Ex Parte Minkofski

Patent Trial and Appeal Board

Jan 31, 2019

11265408 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
11/265,408
81650 7590
Horst B. Minkofski
FILING DATE
11/01/2005
01/31/2019
General Delivery, Station Fort Langley
Langley, BC VIM 2S6
CANADA
FIRST NAMED INVENTOR
Horst Burghardt Minkofski
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.
5033
EXAMINER
MONIKANG, GEORGE C
ART UNIT PAPER NUMBER
2651
MAIL DATE DELIVERY MODE
01/31/2019 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 HORST BURGHARDT MINKOFSKI
Appeal2017-003994
Application 11/265,408
Technology Center 2600
Before DEBRA K. STEPHENS, SHARON PENICK, and
DAVID J. CUTITTA II, Administrative Patent Judges.
PENICK, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-5. Appeal. Br. 3. Claims 6, 8, 17, 20, and 28-35 are
allowed. Id. We have jurisdiction under 35 U.S.C. § 6(b)(l).
We affirm-in-part.
Invention
Appellant's invention "relates to the field of sound baffling devices,
and more particularly the use of an enclosure containing a vacuum to baffle
sound." Spec. 1.
Appeal2017-003994
Application 11/265,408
Exemplary Claims
Claims l and 4, reproduced below with certain limitations
emphasized, are exemplary:
1. A hermetically sealed enclosure having an internal pressure
ranging from atmospheric to a high vacuum and comprising a
force generating means for regulating a property of said
hermetically sealed enclosure,
said force generating means selected from the group consisting
of an electrostatic force generating means, and a strut force
generating means containing a transduction circuit, said
transduction circuit hermetically enclosed within said strut
force generating means,
and·
'
wherein said property is selected from the group consisting of a
thermal property, and a characteristic acoustic impedance,
so that said force generating means is effective to regulate said
thermal property, and said characteristic acoustic impedance.
4. The hermetically sealed enclosure of claim 1 further
comprising a sound absorbing material enclosed within said
hermetically sealed enclosure, wherein;
said sound absorbing material is prevented from contacting the
enclosure walls directly and;
the incident sound transmitted through said hermetically sealed
enclosure into said sound absorbing material is inversely
proportional to said characteristic acoustic impedance, so that
when said characteristic acoustic impedance is decreased the
incident sound transmitted through said hermetically sealed
enclosure and absorbed by said sound absorbing material is
increased, or;
when said characteristic acoustic impedance is increased the
incident sound transmitted through said hermetically sealed
enclosure and absorbed by said sound absorbing material is
decreased,
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Application 11/265,408
so that by varying said characteristic acoustic impedance of said
hermetically sealed enclosure, the absorption and reflection of
the sound incident on said hermetically sealed enclosure is
regulated.
Rejections
The Examiner rejects claims 1-3 under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Ledonne (US 5,125,031; issued June 23, 1992) and
Nakamura (US 2001/0005422 Al; pub. June 28, 2001). Final Action 3---6.
The Examiner rejects claim 4 under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Ledonne, Nakamura, and Parker et al. (US 2005/0094837
Al; pub. May 5, 2005). Final Action 7-8.
The Examiner rejects claim 5 under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Ledonne, Nakamura, and Wang et al. (US 2005/0089184
Al; pub. Apr. 28, 2005). Final Action 8-11.
Issues
A. Did the Examiner err in finding that the combination of Ledonne and
Nakamura teaches or suggests "a force generating means for regulating a
property of said hermetically sealed enclosure ... wherein said property is
selected from the group consisting of a thermal property, and a characteristic
acoustic impedance, so that said force generating means is effective to
regulate said thermal property, and said characteristic acoustic impedance,"
as recited in claim 1?
B. Did the Examiner err in finding that the combination of Ledonne and
Nakamura teaches or suggests "[a] hermetically sealed enclosure having an
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internal pressure ranging from atmospheric to a high vacuum" as recited in
claim 1?
C. Did the Examiner err in combining Ledonne and Nakamura?
D. Did the Examiner err in finding that the combination of Ledonne and
Nakamura teaches or suggests the regulation of a thermal property, wherein
"said thermal property is a thermal impedance" as recited in claims 2 and 3?
