Apple Inc.

Patent Trials and Appeals Board

Mar 23, 2022

2021001399 (P.T.A.B. Mar. 23, 2022)

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. 15/284,392 10/03/2016 William A. McCarty 4860P33165DC 2052 45217 7590 03/23/2022 WOMBLE BOND DICKINSON (US) LLP/ APPLE INC. Attn: IP Docketing P.O. Box 570489 Atlanta, GA 30357-0037 EXAMINER LAO, LUNSEE ART UNIT PAPER NUMBER 2651 NOTIFICATION DATE DELIVERY MODE 03/23/2022 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): FIP_Group@bstz.com PTO.MAIL@BSTZ.COM PTO.MAIL@BSTZPTO.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WILLIAM A. McCARTY and YADIR RODRIGUEZ ____________________ Appeal 2021-001399 Application 15/284,392 Technology Center 2600 ____________________ Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and JAMES W. DEJMEK, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Non-Final rejection of claims 2 through 21. 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). According to Appellant, Apple Inc., is the real party in interest. Appeal Br. 3. Appeal 2021-001399 Application 15/284,392 2 CLAIMED SUBJECT MATTER Appellant’s invention is directed to a method of communicating audio signals between an input device and an output device via a network. Abst. Claim 2 is reproduced below. 2. A method for providing audio signals and control signals generated by input devices to remote loudspeakers over a network, the method comprising: receiving from a first input device a first audio signal and a first control signal associated with the first audio signal, the first control signal being separate from the first audio signal; receiving from a second input device a second audio signal and a second control signal associated with the second audio signal, the second control signal being separate from the second audio signal; combining the first audio signal with the first control signal to form a first combined signal; combining the second audio signal with the second control signal to form a second combined signal; and formatting and transmitting the first and second combined signals over the network. REJECTIONS2 The Examiner rejected claims 2 through 12, 14 through 18, 20, and 21 under 35 U.S.C. § 103(a) for being unpatentable over Shdema (US 2002/0072816 A1; June 13, 2002) and Short (US 5,361,381; Nov. 1, 1994). 2 We note that, in response to Appellant’s arguments in the Appeal Brief, the Examiner withdrew the rejections based upon 35 U.S.C. § 112, first paragraph, written description and non-statutory double patenting. Ans. 3. Appeal 2021-001399 Application 15/284,392 3 Non-Final Act. 8-13. 3 The Examiner rejected claims 13 and 19 under 35 U.S.C. § 103(a) for being unpatentable over Shdema, Short, and Manis (US 2006/0235552 A1; Oct. 19, 2006). Non-Final Act. 13-14. ANALYSIS We have reviewed Appellant’s arguments in the Appeal Brief, the Examiner’s rejections, and the Examiner’s response to Appellant’s arguments. Appellant’s arguments have not persuaded us of error in the Examiner’s rejection of claims 2 through 21 under 35 U.S.C. § 103(a). Appellant argues that the Examiner’s rejection of claims 2, and 14 under 35 U.S.C. § 103(a) is in error on pages 9 through 11 of the Appeal Brief. Appellant asserts that the Examiner’s rejection is in error as the Examiner erroneously finds that the claimed first and second control signals, recited in claim 2 and 14, are inherent to Paynting. Appeal Br. 10. Appellant asserts that the Examiner has not provided evidence to support the finding of inherency. Appeal Br. 10-11. Appellant’s arguments have not persuaded us of error in the Examiner’s rejection of independent claims 2 through 12, 14 through 18, 20 and 21 under 35 U.S.C. § 103(a) for being unpatentable over Shdema and Short or of claims 13 and 19 under 35 U.S.C. § 103(a) for being unpatentable over Shdema, Short, and Manis. As identified by the 3 Throughout this Decision we refer to the Appeal Brief filed March 6, 2020 (“Appeal Br.”); Reply Brief filed August 21, 2020 (Reply Br.); Non-Final Office Action mailed September 27, 2019 (“Non-Final Act.”); and the Examiner’s Answer mailed June 22, 2020 (“Ans.”). Appeal 2021-001399 Application 15/284,392 4 Examiner, “the non-final office action filed 9/27/2019 from which the appeal was taken relied on Short (US PAT. 5,361,381) as the secondary reference, instead of Paynting (US PAT. 5,182,552) which was relied on in the final office action filed 3/6/2019.” Ans. 10. Appellant’s arguments in the Appeal Brief, which focus on the Examiner’s findings concerning Paynting, are directed to a reference that is not relied upon in the rejection, and do not address the combination of the references that is applied in the rejections that are before us. As such Appellant has not identified an error in the Examiner’s rejections and we sustain the Examiner’s rejections. We recognize that in the Reply Brief, Appellant addresses the rejections based upon Shdema and Short. Reply Br. 2-4. These new arguments could have been presented in the Appeal Brief, are not prompted by the Examiner’s Answer, and are not based on any new arguments or grounds of rejection in the Examiner’s Answer. By presenting these arguments for the first time the Reply Brief, the Examiner has not been afforded an opportunity to respond to them. Such new arguments are not permitted under 37 C.F.R. § 41.41(b)(2). As a result, Appellant has waived these untimely arguments because Appellant has not shown good cause for belatedly raising the new arguments. See 37 C.F.R. § 41.41(b)(2). Accordingly, we have not considered Appellant’s arguments directed to Shdema and Short presented in the Reply Brief. Appeal 2021-001399 Application 15/284,392 5 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2-12, 14- 18, 20, 21 103(a) Shdema, Short, 2-12, 14- 18, 20, 21 13, 19 103(a) Shdema, Short, Manis 13, 19 Overall Outcome 2-21 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED