Michael J. Lombardi et al.

Patent Trials and Appeals Board

Feb 13, 2020

14737990 - (D) (P.T.A.B. Feb. 13, 2020)

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.
14/737,990 06/12/2015 Michael J. Lombardi MM01259 1093
138858 7590 02/13/2020
Motorola/
McKinney Phillips LLC
1440 W. Taylor St.
Suite 749
Chicago, IL 60607
EXAMINER
CHEN, JUNPENG
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
02/13/2020 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.mobility@motorola.com
pipp@mckinneyphillips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. LOMBARDI, JOSEPH L. ALLORE, and
PAUL FORDHAM
Appeal 2018-005391
Application 14/737,990
Technology Center 2600
Before BRYAN F. MOORE, BETH Z. SHAW, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Motorola Mobility
LLC. Appeal Br. 1.
Appeal 2018-005391
Application 14/737,990
2
CLAIMED SUBJECT MATTER
The claims are directed to an adaptive audio in a modular portable
electronic device:
A modular device system includes a base device and
additional functionality modules that are separately dockable to
the base device to form a single device. The base device includes
one or more speakers and one or more microphones. For each
device, its multiple speakers and microphones are driven
independently of the other device when the devices are not
docked together. However, when one of the additional
functionality modules is docked to the base device, a
predetermined optimized audio configuration specific to the
particular additional functionality module is set for the combined
device.
Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of modifying an audio configuration of a combined
device comprising a first independently operable device having
a plurality of available audio configurations wherein the first
device emits audio in two or more of the available audio
configurations, and a second independently operable device, the
method comprising:
detecting a docking of the second independently operable
device to the first independently operable device;
detecting a device ID of the second independently
operable device at the first independently operable device;
resolving the device ID to a predetermined audio
configuration at the first independently operable device for the
combined device, the predetermined audio configuration being
one of the plurality of available audio configurations; and
applying the resolved predetermined audio configuration
to the combined device.
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Application 14/737,990
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Gengler US 2013/0259283 A1 Oct. 3, 2013
Foo US 2013/0332542 A1 Dec. 12, 2013

REJECTION
Claims 1–20 are rejected under 35 U.S.C. § 103 as being unpatentable
over Foo in view of Gengler. Final Act. 3–14.

OPINION
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are not persuaded by Appellant’s arguments regarding claims 1–20.
Appellant argues that claim 1 proves specific functionality:
Claim 1 . . . pertains to a combined device made up of two
independently operable audio devices, each one having at least
two audio configurations wherein audio is emitted (i.e., neither
of these modes is simply silence). The particular audio
configuration of the first device is selected based on detecting
and identifying the second device. For example, a mobile phone
may have an initial audio configuration when operated alone,
with the initial configuration using certain device speakers and
not others. The device may then reconfigure itself to exhibit a
different audio configuration after the add-on module is docked
to the phone, e.g., to use speakers on the device not previously
used instead of the speakers from the first configuration.
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Appeal Br. 8. Appellant further argues that “Foo does not teach or suggest
this functionality or associated structures or elements.” Id. Specifically,
Appellant argues
neither Foo nor Gengler teaches a “. . . device having a plurality
of available audio configurations wherein the first device emits
audio in two or more of the available audio configurations,” nor
do the references, taken together or separately, teach two
independently operable devices that may be docked together
with the claimed result.
Id. at 9
Appellant argues “Foo is not even arguably at issue in this regard,
since the Action concedes at page 4 that Foo fails to teach ‘. . . wherein the
first device emits audio in two or more of the available audio configurations
. . . .’” Appeal Br. 8–9.
Appellant further argues that “each second device (speaker) in
Gengler is a speaker that has two modes: (1) emitting an audio signal and (2)
not emitting an audio signal.” Appeal Br. 9. According to Appellant,
because “one mode is silence . . . Gengler fails to teach a device that has
multiple audio-emitting modes as expressly required in the claim.” Id.
(emphasis omitted).
Appellant also argues that the second device identified by the
Examiner in Foo is not an independently operable device:
[T]he Examiner’s host of second devices (a pile of speakers
waiting to be used) are certainly not independently operable in
any sense of the word. They are speakers. They must be driven
by an external driver. They are never going to operate
independently, and as such they plainly do not qualify as the
“second independently operable device” that claim 1 requires,
whether considered as separate inert speakers or as an inert
speaker pile.
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Id. According to Appellant, “independently operable” as recited in claim 1
means that “a device that is capable of performing its function independently
of the other device.” Reply Br. 1 (emphasis omitted). Appellant argues its
proposed construction is consistent with the Specification. Id. at 3 (citing
Spec. ¶ 16).2
The Examiner finds Foo teaches “a first independently operable
device and a second independently operable device (read as the docking of
device 100 on accessory device 102 to change the audio output
configuration.” Final Act. 3 (citing Foo ¶¶ 22–31, Fig. 1). The Examiner
acknowledges that Foo does not specifically teach that “the first
independently operable device having a plurality of available audio
configurations wherein the first device emits audio in two or more of the
available audio configurations, and the predetermined audio configuration
being one of the plurality of available audio configurations.” Id. at 4.
The Examiner also finds Gengler teaches a multi-speaker system 330
having stationary speaker unit 302 and portable speaker unit 304. Final Act.
4 (citing Gengler Fig. 1A-1D). The Examiner further finds that “the
switching circuit 318 controls the audio data to be transmitted to the
stationary speaker unit 302, the portable speaker unit 304, or both (i.e. one of
the two or more of the available audio configurations).” Id. (citing Gengler
¶¶ 53–57, Figs. 1A–1D, 5); see also Adv. Act. 3 (identifying emitting sound
from the stationary speaker as a first audio configuration and emitting sound
from the portable speaker as a second audio configuration); Ans. 19 (same).