E. Did the Examiner err in finding that the combination of Ledonne,
Nakamura, and Parker teaches or suggests claim 4?
Analysis
A: "characteristic acoustic impedance"
The Examiner finds that the combination of Ledonne and Nakamura
teaches the regulation of the characteristic acoustic impedance of a
hermetically sealed enclosure in Nakamura's sealed enclosure with
electrostatic speakers affixed to the surface of the speaker box, which the
Examiner finds "produce sound pressure that will generate/regulate acoustic
properties (including acoustic impedance) within the speaker box." Final
Action 2 (citing Nakamura ,r 19), 4. The Examiner notes that the definition
of characteristic acoustic impedance is not in the claim, and thus, finds the
cited teachings of Nakamura, in teaching a change in acoustic impedance,
teaches or suggests the regulation of characteristic acoustic impedance of
claim 1. Answer 1 O; Final Action 2.
Appellant argues that the characteristic acoustic impedance is "known
and used in the acoustic art, and therefore requires no further explanation."
Reply Br. 6. Appellant further argues that the acoustic impedance described
by the Examiner is different than characteristic acoustic impedance, which is
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Application 11/265,408
a characteristic of a medium through which sound will travel. Appeal Br. 6-
9, 14--15, 16; Reply Br. 4--5, 5-7. Appellant's Specification appears to
support its argument that the acoustic impedance described is a characteristic
of a medium in an enclosure, rather than of the enclosure. Spec. 3 ("[A]
means for admitting and removing ... is capable of admitting and removing
fluids having different densities and acoustic impedances to and from the
enclosure." (Emphasis added))
However, the Examiner finds that the speaker box of Nakamura
changes the acoustic impedance by changing the shape of the sealed
enclosure. Final Action 4; Answer 10, 11-12. And, as the Appellant
admits, a change in shape in an enclosure may change the volume of the
enclosure, which can change the density of the gas in the enclosure, and
consequently, would change the characteristic acoustic impedance. Appeal
Br. 11-12 ("[T]here may be a momentary change in shape [of the Nakamura
speaker box]."; "Increasing the volume of the enclosure ... result[s] in a
decrease in the characteristic acoustic impedance."); Id. at 18 ("[T]he
operation does not produce any permanent change but rather oscillatory
change, which will cease to exist when the speaker is turned off. In any
event there is no change in the characteristic acoustic impedance that falls
within the 'is effective to' standard." (Emphasis added)).
While Appellant argues that the "net change" in shape and
characteristic acoustic impedance is zero, because the change in shape is
"momentary," this argument is not commensurate with the scope of the
claim, which requires only regulation of characteristic acoustic impedance
and not a change lasting more than any specified length of time. Appeal
Br. 11. Additionally, with respect to "effective to," Appellant argues that
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"[t]he prior art does not show an electrostatic force generating means
capable of controlling a range of ambient pressure equivalent to what is
shown by the [A]pplicant's invention (indicated by the 'effective to'
wording)." Appeal Br. 7; Reply Br. 4--5. Additionally, Appellant argues,
with respect to specific acoustic impedance, that any change due to the
pressure generated by the Nakamura speaker "is not capable of providing a
permanent change in specific acoustic impedance at all." Id. at 11. These
arguments by Appellant, however, are also not commensurate with the scope
of the claims. While the claims do require that "said force generating means
is effective to regulate said thermal property, and said characteristic acoustic
impedance" the claim term does not require the argued degree of
effectiveness and Appellant does not specify how "effective" -ness can be
judged or that the control would require a permanent change. We do not
agree that the broadest reasonable interpretation of this term should be
narrowed, as argued by Appellant, to require a permanent change.
Thus, we are not convinced by Appellant's arguments of error in the
Examiner's conclusion that characteristic acoustic impedance is regulated as
required by claim 1 in the proposed combination of Ledonne and Nakamura.
B: "[a] hermetically sealed enclosure having an internal pressure ranging
from atmospheric to a high vacuum"
The Examiner finds that Ledonne, in combination with Nakamura,
teaches "[a] hermetically sealed enclosure having an internal pressure
ranging from atmospheric to a high vacuum," as recited in claim 1. Final
Action 4. Appellant argues that the range of the vacuum taught in Ledonne
is much smaller than the range indicated in the claim. Appeal Br. 13.
However, the disclosure in the prior art of any value within a claimed range
is sufficient to establish a prima facie case of obviousness. Cf In re
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Application 11/265,408
Wertheim, 541 F.2d 257,267 (CCPA 1976) (the disclosure in the prior art of
any value within a claimed range is an anticipation of the claimed range).
Appellant argues unexpected results with respect to the selection of
the range in claim 1. Appeal Br. 16. This would be more applicable were
the claim to include a limitation to a subrange of a range disclosed in the
prior art, rather than the opposite, as is the present case. See, e.g., In re
Malagari, 499 F.2d 1297, 1302 (CCPA 1974). In any case, the Appellant
presents no evidence of such results nor discusses them specifically.
Appellant's burden is to show that the results are surprising or unexpected
compared to those taught by the closest prior art. See In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). This burden has not been met.
Thus, we are not convinced by Appellant's arguments of error in the
Examiner's conclusion that Ledonne, in combination with Nakamura,
teaches or suggests a hermetically sealed enclosure with the claimed range
of internal pressure.
C: Combination of Ledonne and Nakamura
Appellant presents arguments that appear to relate to the combination
of Ledonne and Nakamura. Specifically, Appellant argues that there is a
requirement for a "strict basis in record evidence as a reason to modify the
prior art." Appeal Br. 6. However, Appellant does not address the reason
provided by the Examiner for the modification. See Final Action 4.
Appellant also appears to argue that the prior art is not analogous prior
art. Appeal Br. 6-7. This appears to be related to a prior rejection over
different prior art. Id. at 6 ( discussing that "the prior art presented consists
of a hearing aid (US Patent Pub. 20040264 725 Al)"). Prior art is analogous
when it is (1) from the same field of endeavor as the claimed invention; or
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Application 11/265,408
(2) reasonably pertinent to the particular problem faced by the inventor, if
the art is not from the same field of endeavor. In re Bigio, 381 F.3d 1320,
1325-26 (Fed. Cir. 2004). Appellant does not argue, except with respect to
the hearing aid reference (US 2004/0264725 Al), which is not used in the
rejections at issue in this appeal, that the prior art is not in the same field of
the endeavor as the claimed invention or reasonably pertinent to the
particular problem faced by the inventor. See Appeal Br. 6. In fact, each
reference relates to an acoustic device or speaker, and Appellant's invention
includes "ear phone" or headphone devices which include such speakers.
Appeal Br. 7; Spec. 75. Accordingly, we are not persuaded the art is from a
different field of endeavor as the claimed invention.
Thus, we are not convinced by Appellant's arguments of error in the
Examiner's combination of Ledonne and Nakamura.
Additional Arguments and Conclusion with respect to Claims 1 and 5
Appellant presents several additional arguments with respect to claim
1. First, Appellant argues that:
It is important to note that the transduction circuit in claim 1, as
described in the [S]pecification, shows transducers that are
embedded in the framework of an enclosure with fixed walls; in
the frame and in the struts. None of these transducers may be
found on the surface of any part of the framework of the
enclosure. Therefore piezoelectric speakers on the surface of a
computer, since they are not embedded, cannot be prior art,
since the combination of the elements would be different.
Appeal Br. 7, 15. However, the claim recites the "force generating means"
is "selected from the group consisting of an electrostatic force generating
means[] and a strut force generating means." The Examiner relies on
"electrostatic force generating means," not "strut generating means" to teach
the recited "force generating means" while Appellant appears, in this portion
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Application 11/265,408
of the Appeal Brief, to be arguing "strut generating means." See Final
Action 4; Answer 2. Additionally, Appellant's discussion appears to focus
on elements described in the Specification but not claimed, and thus, the
arguments are not commensurate with the scope of the claims.
Appellant additionally argues that use of sound waves in Nakamura
contrasts with the "purpose of the invention in the rejected claims," and
"[h ]aving untrammelled speakers blaring away inside the enclosure" "is
really at odds with the purpose of the invention." Appeal Br. 13-14.
However, again, this distinction is not commensurate with the scope of the
claims, where the features of a "quiet and sedentary" system with
"substantially passive elements" are not recited, and does not address the
Examiner's combination. See id. at 14.
