Light Speed Aviation, Inc.

Patent Trials and Appeals Board

Feb 9, 2022

2021000413 (P.T.A.B. Feb. 9, 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. 15/427,624 02/08/2017 Allan SCHRADER LSA 0142 PUSP 3103 22045 7590 02/09/2022 Brooks Kushman 1000 Town Center 22nd Floor Southfield, MI 48075 EXAMINER LE, HUYEN D ART UNIT PAPER NUMBER 2653 NOTIFICATION DATE DELIVERY MODE 02/09/2022 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): docketing@brookskushman.com kdilucia@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALLAN SCHRADER and MATTHEW RAYMOND EVONUK ____________ Appeal 2021-000413 Application 15/427,624 Technology Center 2600 ____________ Before ST. JOHN COURTENAY, III, ELENI MANTIS MERCADER, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-11 and 14-19. Claims 12 and 13 have been withdrawn from consideration as the result of the Examiner’s Restriction Requirement mailed March 26, 2018 (see Appellant’s Response to Restriction Requirement filed May 29, 2018) (electing to prosecute Group I 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Lightspeed Aviation, Inc. (Appeal Br. 1). Appeal 2021-000413 Application 15/427,624 2 consisting of claims 1-11 and 14-19, and not Group II consisting of claims 12 and 13). We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. INVENTION2 “Passive hearing protection may include two earcups or muffs joined by a headband and worn over ears of users to enhance or protect hearing” (Spec. ¶ 3). Appellant’s invention, entitled “System and Method for Converting Passive Protectors to ANR [active noise reduction] Headphones or Communication Headsets” (see Title), relates to hearing protection methods and devices, and more particularly, “relates to a system and method for converting passive ear muff protectors to an over-the-ear headset or headphones that may include active and passive noise reduction and audio communication technology” (Spec. ¶ 2). Independent claims 1 (method for converting a passive hearing protector) and 14 (headset) are illustrative of the invention and are reproduced below, with emphases added to disputed portions of the claims. 1. A method for converting a passive hearing protector, comprising: securing a frame subassembly having a circumferential support arm within an earcup of the passive hearing protector to divide an earcup cavity into a front cavity and a back cavity, the frame subassembly having a speaker extending between the front and back cavities and processing circuitry secured to the frame 2 Throughout this Decision we refer to Appellant’s Specification filed Feb. 8, 2017 (“Spec.”); Appeal Brief filed April 23, 2020 (“Appeal Br.”); the Examiner’s Final Office Action mailed March 21, 2019 (“Final Act.”); and the Answer mailed Aug. 6, 2020 (“Ans.”). Appeal 2021-000413 Application 15/427,624 3 and coupled to the speaker, the processing circuitry configured for connection to a microphone. Appeal Br., Claims Appendix, p. A-1 (emphases added). 14. A headset comprising: a circumaural earcup having a shell; an acoustic damping membrane positioned on an interior surface of the shell; a frame positioned within the shell to separate an interior volume of the shell into a back cavity between the frame and the shell and front cavity sealed from the back cavity, the frame configured to receive: a speaker extending between the front and back cavity, and processing circuitry in the back cavity; and a communication microphone coupled to the processing circuitry. Appeal Br., Claims Appendix, p. A-2 (emphases added). EXAMINER’S REJECTIONS (1) The Examiner rejected claims 1-4, 10, and 14 under 35 U.S.C. § 102(a)(1) as being anticipated by Wurtz (US 6,735,316 B1; issued May 11, 2004) (hereinafter, “Wurtz ‘316”). Final Act. 2-4; Ans. 3-4. As evidence in support of the rejection, the Examiner relies primarily on Figure 1 and column 2, lines 33-40 of Wurtz ‘316 as teaching