Ex Parte McGovern et al

Patent Trial and Appeal Board

Nov 28, 2016

13448077 (P.T.A.B. Nov. 28, 2016)

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.
13/448,077 04/16/2012 Albert F. McGovern JR. 010886.01467 6082
71869 7590 11/30/2016
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NO. 010886 & 210886
10 SOUTH WACKER DR.
SUITE 3000
CHICAGO, IL 60606
EXAMINER
GARFT, CHRISTOPHER
ART UNIT PAPER NUMBER
3632
NOTIFICATION DATE DELIVERY MODE
11/30/2016 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):
eofficeaction @bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERT F. MCGOVERN JR., JOHN MILLER, and
DANIEL G. PRATT
Appeal 2014-009994
Application 13/448,077
Technology Center 3600
Before JILL D. HILL, LISA M. GUIJT, and ERIC C. JESCHKE,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Albert F. McGovern Jr. et al. (“Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision to reject claims 1—21. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Shure Acquisition
Holdings, Inc. Appeal Br. 2.
Appeal 2014-009994
Application 13/448,077
CLAIMED SUBJECT MATTER
Claims 1, 13, and 18 are the independent claims on appeal.
Independent claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. A shock mount apparatus for supporting a microphone,
comprising:
a first frame member configured to receive the
microphone;
a second frame member configured to receive a
mounting apparatus; and
a plurality of members interconnecting the first
frame member and the second frame member, the plurality
of members being substantially non-elastic in an axial
direction,
wherein the first frame member is suspended from
the second frame member by the plurality of members, and
wherein the plurality of members are configured to
provide damping of the first frame member relative to the
second frame member by flexing.
THE REJECTION
Claims 1—21 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Schall (DE 1823744; pub. Dec. 22, 1960) and Lantero (US 4,586,689;
iss. May 6, 1986).
ANALYSIS
Claims 1—3, 6, 8, 9, 11, and 12
Regarding independent claim 1, the Examiner finds, inter alia, that
Schall discloses a first frame member (fastening devices 2) configured to
receive a microphone and a plurality of members (cord-like elements 3)
interconnecting the first frame member and the second frame member
2
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Application 13/448,077
(carrier 4). Final Act. 3. The Examiner further finds that Schall’s cord-like
elements 3 are configured to provide damping of fastening devices 2 relative
to carrier 4 by flexing because elements 3 “are flexible and therefore capable
of damping vibrations between the frame members.” Id. The Examiner
further finds that although Schall does not explicitly disclose that the
plurality of members are “substantially non-elastic in an axial direction,” as
required by claim 1, Lantero discloses flexible members (windings 11, 12)
“made of a metal material... in the form of cable windings or twisted wires
. . . that interconnect frame members” {id. at 7 (citing Lantero col. 4,11. SO­
SO, Figs. 1, 2)), noting that Appellants’ Specification describes the flexible
members as also “being twisted wire made out of a metal material” {id.
(citing Spec. 32, 33)). The Examiner concludes that it would have been
obvious “to modify the flexible members of Schall to be curved portions of
twisted metal rope as disclosed by Lantero since Lantero states that such a
modification would enable the device to independently or variably absorb
vertical and horizontal stresses.” Id. (citing Lantero, col. 1,11. 59-65).
Appellants argue that the claim requires the first frame member to be
configured to receive a microphone and “nowhere does Schall indicate
elements 2 are ‘configured to receive [a] microphone.’” Appeal Br. 5. The
Examiner responds that fastening devices 2 “are in the form of knurled rings
that are twisted to clamp or hold the microphone within the member 1.”
Ans. 10 (citing Schall, Figs. 3, 4).
Schall discloses that microphone holding apparatus 1 includes
“fastening device 2 for fixing the microphone within the holding apparatus
1.” Schall, p. 4,11. 11—13. Schall further discloses that each of fastening
devices 2 includes an inner ring 21 with a clamping tongue 22 and an outer
3
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clamping ring 23 with a projection 24, wherein outer clamping ring 23 can
be turned relative to inner ring 21 such that projection 24 moves from a
thinner towards a thicker end of clamping tongue 22, whereby “the upper
edge k of the [] tongue 22 is . . . pressed more and more forcefully to the
inside and clamps the microphone in this way.” Schall, p. 5,1. 24—p. 6,1. 3,
Figs. 3, 4. Thus, a preponderance of the evidence supports the Examiner’s
finding that fastening devices 2 “receive a microphone,” as required by
claim 1, because Schall discloses that the microphone is clamped within the
fastening devices 2, as opposed to clamping onto or closing the ends of
holding apparatus 1, as suggested by Appellants.
