Ex Parte Stahl

Patent Trial and Appeal Board

Nov 25, 2014

12022175 (P.T.A.B. Nov. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CARL STAHL
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Appeal 2012-006009
Application 12/022,175
Technology Center 2600
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Before CARLA M. KRIVAK, JEFFREY S. SMITH, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2012-006009
Application 12/022,175

2
Illustrative Claim
The claimed subject matter relates to determining an accessory type
upon establishing a connection between an electronic device and an
accessory (Spec.1:5–8).
Claim 1 is illustrative and is reproduced below with a key limitation
emphasized:
1. A method of determining a characteristic of an accessory
with an electronic device, comprising:
upon the establishment of a physical and electrical
connection between predetermined contacts of a plug of the
accessory and corresponding predetermined contacts of a jack
of the electronic device, establishing a digital communication
with the accessory through the predetermined contacts of the
plug and the jack and, as part of the digital communication, the
accessory identifying the characteristic to the electronic device;
changing a setting of the electronic device in accordance
with the characteristic; and
following the digital communication, transmitting an
analog signal over the physical and electrical connection
between the predetermined contacts of the plug and the jack
from one of the electronic device or the accessory to the other
of the electronic device or accessory.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Eldumiati
Novotney
Jacobs
Thome
Bolton
US 2002/0012388 A1
US 2005/0240705 A1
US 2006/0223581 A1
US 2007/0099593 A1
US 7,441,058 B1
Jan. 31, 2002
Oct. 27, 2005
Oct. 5, 2006
May 3, 2007
Oct. 21, 2008

Appeal 2012-006009
Application 12/022,175

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Rejections
The Examiner made the following rejections:
Claims 1–5, 10–15, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Jacobs and Novotney. Ans. 5–9.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Jacobs, Novotney, and Eldumiati. Ans. 9–10.
Claims 7, 8, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jacobs, Novotney, and Bolton. Ans. 10–12.
Claims 9 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jacobs, Novotney, and Thome. Ans. 12–13.

ANALYSIS
Appellant’s contentions present us with the issue of whether the
Examiner erred in finding that the combination of Jacobs and Novotney
reasonably suggests “transmitting an analog signal over the physical and
electrical connection between the predetermined contacts of the plug and the
jack from one of the electronic device or the accessory to the other of the
electronic device or the accessory,” as recited in independent claim 1.1
Jacobs describes a mobile electronic device that allows for data
transfer from a data input device via an earphone/microphone connector.
Jacobs ¶ 16. A “device discriminator extension” may be implemented to
determine when a device is connected to the mobile electronic device and to

1 A similar limitation appears in each of independent claims 11 and 20, and
Appellant addresses all of the independent claims simultaneously. Separate
patentability is not argued for the dependent claims. App. Br. 7.
Accordingly, we treat claim 1 as representative of all claims. See 37 C.F.R.
§ 41.37(c)(1)(iv). Except for our ultimate decision, the other claims are not
discussed further herein.
Appeal 2012-006009
Application 12/022,175

4
determine whether the connected device is a data input device or an
earphone/microphone assembly. Id. ¶ 29. Once a device connection is
detected, the device discriminator extension performs a handshaking process
or interrogation process to determine whether the connected device is a data
input device. Id.
The Examiner acknowledges that Jacobs alone does not teach or
suggest all limitations of claim 1. Ans. 6. The Examiner additionally relies
on Novotney for its disclosure of a digital handshaking operation in which
an accessory device sends an “identify packet” to identify itself to a host
device. Id. (citing Novotney ¶ 78).
The Examiner finds that Jacobs describes a structure in which the
same set of contacts are used for both analog and digital communication.
Ans. 13 (citing Jacobs ¶ 17). Appellant does not dispute this finding. The
Examiner then reasons that adopting the specifics of the handshaking
operation taught by Novotney for the handshaking process identified by
Jacobs results in a combination that suggests all limitations of claim 1. Ans.
5–7, 13–17. That is, the Examiner describes a combination in which the
mobile electronic device responds to establishment of a physical and
electrical connection between predetermined contacts of a plug of an
accessory and corresponding predetermined contacts of a jack of the mobile
electronic device, as taught by Jacobs, by performing the digital
handshaking operation taught by Novotney. Upon determining that the
accessory is an earphone/microphone assembly as a result of Novotney’s
handshaking operation, an analog signal is transmitted over the physical and
electrical connection between the predetermined contacts of the plug and
jack.
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Application 12/022,175

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Appellant makes two observations concerning Jacobs alone. First,
Appellant observes that if one were to plug an earphone/microphone
assembly into Jacobs’s electronic device, no digital communications would
take place because there is presumably no answer from the
earphone/microphone assembly. App. Br. 5; Reply Br. 3. Second,
Appellant observes that if one were to plug a data input device into Jacobs’s
electronic device, no analog signal would be transmitted because
communication would continue in a digital format. App. Br. 5; Reply Br. 3–
4. In addition, Appellant observes that Novotney explicitly teaches the use
of different contacts for digital and analog communications. Reply. Br. 4–5.
The Examiner articulates reasoning based on sufficient rational
underpinnings to support the legal conclusion of obviousness. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Appellant’s arguments are
not persuasive because they do not address directly the combination
proposed by the Examiner. Instead, they improperly attack Jacobs and
Novotney individually. The test for obviousness is what the combined
teachings of the prior art would have suggested to the hypothetical person of
ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Specifically, Appellant’s contentions that Jacobs alone fails to teach all
limitations of claim 1, regardless whether an earphone/microphone assembly
or a data input device is connected, insufficiently accounts for the
Examiner’s reliance on Novotney. In addition, Appellant’s contention that
Novotney teaches the use of different contacts for digital and analog
communications insufficiently recognizes that Jacobs teaches such a feature
in the combination articulated by the Examiner.
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Application 12/022,175

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DECISION
The Examiner’s decision rejecting claims 1–20 is affirmed.
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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