Appellant also argues that "Ledonne shows a vacuum high enough to
prevent the transmission of sound," and that this is at odds with the claim 1
invention which "allows sound transmission into the enclosure at low levels
of rarefaction of the air or gas in the enclosure." Id. at 15. No limitation of
the claims is squarely addressed in this argument, and, while noting that
claim 1 is directed to an enclosure "having an internal pressure ranging from
atmospheric to a high vacuum," we find the discussion of sound
transmission to not be commensurate with the scope of the claim.
Having reviewed the arguments presented by Appellant with respect
to claim 1, we are not persuaded of error in the Examiner's rejection of
claim 1. No different arguments are advanced with respect to claim 5. Id.
at 20. Thus, for the same reasons, we are not persuaded of error in the
Examiner's rejection of claim 5.
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D: "thermal impedance"
Appellant argues that the combination of Ledonne and Nakamura do
not teach or suggest the regulation of a thermal property, wherein "said
thermal property is a thermal impedance," as recited in claims 2 and 3.
Reply Br. 5.
The Examiner argues that "[t]hermal impedance/resistance is defined
as a heat property and a measurement of a temperature difference by which
an object or material resists a heat flow" and that the electrostatic speaker of
Nakamura would create and thereby impact the thermal impedance. Answer
11. Appellant appears to agree that heat may be generated by Nakamura's
speaker. Appeal Br. 16 ("the electrostatic speaker may create heat"); Reply
5. While Appellant characterizes the effect of such "trivial levels" of heat as
causing "trivial or non existent" changes in thermal impedance, Appellant
argues that "a change in thermal impedance does not amount to the creation
of thermal impedance." Reply Br. 5. However, the claims require that the
thermal property be regulated, not created, and we determine that a means of
changing thermal impedance teaches or suggests the claimed means for
regulating thermal impedance.
Thus, we are not convinced by Appellant's arguments of error in the
Examiner's conclusion that the combination of Ledonne and Nakamura
teaches or suggests the regulation of a thermal property, wherein the thermal
property is a thermal impedance.
Having reviewed the arguments with respect to claim 1 (from which
claims 2 and 3 depend) and the arguments presented by Appellant with
respect to "thermal impedance" in claims 2 and 3, we are not persuaded of
error in the Examiner's rejection of these claims.
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E: Claim 4
With respect to claim 4, Appellant argues that, contrary to the
Examiner's findings and conclusions, Parker does not teach or suggest
"sound absorbing material enclosed within said hermetically sealed
enclosure" wherein "said sound absorbing material is prevented from
contacting the enclosure walls directly" because the sound absorbing
material in Parker lies against a duct. Appeal Br. 18-19, 25 (Claims Appx.).
The Examiner responds that Figure 9 of Parker "illustrates the sound
damping material 90 not being within direct contact of the speaker enclosure
61." Answer 13. Figure 9 of Parker is reproduced below:
/....-61 ,
-~90
\.,__,_ 64;
63!
Figure 9 of Parker is a diagrammatic view of a form of the Parker invention
with an acoustic damping material 90 located on a port tube 63' outside of a
loudspeaker enclosure 61 with a vent 64'. Parker ,r,r 22, 46.
We agree with Appellant that Parker does not explain in detail
whether the duct (port tube 63 ') is an "enclosure wall" of Parker's
loudspeaker enclosure, in the terms of the disputed limitation. If the duct
were to be considered an enclosure wall, then Parker's Figure 9 does not
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Application 11/265,408
teach or suggest the claim limitation, as the damping material is thus not
"prevented from contacting the enclosure walls directly," as required by the
disputed limitation. However, this damping material of Parker's Figure 9 is
on the outside of the loudspeaker enclosure 61, regardless of whether that
enclosure does or does not include port tube 63', and does not teach or
suggest "sound absorbing material enclosed within" ( emphasis added) an
enclosure as required by claim 4.
Therefore, we find Appellant's arguments regarding the disputed
limitation to be persuasive. Accordingly, we do not sustain the Examiner's
obviousness rejections of claim 4.
DECISION
We affirm the Examiner's decision rejecting claims 1-3 and 5.
We reverse the Examiner's decision rejecting claim 4.
Pursuant to 37 C.F.R. § 1.136(a)(l )(iv), no time period for taking any
subsequent action in connection with this appeal may be extended.
AFFIRMED-IN-PART
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