Ex Parte Basseas et al

Patent Trial and Appeal BoardApr 25, 2016

12721167 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121721, 167 03/10/2010 24628 7590 04/25/2016 Husch Blackwell LLP Husch Blackwell Sanders LLP Welsh & Katz 120 S RIVERSIDE PLAZA 22NDFLOOR CHICAGO, IL 60606 FIRST NAMED INVENTOR Stavros Basseas 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 4852/107352 UTI 1538 EXAMINER PRITCHARD, JASMINE L ART UNIT PAPER NUMBER 2655 MAILDATE DELIVERY MODE 04/25/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STAVROS BASSEAS and STEVEN C. HANNIBAL Appeal2014-007301 Application 12/721, 167 Technology Center 2600 Before LINZY T. McCARTNEY, TERRENCE W. McMILLIN, and JOYCE CRAIG, Administrative Patent Judges. McCARTNEY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 1, 3-7, 11-13, and 15-21. Claims 2, 8-10, and 14 have been canceled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. Appeal2014-007301 Application 12/721, 167 STATEMENT OF THE CASE The claimed invention concerns an adjustable modular assistive listening device. See Spec. i-fi-12, 20; Abstract. Claims 1 and 16 are independent. Claim 1 illustrates the claimed subject matter: 1. A modular audio processing apparatus comprising: a plurality of separate, releasably connectable, modules including a shaped, ear module; a receiver module; a microphone module; a rechargeable battery module; and an electronics module mechanically connected to the receiver and the microphone modules where the electronics module includes digital signal processing circuits to process incoming audio signals from the microphone module and also from a relatively short range wireless transceiver where the transceiver can receive signals from a displaced compatible transceiver; and which includes an adjust and lock tube interconnecting the microphone module with at least one other module with an adjustable length interconnection. REJECTION1 Claims 1, 3-7, 11-13, and 15-21 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Feeley (US 2004/0010181 Al; Jan. 15, 2004). 1 The Examiner withdrew the rejection of claims 1, 4, 15, and 16 under 35 U.S.C. Â§ 112. Ans. 2. 2 Appeal2014-007301 Application 12/721, 167 ANALYSIS Claim 1 recites "an adjust and lock tube interconnecting the microphone module with at least one other module with an adjustable length interconnection." App. Br. 14. Claim 16 recites a similar limitation. Id. at 17. The Examiner found Feeley discloses connectors that teach or suggest the "adjust and lock tube" recited in claims 1 and 16. See Final Act. 2, 4--5; Ans. 3-9. Appellants argue Feeley discloses using connectors of different lengths as needed instead of an "adjust and lock tube ... with an adjustable length interconnection" as recited in claims 1 and 16. See App. Br. 8, 11; Reply Br. 2---6. According to Appellants, Feeley's connectors represent an alternative to the claimed "adjust and lock tube" that both obviates the need for the claimed tube and teaches away from it. See App. Br. 7-8; Reply Br. 6. We find Appellants' arguments persuasive. The Examiner's obviousness analysis rests in large part on Feeley's disclosure that "connectors may be of different types, sizes (e.g., different lengths), shapes, functional capabilities, etc." and "elements not depicted in FIG. 1 may be included in connector 20," as well as generic statements that various unspecified alterations are within the scope of the invention. Feeley i-fi-180, 100, 111 (emphases omitted); see Final Act. 2-3; Ans. 5---6, 8. In particular, relying on these disclosures, the Examiner found that "one of the connectors and its functional capabilities can include an 'adjust and lock' feature"' and "including an 'adjust and lock' cable as a known product in the Feeley apparatus would not depart from the scope of the invention as a whole." Final Act. 2 (emphasis added); see also Ans. 5---6. 3 Appeal2014-007301 Application 12/721, 167 The Examiner has not provided sufficient evidence or reasoning to support these findings. Although Feeley discloses that connectors have different characteristics and that one of ordinary skill in the art may modify Feeley's invention in unspecified ways, this does not mean Feeley teaches or suggests every possible connector characteristic or alteration. That is particularly true in the case of the claim limitation at issue. Here, instead of teaching "an adjustable length interconnection," Feeley explicitly teaches replacing a connector that has an undesirable length. See, e.,g., Feeley i-f 77 (disclosing that if a connector is too long, "an acceptable replacement connector may be selected"). In light of this, the cited portions of Feeley do not support the Examiner's findings that an "adjust and lock cable" was known in the prior art or that Feeley's connector may include an "adjust and lock feature." The Examiner further concluded "[i]t would have been obvious to try an 'adjust and lock' cable" because "Feeley continuously expresses that various changes, substitutions, and alterations can be made without departing from the spirit and scope of the invention while maintaining a customizable modular audio processing apparatus." Id. at 2-3. To the extent the Examiner's "obvious to try" rationale relies on the findings discussed above, the rationale also suffers from the flaws discussed above. Moreover, an "obvious to try" rationale generally requires identifying a finite number of predictable solutions that have a reasonable expectation of success. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); MPEP Â§ 2141. The Examiner has made no such findings here. See Final Act. 2-3, 4--5; Ans. 4--9. Accordingly, this rationale lacks adequate supporting evidence and rationale. 4 Appeal2014-007301 Application 12/721, 167 Finally, the Examiner found visual similarities between Feeley's connectors and the version of Appellants' "adjust and lock tube" shown in Figure IA provide additional evidence that Feeley teaches the claimed "adjust and lock tube." Ans. 3--4. But the fact that Feeley's connectors look similar to an embodiment of Appellants' adjust and lock tube does not establish that Feeley's connectors teach "an adjust and lock tube ... with an adjustable length interconnection." As discussed above, Feeley explicitly discloses replacing a connector if the connector is not the desired length, not adjusting the length of the connector. See Feeley i-f 77. Based on the record before us, we do not sustain the Examiner's rejections of claims 1 and 16. Because claims 3-7, 11-13, and 15-21 depend from either claim 1 or claim 16, we also do not sustain the Examiner's rejections of these claims. DECISION For the above reasons, we reverse the rejections of claims 1, 3-7, 11- 13, and 15-21. REVERSED 5