Ex Parte Levine et al

Patent Trial and Appeal BoardJan 30, 2019

14821643 (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/821,643 08/07/2015 25096 7590 02/01/2019 PERKINS COIE LLP - SEA General PATENT-SEA P.O. BOX 1247 SEATTLE, WA 98111-1247 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Jonathan E. Levine 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. 113095-8008.USOO 3528 EXAMINER DABNEY, PHYLESHA LARVINIA ART UNIT PAPER NUMBER 2655 NOTIFICATION DATE DELIVERY MODE 02/01/2019 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): patentprocurement@perkinscoie.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONATHAN E. LEVINE, DREWS. BRIGGS, MARTEN ANDERSSON, and THOMAS C. WILSON Appeal2018-005657 Application 14/821,643 1 Technology Center 2600 Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and SCOTT B. HOWARD, Administrative Patent Judges. HOW ARD, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Final Rejection of claims 1-23, which constitute all of the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 Appellants identify New Audio LLC as the real party in interest. App. Br. 2. Appeal2018-005657 Application 14/821,643 THE INVENTION The disclosed and claimed invention is directed to "audio headsets, which are wearable devices that convey sound to one or both of a user's ears." Spec. ,r 1.2 Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A headset, comprising: a headpiece; an earpiece; a yoke rotatably connected to the earpiece, wherein the yoke at least partially defines a channel including a constriction at which a transverse cross-sectional area of the channel is non- circular; an arm extending between the yoke and the headpiece, wherein the arm is rotatable relative to the yoke about an axis, and wherein the arm includes a foot at least partially disposed within the channel, the foot being shaped to move through the constriction when the arm has a first rotational position about the axis relative to the yoke and to be blocked from moving through the constriction when the arm has any rotational position about the axis relative to the yoke within a range of rotational positions not including the first rotational position; and a plug at least partially disposed within the channel, wherein the plug restricts rotation of the arm about the axis relative to the yoke to a subrange of the range of rotational positions thereby preventing movement of the foot out of the channel and corresponding separation of the arm from the yoke, 2 We refer to the Specification filed Aug. 7, 2015 ("Spec."); Final Office Action mailed May 18, 2017 ("Final Act."); Appeal Brief filed Nov. 20, 2017 ("App. Br."); Examiner's Answer mailed Apr. 18, 2018 ("Ans."); and the Reply Brief filed May 9, 2018 ("Reply Br."). 2 Appeal2018-005657 Application 14/821,643 the subrange of the range of rotational positions extending at least 10 degrees about the axis. App. Br. 17. REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Blair et al. ("Blair") Hung US 8,737,668 Bl us 5,035,005 REJECTION May 27, 2014 July 30, 1991 Claims 1-23 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Blair and Hung. ANALYSIS We have reviewed the Examiner's rejection in light of Appellants' arguments that the Examiner erred. In reaching this decision, we have considered all evidence presented and all arguments made by Appellants. We are persuaded by Appellants' arguments regarding the pending claims. The Examiner finds "Blair teaches a headset that doesn't incorporate a plug" and "Hung teaches a headset that utilizes a plug, and was motivated to incorporate the plug to restrict motion of to a certain angular rotations, as well as, prevent of the foot out of the channel and correspondingly separation of the arm from the yoke." Ans. 3--4. According to the Examiner, one of ordinary skill in the art would be motivated to combine Blair and Hung "to control the angular rotation, and/or provide a more 3 Appeal2018-005657 Application 14/821,643 secure method of preventing separation of the foot from the channel, thereby preventing inadvertent disassembly of the device during use." Ans. 3--4. Appellants argue "a person of ordinary skill in the art would not have been motivated to combine these features as the Examiner alleges." App. Br. 14. According to Appellants, while "it may be possible to redesign the joint of Blair to include a retaining cap [ cap 30 of Hung] instead of the disclosed retaining ring 105, this redesign would provide no apparent benefit." App. Br. 15. We are persuaded by Appellants' argument. "In rejecting claims under 35 U.S.C. Â§ 103, the examiner bears the initial burden of presenting a primafacie case of obviousness." In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). Rejections based on obviousness must be supported by "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). Based on the current record and the Examiner's findings, we agree with Appellants that the Examiner did not provide a sufficient reasoning as to why the person of ordinary skill in the art would have taken specific teachings from the use of a cap to "enclos[ e] the open end 130 of the casing" (i.e., plug to close an open channel and restrict movement), taught in Hung with the apertures 114, 116 or retaining ring 105, through which the arm extends (i.e., closed channels that do not require a plug to restrict movement), taught in Blair. Hung col. 2, 11. 28-29; see Blair Figs. 29, 31, col. 14, 11. 38--40. Because the closed channel of Blair performs the function of Hung's plug, based on the 4 Appeal2018-005657 Application 14/821,643 current record, the Examiner has not identified a sufficient reason why a person of ordinary skill in the art would combine the references. Accordingly, we are constrained on the record before us to reverse the Examiner'sÂ§ 103 rejection of independent claim 1, along with theÂ§ 103 rejection of independent claims 13 and 18, which recite limitations commensurate in scope to the disputed limitation discussed above, and dependent claims 2-12, 14--17, and 19-23. See App. Br. 16. DECISION For the above reasons, we reverse the Examiner's decision rejecting claims 1-23. REVERSED 5