Apple Inc.

Patent Trials and Appeals BoardSep 29, 2021

2021005131 (P.T.A.B. Sep. 29, 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. 16/017,888 06/25/2018 Marc-Angelo P. Carino P35886US1 7590 65015 7590 09/29/2021 Treyz Law Group 6501 E. Greenway Pkwy #103-621 Scottsdale, AZ 85254 EXAMINER KRZYSTAN, ALEXANDER J ART UNIT PAPER NUMBER 2653 NOTIFICATION DATE DELIVERY MODE 09/29/2021 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): patents@treyzlawgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MARC-ANGELO P. CARINO, GARETH J. POWELL, and CHEN NA ____________________ Appeal 2021 -005131 Application 16/017,8881 Technology Center 2600 ____________________ Before MARC S. HOFF, JAMES R. HUGHES, and BETH Z. SHAW, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a Non-Final Rejection of claims 1, 3–10, 12, 14–21, and 23.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant states that the real party in interest is Apple Inc. Appeal Br. 2. 2 Claims 2, 11, 13, 22, and 24 have been cancelled. Appeal 2021-005131 Application 16/017,888 2 Appellant’s invention is an earbud that includes capacitive sensor electrodes and a capacitance-to-digital converter. The earbud may have a housing in which a speaker is mounted. A tubular portion of the housing has a passageway aligned with the speaker. The tubular portion includes a compressible tubular member on which the capacitive sensor electrodes are formed. Compression of the tubular member may occur when the earbud is worn in the user’s ear. Control circuitry in the earbud may determine whether the earbud is fully or partially within a user’s ear, based on capacitance measurements. Abstract. Claim 1 is reproduced below: 1. An ear bud, comprising: a housing having a compressible tubular portion with a passageway; a speaker in the housing that is aligned with the passageway and that is configured to provide sound through the passageway; and capacitive sensor electrodes on the compressible tubular portion, the compressible tubular portion being compressible to change a capacitance of the capacitive sensor electrodes by changing a spacing between the capacitive sensor electrodes. The prior art relied upon by the Examiner as evidence is: Name Reference Date Jones US 2015/0382093 Al Dec. 31, 2015 Cartledge US 2017 /0087364 Al Mar. 30, 2017 Kofman US 2019/0052951 Al Feb. 14, 2019 Chiba US 2020/0011649 Al Jan. 9, 2020 Claims 9, 10, 12, and 14–21 stand rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. Appeal 2021-005131 Application 16/017,888 3 Claims 1, 3–10, 12, 14–18, and 21 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kofman and Cartledge. Claim 23 stands rejected under 35 U.S.C. § 103 as being unpatentable over Kofman, Cartledge, and Chiba. Claims 19 and 20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kofman, Cartledge, and Jones. Throughout this decision, we make reference to the Appeal Brief (“Appeal Br.,” filed May 6, 2021), the Reply Brief (“Reply Br.,” filed Aug. 30, 2021), and the Examiner’s Answer (“Ans.,” mailed July 1, 2021) for their respective details. ISSUE Does the combination of Kofman and Cartledge teach or suggest capacitive sensor electrodes on the compressible tubular portion, the compressible tubular portion being compressible to change a capacitance of the capacitive sensor electrodes by changing a spacing between the capacitive sensor electrodes? ANALYSIS Section 112(b) Rejection The Examiner rejects claim 9, 10, 12, and 14–16 because “it is not clear what the claimed capacitance . . . is between,” (i.e., between which electrodes the capacitance occurs). Non-Final Act. 4. We do not agree with the Examiner that the claim language is indefinite. Claim 9 explicitly recites that the claimed capacitance is between “the first and second capacitive sensor electrodes” (formed on the outer surface of the compressible outer tubular portion of the tubular member) and the “third capacitive sensor electrode” (on the rigid inner tubular portion). Appeal 2021-005131 Application 16/017,888 4 We find that claim 9 distinctly claims the subject matter sought to be patented. The Examiner rejects claims 17–21 because “it is not clear how to read a capacitive sensor electrode on . . . an inner surface of the compressible member, is it formed on the compressible member or just adjacent to the compressible member?” Non-Final 4. We agree with Appellant that Figures 8 and 13 illustrate a capacitive sensor electrode on the inner surface of the compressible member. We do not agree with the Examiner that the “on” language of claims 17 and 20 is indefinite. We do not sustain the Examiner’s § 112(b) rejection of claims 9, 10, 12, and 14–21. Section 103 Rejection of Claims 1, 3–10, 12, 14–18, and 21 Independent claim 1 recites, inter alia, “capacitive sensor electrodes on the compressible tubular portion, the compressible tubular portion being compressible to change a capacitance of the capacitive sensor electrodes by changing a spacing between the capacitive sensor electrodes.” The Examiner finds that Kofman does not teach the claimed compressible tubular portion, and cites to Cartledge for its teaching of such a portion. Non-Final Act. 6 (citing Cartledge Figs. 83, 87, elements 8136 and 8138, and ¶ 302). Appellant argues that Cartledge fails to “show or suggest that a distance between the electrodes is change[d] to change the capacitance between the electrodes as the device is inserted into a user’s ear, instead merely indicated that they are for neuromodulation.” Appeal Br. 11. Appeal 2021-005131 Application 16/017,888 5 Appellant’s argument concerning the purpose of Cartledge’s electrodes is not persuasive to show that the Examiner erred. The Examiner has identified a teaching in Cartledge of a compressible tubular portion. Non-Final Act. 6. When this portion is compressed, the spacing between the capacitive sensor electrodes of Cartledge necessarily changes, which necessarily results in a change in the capacitance of the capacitive sensor electrodes. Appellant’s Specification refers to the physical principle that “the capacitance between a set of capacitance electrodes (e.g., parallel plates) is proportional to the distance separating the electrodes.” Spec. ¶ 33, Reply Br. 5. We agree with the Examiner that “known capacitive sensors do not distinguish between the different stimuli that change the relative capacitance of the electrodes.” Ans. 17. We further agree that “applicant’s claimed earbud, and the earbud disclosed by the cited prior art[,] will detect a change in capacitance based on the combined effect of each of the above cited stimuli when detecting the insertion of the earbud into the user’s ear.” Ans. 18. Appellant’s further argument that neither Kofman nor Cartledge “recognizes this arrangement,” i.e., specifically mentions that changing the distance between electrodes would change the capacitance, is not relevant. See Reply Br. 5. The change in capacitance would necessarily occur as a consequence of compression. Appellant argues that one of ordinary skill would not have modified Kofman to include Cartledge’s electrodes, as they would “interfere with the capacitive measurement capabilities of Kofman’s traces.” Appeal Br. 11. First, the Examiner has stated a reason to combine Kofman with Cartledge: “for the purpose of sensing the capacitance while providing a soft Appeal 2021-005131 Application 16/017,888 6 comfortable earpiece.” Non-Final Act. 6. Second, the Examiner finds, and we agree, that Cartledge and Kofman both teach multiple electrodes on a single earbud. Ans. 18. We agree with the Examiner that “varying numbers of electrodes could be used without breaking the function of the capacitive sensor.” Id. Appellant asserts that “only applicant’s originally filed specification discloses an earbud having capacitive sensor electrodes on a compressible tubular portion,” and because Kofman and Cartledge do not, the Examiner’s rejection is based on impermissible hindsight. Appeal Br. 12. Appellant’s argument is not persuasive because, as explained supra, we find that the combined teachings of Kofman and Cartledge do suggest such an earbud. We determine that the Examiner did not err in combining Kofman and Cartledge to obtain the invention recited in claim 1. We sustain the Examiner’s § 103 rejection. Appellant presents the same arguments with respect to dependent claim 3. We therefore sustain the § 103 rejection of claim 3 for the same reasons given with respect to claim 1. With respect to independent claims 9 and 17, Appellant relies on the same arguments made with respect to independent claim 1. We therefore sustain the § 103 rejection of claims 9 and 17 for the same reasons given with respect to claim 1. We also sustain the § 103 rejection of dependent claims 4–8, 10, 12, 14–16, 18, and 21, not separately argued, for the same reasons. Appeal 2021-005131 Application 16/017,888 7 Claim 23 Claim 23 depends from claim 1, and further recites a first capacitive electrode formed on an outer surface of the tubular portion, and a second capacitive electrode on the inner surface. Appellant argues, as with independent claim 1, that modifying Kofman to include Cartledge’s electrodes would interfere with the capacitive measurement capabilities of Kofman’s traces. Appellant further argues that “Chiba fails to show or suggest any operability of these electrodes in the ear bud context,” and that Chiba’s arrangement is alleged to be “incompatible with the teachings of Kofmand [sic] and Cartledge.” Appeal Br. 16. As discussed with respect to independent claim 1, we are not persuaded that Cartledge’s compressible tubular portion is technically incompatible with Kofman. With respect to the specific applicability of Chiba, we agree with the Examiner’s finding that Chiba teaches ring electrodes 112 formed on outer and inner surfaces of a deformable tubular member, useful to detect a capacitance due to deformation in at least two directions. Chiba, Abstract. We agree with the Examiner’s reasoning that modifying Kofman and Cartledge in view of Chiba would have been obvious “for the purpose of indicating a depression via a further change in capacitance.” Non-Final Act. 14. Because we determine that the Examiner did not err in rejecting claim 23, we sustain the § 103 rejection over Kofman, Cartledge, and Chiba. Claims 19 and 20 Appellant does not present separate argument for the patentability of these dependent claims. Accordingly, we sustain the Examiner’s § 103 rejection of claims 19 and 20 over Kofman, Cartledge, and Jones for the Appeal 2021-005131 Application 16/017,888 8 same reasons given with respect to the rejection of independent claim 17 from which they depend. CONCLUSION The combination of Kofman and Cartledge suggests capacitive sensor electrodes on the compressible tubular portion, the compressible tubular portion being compressible to change a capacitance of the capacitive sensor electrodes by changing a spacing between the capacitive sensor electrodes. DECISION SUMMARY The Examiner’s decision to reject claims 1, 3–10, 12, 14–21, and 23 is affirmed. In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 9, 10, 12, 14–21 112(b) Indefiniteness 9, 10, 12, 14– 21 1, 3–10, 12, 14–18, 21 103 Kofman, Cartledge 1, 3–10, 12, 14– 18, 21 23 103 Kofman, Cartledge, Chiba 23 19, 20 103 Kofman, Cartledge, Jones 19, 20 Overall Outcome 1, 3–10, 12, 14– 21, 23 Appeal 2021-005131 Application 16/017,888 9 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