Voyetra Turtle Beach, Inc.

Patent Trials and Appeals Board

Aug 18, 2021

2020003638 (P.T.A.B. Aug. 18, 2021)

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.
15/155,408 05/16/2016 Carmine J. Bonanno 26770US04 6046
23446 7590 08/18/2021
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
EXAMINER
JOSHI, SUNITA
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
08/18/2021 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARMINE J. BONANNO
Appeal 2020-003638
Application 15/155,408
Technology Center 2600
Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and
CATHERINE SHIANG, Administrative Patent Judges.
DIXON, 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 1–6 and 8–20. Claims 7 and 21 are
canceled. 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(a) (2019). Appellant identifies the real party in interest as Voyetra
Turtle Beach, Inc. Appeal Br. 1.
Appeal 2020-003638
Application 15/155,408
2
CLAIMED SUBJECT MATTER
The claims are directed to an “enhancement of the game play
experience by modifying the game, chat and microphone voice sounds
comprising the audio signal paths in a gaming headset.” Spec. 1. Claim 1,
reproduced below, is illustrative of the claimed subject matter:2
1. A headset system comprising:

a signal processor operable to detect an inaudible tone
in an audio signal, wherein the audio signal is transmitted
from a source without being encoded and a sound
characteristic of the audio signal is modified in accordance
with the detected tone.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Cronin US 7,636,444 B2 Dec. 22, 2009
Coutinho et al. US 2007/0242834 A1 Oct. 18, 2007

REJECTIONS
Claims 1–6 and 8–20 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Coutinho in view Cronin.

2 We note that the preamble sets forth “headset system,” but the body of the
claim does not recite a “headset” and the “headset” is not physically
connected to the signal processor in Figure 11.
Appeal 2020-003638
Application 15/155,408
3
OPINION
35 U.S.C. § 103(a).
PRINCIPLES OF LAW
“[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed.
Cir. 2006).
“[T]he ‘mere disclosure of alternative designs does not teach away’”
and “just because better alternatives exist in the prior art does not mean that
an inferior combination is inapt for obviousness purposes.” In re Mouttet,
686 F.3d 1322, 1334 (Fed. Cir. 2012).
Although a reference that teaches away is a significant factor to
be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance.
A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to
some other product for the same use.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Where “the problem is known, the possible approaches to solving the
problem are known and finite, and the solution is predictable through use of
a known option,” a solution that is obvious to try may indeed be obvious.
Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008) (citing
KSR, 550 U.S. at 421). Moreover, a finding of obviousness under the
“obvious to try” standard “does not require absolute predictability of success
Appeal 2020-003638
Application 15/155,408
4
. . . all that is required is a reasonable expectation of success.” In re Kubin,
561 F.3d 1351, 1360 (Fed. Cir. 2009) (emphasis, internal quotation, and
bracketed alteration omitted) (quoting In re O’Farrell, 853 F.2d 894, 903–04
(Fed. Cir. 1988)).
We note claim terms are to be given their broadest reasonable
interpretation, as understood by those of ordinary skill in the art and taking
into account whatever enlightenment may be had from the specification. In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). “In the patentability
context, claims are to be given their broadest reasonable interpretations[,]
. . . limitations are not to be read into the claims from the specification.” In
re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted).

Independent Claims 1 and 17
Appellant does not advance separate arguments in support of the
patentability of independent claim 17. Appeal Br. 6; Reply Br. 5.
Accordingly, we exercise our authority under 37 C.F.R. § 41.37(c)(1)(iv)
and group independent claims 1 and 17 with representative claim 1. We
address dependent claims 2, 5, 19, and 20 separately, arguments which
Appellant could have made but did not make in the Brief are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
With respect to independent claim 1, the Examiner relies upon the
Coutinho reference for the headset system and the signal processor to
modify or customize the audio in the gaming headset and the Examiner
relies upon the Cronin reference to teach and suggest the “inaudible tone”
and the “without being encoded” limitations. Final Act. 2–4.
Appellant provides three arguments for patentability. Appeal Br. 4–6.
First, Appellant argues that the ambient noise in the Cronin reference is not
Appeal 2020-003638
Application 15/155,408
5
“inaudible,” and Appellant provides a definition of “[b]ackground noise”
(wikipedia.org/wiki/Background_noise) and contends that “[b]ecause
ambient noise is a sound it is audible.” Appeal Br. 4–5. Second, Appellant
argues that “[a]mbient noise is not an ‘inaudible tone.’” Appeal Br. 5
(emphasis omitted). Appellant contends that Cronin mentions
tone/pitch/frequency of the ambient noise states that “‘an audio alert rule
instructs an adjustment of the frequency of the audible tone of the audio
alert, when the frequency of the audible tone of the ambient noise is
similar to the frequency of the audible tone of the audio alert.’ (Cronin, 4:
16-19).” Appeal Br. 5.
Third, Appellant contends that the alleged inaudible tone is not in
Cronin’s audio alert. Appeal Br. 5–6; Reply Br. 1–2. Appellant provides an
extrapolation of an example in the Cronin reference and further contends
that
If the ambient noise is actually “in” Cronin’s audio alert (the
alleged “audio signal”), the ambient noise would rise to 22.5 dB
as Cronin’s audio alert rises to 22.5 dB. As a result, the audio
alert would then be readjusted by 1.5 times to 33.75 dB. This
would continue to a deafening level or until the speaker broke.
Such an arrangement is therefore inoperative and illogical. The
FOA’s hypothetical situation is merely hindsight.
Appeal Br. 6 (underlining omitted).
We disagree with Appellant and do not find that the Examiner’s
position regarding the prior art was an iterative process that would
continually raise the alert and ambient noise level to unreasonable levels.
See Final Act. 4; Ans. 5–6.
Appellant refines their argument in the Reply Brief and additionally
argues that the Examiner fails to show that the alleged “inaudible tone” is
Appeal 2020-003638
Application 15/155,408
6
“in” the alleged “audio signal” because the Examiner finds the inaudible
tone in the audio signal is the ambient noise in Cronin’s audio alert. Reply
Br. 4–5.
We disagree with Appellant and find that Appellant’s Summary of the
Claimed Subject Matter identifies only page 26, lines 3–22 for the
corresponding disclosure including “[s]ince the tones are very short, they are
not likely to be heard during the game play and therefore can control the
headset without distracting the user.” Spec. 26. As a result, we agree with
the Examiner that, consistent with the Specification, the ambient noise may
be low and may be “not likely to be heard” in certain circumstances.3
We also find that Appellant’s general argument regarding hindsight to
be unpersuasive. We further disagree with Appellant that the Examiner’s
obviousness rejection is based upon hindsight, but rather we find that the
claim language is broad based upon the broadest reasonable interpretation of
the single claim limitation.
Moreover, we note the broad language of independent claim 1 recites
“a signal processor operable to detect an inaudible tone in an audio signal”
where the occurrence of a single tone in an audio signal and then
prospectively modifying the audio signal within a “wherein” clause
concerning details of the audio signal. Clearly, the Cronin reference teaches
and suggests detecting an “inaudible tone” in an audio signal and a
subsequent modification of the audio signal in accordance with the detected

3 We note that the Examiner has not provided a lack of written description
support for the “inaudible tone.” The Examiner should evaluate the written
description support for the claim limitation in any further prosecution on the
merits.
Appeal 2020-003638
Application 15/155,408
7
tone.4 Cronin 3: 40-60: see also Final Act. 3–4. We note that the tone is in
the audio signal, but the tone cannot be “in” the audio signal that is modified
because the tone has occurred and used to modify the audio signal in the
future. As a result, Appellant’s general arguments do not show error in the
Examiner’s factual findings or conclusion of obviousness of representative
independent claim 1.
With respect to independent claim 17, Appellant does not provide
separate arguments for patentability and relies upon the arguments advanced
with respect to independent claim 1. Appeal Br. 6; Reply Br. 5. Because we
did not find Appellant’s arguments persuasive, we similarly find them
unpersuasive for independent claim 17 and group independent claim 17 to
fall with representative independent claim 1.

Dependent claim 2
Appellant repeats the claim language and then identifies the portion of
the reference relied upon by the Examiner in the Coutinho reference and
argues that the Coutinho reference uses an encoded digital signal and that
therefore it distinguishes from the claimed invention. Appeal Br. 6–7; Reply
Br. 6–8. We disagree with Appellant and note that the Examiner pointed out
with respect to independent claim 1 that the Cronin reference teaches the
inaudible tone in an audio signal and the audio signal is not encoded. As a
result, we find Appellant’s argument does not show error in the Examiner’s

4 We note that claim 1 is a singular element and its limitation does not recite
a sequence of tones and does not set forth a time parameter for a duration of
the audio signal that will continue to transmit future tones with future
modified audio that will contain additional tones. Additionally, we note that
the source is generically set forth with no limiting characteristics or the
control thereof.
Appeal 2020-003638
Application 15/155,408
8
factual findings or conclusion of obviousness of dependent claim 2. In the
Reply Brief, Appellant argues that “Coutinho’s encoded audio signal
requirement teaches away from “the audio signal [that] is transmitted from a
source [or device] without being encoded” as claimed.” Reply Br. 8
(boldface omitted). This is a new argument not presented in the Appeal
Brief.
The Reply Brief may respond to new arguments by the Examiner, but
should not “substitute” for the principal brief. In the absence of a showing
of good cause by Appellant, arguments in the Reply Brief that could have
been made in the Appeal Brief and are not responsive to any new evidence
or finding set forth by the Examiner in the Answer are deemed untimely and
are waived. 37 C.F.R. § 41.41(b)(2) (2017); see also Ex parte Nakashima,
93 USPQ2d 1834, 1837 (BPAI 2010) (explaining that arguments and
evidence not presented timely in the principal brief will not be considered
when filed in a reply brief, absent a showing of good cause explaining why
the argument could not have been presented in the principal brief); Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner’s rejections, but were
not.”).
The Federal Circuit has held “[a] reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Kahn, 441 F.3d at 990 (quoting In re Gurley, 27 F.3d at 553).
On this record, we find Appellant has not provided sufficient evidence
or persuasive argument that the references relied upon teach away from the
Appeal 2020-003638
Application 15/155,408
9
path taken by Appellant. The mere fact that there is a (different) way, does
not amount to a “teaching away.”5

Dependent claim 5
Appellant repeats the claim language and presents the same line of
reasoning as with dependent claim 2 which we do not find persuasive.
Appeal Br. 7; Reply Br. 6–8.

Dependent claim 19
Appellant sets forth a similar line of reasoning regarding the Coutinho
reference being “encoded.” Appeal Br. 8. We find this argument does not
address the combination as applied by the Examiner and does not show error
in the Examiner’s factual findings or conclusion of obviousness. We note
that independent claim 19 sets forth “the control signal is a wireless signal”
which would make the inaudible embedded tone and the audio signal to not
be encoded, which is contrary to wireless signals that have some encoding
and protocols for their transmission and reception. Additionally, Appellant
argues the “control signal” in independent claim 17 as it relates to dependent
claim 19 (Reply Br. 6–8), but Appellant did not separately argue
independent claim 17 and independent claim 1 does not recite a “control
signal.”

5 Additionally, we note that various dependent claims recite a “wireless
signal” which necessarily is encoded, “the signal processor is located in a
headset,” but there is no wired connection for an analog audio signal and
digital audio signals necessarily have some encoding/protocols for
conversion. Also, “the control signal” in dependent claim 16 lacks
antecedent basis in independent claim 1. We leave it to the Examiner to
consider these issues in any further prosecution on the merits.
Appeal 2020-003638
Application 15/155,408
10
Dependent claim 20
Appellant argues that “[w]hile this citation describes that Coutinho’s
video game generated an audio track, this citation says nothing about an
alleged control signal being generated by Coutinho’ s video game” Appeal
Br. 8 (underlining omitted). Appellant further argues that Coutinho’s
encoded audio signal requirement teaches away from “the audio signal [that]
is transmitted from a source [or device] without being encoded.” Reply Br.
8.
The Examiner provides a lengthy discussion of the Coutinho reference
and finds that “[t]he video signals may be displayed to the passengers on
display device 838, and the passengers may interact with the game software
being executed on the gaming console via inputs through game control
device (e.g. a joystick, touch pad, mouse, etc.) 836, thus teaching the game
controls are generated by the video game.” Ans. 9–10.
We agree with the Examiner that the video game provides signals from a
control device associated with a video game, and that the video game and its
controllers initiate audio signals that can include control signals.6 Coutinho
⁋ 0177”: see also Final Act. 13. We also note that “the device” and the
“video game” are not part of the claimed “headset,” which only comprises a
“signal processor” and “an input” and the remainder of the limitations detail
of the signals and their origin but do not limit the structure of the claimed

6 Additionally, we note that the claim sets forth a “device” and the audio
signal is transmitted from “the device,” but then identifies that the “video
game” generated the “control signal.” It is unclear whether the “device” is
the structure and the “video game” is the software operating on the
device/structure or if they are two different structures or the same structure.
We leave it to the Examiner to consider this issue in any further prosecution
on the merits.
Appeal 2020-003638
Application 15/155,408
11
“headset.” Additionally, we find Appellant’s general argument regarding
hindsight to be unpersuasive of error in the Examiner’s factual findings or
conclusion of obviousness, but rather that the language of representative
independent claim 1 is broad and Appellant did not argue the specific
limitations with regards to independent claim 17. As a result, Appellant’s
arguments do not persuasively show error in the Examiner’s factual findings
or conclusion of obviousness of dependent claim 20.
CONCLUSION
The Examiner’s obviousness rejection of claims 1–6 and 8–20 is
affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 8–20 103(a) Coutinho, Cronin 1–6, 8–20

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.
§ 41.50(f).
AFFIRMED