Appellants assert, for the first time in the Reply Brief, that fastening
devices 2 of Schall cannot be the claimed first frame member because “a
fastening member cannot constitute a‘frame member.’” Reply Br. 2. We
need not consider this new argument, which is deemed waived, and we
decline to do so. See 37 C.F.R. § 41.41(b)(2). This new argument could
have been presented in the Appeal Brief to address the outstanding rejection
of record, but was not, and on the record before us, the absence of any
opportunity for the Examiner to respond to this untimely argument precludes
meaningful appellate review.
Appellants further argue that Lantero is concerned with damping very
strong impacts and vibrations and does not suggest “the use of wire rope to
dampen a very small stimulus that can move a low mass transducer
diaphragm associated with a microphone.” Appeal Br. 6. The Examiner
responds that the claim language is functional “and therefore [the prior art]
only needs to be capable of performing the function.” Ans. 13. The
Examiner also finds that “the prior art device would be capable of
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Application 13/448,077
performing such a function, since the object of Schall is to isolate or not
transmit vibrations to the microphone . . . and Lantero discloses the use of
wire rope to absorb a variety of loads or stresses including very small loads.”
Id. (citing Lantero, col. 4,11. 30—36).
Claim 1 recites the functional limitation: “wherein the plurality of
members are configured to provide damping of the first frame member
relative to the second frame member by flexing.” Appeal Br. 11, Claims
App. Features of an apparatus claim may be recited either structurally or
functionally. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). If the
Patent Office has reason to believe that a functional limitation recited in an
apparatus claim “may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the characteristic relied
on.” Id. (quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)).
Appellants’ Specification describes the plurality of members as
twisted rope “formed of any metal, alloy, composite, or high strength
polymer” and that “[t]he wire rope comprises a plurality of wires twisted
together, which . . . provides good energy absorption.” Spec. Tflf 32, 33.
Lantero describes cables 3 nested between fixed bearing base 1 and upper
base 2 as spiral wound cables (Lantero, col. 2,11. 31—34) “which can be of
various natures such as metal ropes (wire ropes) with and without core for
high or medium weight and stresses, or in vegetable stranded or manmade
fiber wires for small and very small loads and stresses as in the case of
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electronic components” {id. at col. 4,11 30-36).2 In other words, Lantero’s
cables 3 are configured to absorb different shock strengths from very small
to large shocks, i.e., provide damping, between first and second members by
flexing. See Lantero, col. 2,11. 31—36; col. 4,11. 30-36. Here, Appellant has
not shown error in the Examiner’s finding that the device of Schall modified
to include cables 3 of Lantero would be capable of performing the claimed
function. See Final Act. 7; Ans. 10, 11. Accordingly, we sustain the
Examiner’s decision.
Appellants further argue that the Examiner used impermissible
hindsight in combining Schall and Lantero “because the Office Action offers
no evidence that a person of ordinary skill in the art would implement the
system of Lantero to dampen a microphone.” Appeal Br. 6. Appellants also
argue that Lantero does not suggest the use of wire rope in a low mass
transducer diaphragm associated with a microphone and “[o]n this basis,
there can be no rationale for combining Schall and Lantero.” Reply Br. 3^4.
Appellants’ argument is not persuasive. Appellants fail to point to
any reasoning or features gleaned solely from Appellants’ disclosure in the
Examiner’s rejection. To the contrary and as stated supra, the Examiner’s
rationale to modify the device of Schall, i.e., to independently or variably
absorb vertical and horizontal stresses, is supported by Lantero. Final Act. 7
(citing Lantero, col. 1,11. 59—65) (“This present invention has therefore the
aim to devise ... [a] shock absorber of the multiple cable type apt to ensure,
in its various configurations, independent or variable absorption of the
2 Notably, although the Examiner relies upon cable windings made of metal
(Final Act. 7), Lantero also discloses cable windings made of man-made
fiber, i.e., high strength polymer, for absorbing the shock of small and very
small loads (Lantero, col. 4,11. 30-36).
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Application 13/448,077
horizontal and vertical stresses.”). Appellants have not explained why the
Examiner’s rationale is in error.
Appellants also argue that Lantero is non-analogous art because it is
not in the same field of endeavor or reasonably pertinent to the problem
faced by the inventors because “Lantero fails to solve the problem of
dampening highly sensitive transducers associated with a microphone.”
Reply Br. 4, see also Appeal Br. 6. The Examiner responds that Lantero is
analogous art because the reference is reasonably pertinent to the problem
faced by the inventors, i.e., “damping vibrations or providing a shock
absorbing effect.” Final Act. 8—9; Ans. 13—14 (citations omitted).
Appellants’ argument is not persuasive. As discussed above, Lantero
discloses that cables 3 are shock absorbers “used to a great extent to protect
machines, equipment and precision instruments from shocks and vibrations”
(Lantero, col. 1,11. 6—9), which, as correctly determined by the Examiner, is
pertinent to the problem faced by the inventor, i.e., reducing “motion of the
microphone body that results in motion of the transducer diaphragm [that]
can generate an unwanted electrical output and noise” (Spec. 13).
Appellants assert, for the first time in the Reply Brief, that one of skill
in the art “would not simply replace the cord-like element of Schall with the
windings 3,11 of Lantero” (Reply Br. 6), and that Schall and Lantero could
not be combined because the Examiner “fail[s] to explain how a person of
ordinary skill in the art would modify the fastening devices 2 and support
ring 4 of Schall with the plate 2, pin 8, disc 5, shim 13, spiral winding 3,
sectional winding 11, and cable lengths 12 of Lantero to arrive at the
claimed invention” (id. ). See id. at 5-7. This new argument could have
been presented in the Appeal Brief to address the outstanding rejection of
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record, but was not. Here, the absence of any opportunity for the Examiner
to respond to this untimely argument precludes meaningful appellate review,
and thus, we decline to address this new argument. See 37 C.F.R.
§ 41.41(b)(2); In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000).
Accordingly, we sustain the Examiner’s rejection of independent
claim 1. Appellants do not present separate arguments for the patentability
of dependent claims 2, 3, 6, 8, 9, 11, and 12. Thus, we also sustain the
Examiner’s rejection of claims 2, 3, 6, 8, 9, 11, and 12.
Claims 13—15
Appellants argue independent claim 13 is patentable for the reasons
discussed supra regarding claim 1. Appeal Br. 7. Accordingly, we sustain
the Examiner’s rejection of independent claim 13 for the reasons discussed
supra. Appellants do not present separate arguments for the patentability of
claims 14 and 15. Thus, we also sustain the Examiner’s rejection of claims
14 and 15.
Claims 18-20
Claim 18 recites “a first frame member comprising an upper ring-
shaped frame member and a lower ring-shaped frame member ... a second
frame member . . . and a member interconnecting the first frame member
and the second frame member.” Appeal Br. 13; Claims App. The Examiner
finds, inter alia, that Schall discloses “an upper ring-shaped frame member
(right side 2, Fig. 1) and a lower ring-shaped frame member (left side
member 2, Fig. 1). . . and a member (3, Fig. 1) interconnecting the first
frame member and second frame member (see Fig. 1—2).” Final Act. 6
(citations omitted).
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Appellants argue that “elements 2 cannot [be] the claimed ‘upper ring-
shaped frame member’ and the ‘lower ring-shaped frame member’ because
element 3 does not ‘interconnect’ elements 2 and element 4. Rather,
element 3 is shown in Figure 1 as being connected to element 1 and element
4.” Appeal Br. 7; see Reply Br. 7. The Examiner responds that the claim
only requires the member to connect the first frame member and the second
frame member and that “microphone support 1 which includes tightening
members 2 is suspended, attached or interconnected to the ring 4 via the
members 3.” Ans. 15. Appellants argue that cord-like elements 3 cannot be
connected to fastening devices 2 because during the twisting operation to
secure the microphone in fastening devices 2 “the cord-like elements 3
would become twisted and tangled rendering the Schall device inoperable
for its intended purpose of securing the microphone within the holding
apparatus 1.” Reply Br. 8.