2 The Reply Brief cites paragraph 13. This appears to be a typographical
error as the Reply Brief quotes from paragraph 16.
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The Examiner also concludes “that claim 1 fails to define
‘independently operable’ completely.” Ans. 17. Specifically, the Examiner
concludes that “[i]t is unclear what kind of operation(s) needs to be
independently performed to make the first and second devices to be qualified
as the ‘first independently operable device’ and the ‘second independently
operable device’.” Id. The Examiner concludes that the broadest reasonable
interpretation of “independently operable” is broad enough to encompass
“any devices that would powered ON/OFF independently, or would be any
devices that perform any kind of operation independently.” Id. at 18.
We do not need to construe the claim limitation “independently
operable” to decide this appeal. The Examiner finds Foo teaches a first
independently operable device and a second independently operable device
(Final Act. 3) and Appellant has not argued that finding was erroneous. “If
an appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.” Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (designated precedential).
Because “we need only construe those claim limitations ‘that are in
controversy, and only to the extent necessary to resolve the controversy,’”
we do not have to construe “independently operable” as recited in claim 1.
See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
Because Appellant’s arguments are directed to the references
individually, we are not persuaded that the Examiner erred. Although the
Examiner finds Foo teaches a first independently operable device and a
second independently operable device (Final Act. 3), Appellant’s argument
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focuses on whether Gengler teaches independently operable devices.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981). The issue is not whether Foo or Gengler teaches the
limitations recited in claim 1, but whether the combined teachings render
claim 1 obvious to a person having ordinary skill in the art, and Appellant
does not address that combination.
We further disagree with Appellant’s argument that Gengler does not
teach at least two audio configurations. To the contrary, we agree with the
Examiner that Gengler teaches two audio configurations: a first audio
configuration in which the stationary speaker is used when the portable
speaker is connected to the stationary speaker and a second audio
configuration in which the portable speaker is used when the portable
speaker is not connected to the stationary speaker. Gengler ¶ 56. The
enabling and disabling of the speakers in Gengler is similar to the
Specification’s discussion of enabling the speakers on one device while
disabling the speakers on another. Spec. ¶¶ 18, 41.
We further agree with the Examiner that a person of ordinary skill in
the art would have combined the teachings of Gengler (different audio
configurations when devices are separate or connected) with the two
independently operable devices taught by Foo for the reasons stated in the
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Final Action and Answer. See Final Act. 4. As discussed above, Appellant
does not address the combination.
Accordingly, we sustain the rejection of independent claim 1 along
with the rejections of independent claims 11 and 19, which are argued on the
same grounds, and dependent claims 2–10, 12–18, and 20, which are not
argued separately. See Appeal Br. 10.

CONCLUSION
The Examiner’s rejection of claims 1–20 is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–20 103(a) Foo, Gengler 1–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED