing steps. See
Final Act. 5; Tezuka 7:65—8:2. Stated differently, it would have been
obvious to one with ordinary skill in the art at the time of the invention to
modify Matsuzawa’s backing plate and amplifier for amplifying audio
modulated ultrasonic carrier signals by integrating the amplifier directly into
or onto the backing plate, in view of Tezuka’s teaching or suggestion, for the
benefit of reducing manufacturing steps.
Appellant further contends that the Examiner’s obviousness
determination rests on conclusory statements, and fails to provide the
required articulated reasoning or explicit analysis. See Br. 8—9 (citing MPEP
§ 2143, KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398,418 (2007), In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)). Appellant’s argument is not persuasive
because it does not substantively address the Examiner’s finding that one
with ordinary skill in the art would have combined the teachings of the
references for the benefit of reducing manufacturing steps. See Br. 8—9;
Final Act. 5 (citing Tezuka 7:65—8:2).
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Appellant further argues that the proposed combination does not lead
to the claimed invention because “Tezuka’s structure comprises an active
transducer which is a piezoelectric material covered by two electrodes
separated from the printed circuit boards and amplifiers by a resin for
ultrasonic insulation purposes,” but the claimed invention “integrates the
amplifiers directly to the active portion of the transducer (i.e., integrated
with the first pole).” Br. 15; see id. at 13—14, 17. On this basis, Appellant
contends the claimed invention is not achieved by combining Tezuka and
Matsuzawa. See id. at 14, 15, 17. Appellant’s arguments are not persuasive
because they are not commensurate in scope with the claim limitations.
Claims 1, 9, and 18 do not recite integrating the amplifier directly to an
active portion of a transducer (i.e., a conductive layer of the backing plate)
or that the amplifiers are integrated with the first pole. Contrary to
Appellant’s suggestion, none of claims 1, 9, and 18 require the entire
backing plate to be a conductive region, and, therefore, none of claims 1, 9,
and 18 require the amplifier to be integrated directly onto the conductive
region.
Lastly, Appellant addresses separately independent claim 18, arguing
that Tezuka does not teach or suggest “a ‘bipolar’ apparatus, such that ‘the
backing plate includes a conductive region and another layer having a
conductive region, where an amplified signal is applied to the conductive
regions of both the backing plate and the other layer.’” Br. 17. Appellant’s
argument is not persuasive because it addresses the teachings of Tezuka
alone rather than the teachings of Matsuzawa and Tezuka, as combined by
the Examiner. The Examiner relies on the teachings of Matsuzawa as
modified in view of Tezuka’s teaching or suggestion to integrate the
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amplifier onto or into the backing plate. See Final Act. 3—6. One cannot
show non-obviousness by analyzing a reference individually where the
rejection is based on a combination of references. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
For all of the foregoing reasons, we are not persuaded of error in the
rejection of independent claims 1, 9, and 18. Appellant does not present
separate substantive arguments addressing dependent claims 2—8, 10-17,
and 19—21. See App. Br. 14, 15, 19-20. Accordingly, for the same reasons
as claims 1, 9, and 18, we are not persuaded of error in the rejections of
dependent claims 2—8, 10-17, and 19-21.
DECISION
We AFFIRM the rejections of claims 1—21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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