As noted by the Examiner, the claim only requires the member to
interconnect the first member and the second member and does not require
the member to be connected directly to the upper ring-shaped member and
the lower ring-shaped member, i.e., the member may indirectly interconnect
the first member and second member. Appellants argue that cord-like
elements 3 do not interconnect fastening devices 2 and carrier 4 because
cord-like elements 3 are not directly connected to fastening devices 2
(Appeal Br. 7; Reply Br. 7), however, this argument is not commensurate
with the scope of the claim and Appellants have provided no definition for
the claim term “interconnect” that would exclude indirect connections.
Thus, Appellants’ argument does not apprise us of error in the Examiner’s
finding.
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Appellants assert, for the first time in the Reply Brief, that “fasteners
2 [of Schall] cannot be the claimed ‘upper ring-shaped frame member’ and
the ‘lower ring-shaped frame member’ because . . . the fasteners 2 are not
frame members.” Reply Br. 7. This new argument could have been
presented in the Appeal Brief to address the outstanding rejection of record,
but was not. Here, the absence of any opportunity for the Examiner to
respond to this untimely argument precludes meaningful appellate review.
See 37 C.F.R. § 41.41(b)(2); Hyatt, 211 F.3d at 1373.
Appellants further argue that neither Schall nor Fantero discloses or
suggests that the member is configured to help reduce the amount of
vibration encountered by the first frame member relative to a subsonic and
an audible frequency range by flexing, as required by claim 18. Appeal Br.
7. The Examiner responds that the modified Schall device is capable of
performing this function because “the Fantero device discloses using wire
rope and modifying its characteristics to attenuate or absorb stresses and
vibrations of a variety of strengths ranging from high load to very small
load.” Ans. 15—16.
Appellants’ argument is not persuasive. As discussed supra regarding
the similar limitation regarding damping of the first member in claim 1,
Appellants have not identified any structural differences between Schall’s
device, as modified by Fantero, and the claimed invention or explained why
the Examiner’s finding that the modified device would be capable of
performing the claimed function is in error.
Appellants also argue that claim 18 is patentable for the reasons
discussed supra regarding claim 1. As discussed supra, these arguments are
not persuasive.
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Accordingly, we sustain the Examiner rejection of independent claim
18. Appellants do not present separate arguments for the patentability of
dependent claims 19 and 20. Thus, we also sustain the Examiner’s rejection
of claims 19 and 20.
Claims 5 and 21
Claims 5 recites “wherein each of the members are fixed to the upper
frame member at a first end and the lower frame member at a second end
and wherein the members are fixed to the second frame member at a middle
portion of the members.” Appeal Br. 11, Claims App. Claim 21 similarly
recites “wherein the member has a first end fixed to the upper frame member
of the first frame member a middle portion fixed to the second frame
member and a second end fixed to the lower frame member of the first frame
member.” Id. at 13. The Examiner finds, inter alia, that Figures 1 and 2 of
Schall disclose the members fixed to the second frame member at a middle
portion of the flexible members. Final Act. 4, 8. Appellants argue that
“[ajlthough element 3 engages element 4, nothing in Schall explicitly
teaches that ‘the members are fixed to the second frame member at a middle
portion of the members.’” Appeal Br. 8. A preponderance of the evidence
supports the Examiner’s finding that Figures 1 and 2 of Schall depict cord­
like element 3 passing through carrier 4 at least at some portion of cord-like
element 3 that is between first and second ends of cord-like element 3,
which is broadly claimed as “a middle portion.” Appellants have not
otherwise explained why the Examiner’s finding is in error.
Accordingly, we sustain the Examiner’s rejection of claims 5 and 21.
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Claims 4, 7, 10, 16, and 17
Appellants argue that each of claims 4, 7, 10, 16, and 17 are
patentable for the reasons discussed supra regarding claim 18. Appeal Br.
8—9. For the reasons discussed supra, these arguments are not persuasive.
Accordingly, we sustain the Examiner’s rejection of claims 4, 7, 10, 16, and
17.
DECISION
We AFFIRM the Examiner’s rejection of claims 1—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)(l)(iv).
AFFIRMED
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