the limitations of claims 1 and 14 (see Final Act. 2-3; Ans. 3-4). In the Answer, as to both claims 1 and 14, the Examiner expands this reliance of Figure 1 by citing many new portions, and embodiments, of Wurtz ‘316, including column 1, lines 17-27; column 2, lines 17-22 and 43-44; column 3, lines 56-67; and column 4, lines 1-15 (see Ans. 9-12). (2) The Examiner rejected claims 5 and 6 under 35 U.S.C. § 103 as Appeal 2021-000413 Application 15/427,624 4 being unpatentable over Wurtz ‘316 in view of either Bakalos (US 2013/0329902 A1; published Dec. 12, 2013) or Bourk (US 5,182,774; issued Jan. 26, 1993). Final Act. 4-5; Ans. 5-6. (3) The Examiner rejected claims 7-9 and 14-16 under 35 U.S.C. § 103 as being unpatentable over Wurtz ‘316 in view of Wurtz (US 2006/0013410 A1; published Jan. 19, 2006) (hereinafter, “Wurtz ‘410). Final Act. 5-6; Ans. 6-7. (4) The Examiner rejected claim 11 under 35 U.S.C. § 103 as being unpatentable over Wurtz ‘316. Final Act. 6-7; Ans. 8. (5) The Examiner rejected claims 17-19 under 35 U.S.C. § 103 as being unpatentable over Wurtz ‘316 in view of Wurtz ‘410, further in view of either Bakalos or Bourk. Final Act. 7-8; Ans. 8-9. Appellant’s Contentions (1) Appellant contends that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(a)(1) over Wurtz ‘316 because, inter alia, Wurtz ‘316 fails to disclose (i) a frame separating an earcup into front and back cavities radio access equipment of another technology as recited in claim 1 (see Appeal Br. 3-5); and (ii) a frame assembly including a speaker that extends between the front and back cavities (see Appeal Br. 3). More specifically, Appellant contends Wurtz ‘316’s front cavity 119 “encompasses or envelops the entirety of cavity 124, such that cavity 119 extends in front of, as well as behind and above, cavity 124, which is contained within frame 122” (Appeal Br. 3). (2) Appellant also contends that the Examiner erred in rejecting claim 14 under 35 U.S.C. § 103 over Wurtz ‘3416, alone or in various applied combinations relying on Wurtz ‘316 as a base reference, fails to disclose a Appeal 2021-000413 Application 15/427,624 5 frame separating an interior volume of a shell into a back cavity between the frame and the shell and a front cavity sealed from the back cavity, as recited in claim 14, because Wurtz ‘316’s frame 122 does not extend entirely across the earcup (see Appeal Br. 5). Issues on Appeal Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 3-7), the following principal issues are presented on appeal: Did the Examiner err in rejecting claims 1 and/or 14 under 35 U.S.C. § 102(a)(1) as anticipated by Wurtz ‘316 because (1) Wurtz ‘316 fails to disclose an earcup cavity divided into front and back cavities as recited in claim 1; and/or (2) did the Examiner improperly combine multiple different embodiments of Wurtz ‘316 to meet the limitations recited in claim 14, resulting in the relied upon portions of Wurtz ‘316 not being arranged as recited in claim 14? ANALYSIS Issue (1): Anticipation Rejection of Claim 1 Over Wurtz ‘316 We have reviewed the Examiner’s rejection (see Final Act. 2-3; Ans. 3-4) in light of Appellant’s arguments in the Appeal Brief (see Appeal Br. 3-5) that the Examiner has erred, and the Examiner’s response to Appellants’ arguments in the Appeal Brief found at pages 9-11 of the Answer. We disagree with Appellant’s arguments and conclusions. With respect to independent claim 1, we adopt as our own (1) the findings and reasons set forth by the Examiner in the Final Rejection (see Final Act. 2-3) and the Answer (see Ans. 3-4), and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief (Ans. 9- Appeal 2021-000413 Application 15/427,624 6 10).3 We concur with the findings and conclusion as to anticipation reached by the Examiner as to claim 1, and we provide the following for emphasis. Appellant discloses and recites a “front cavity” (Fig. 1, 120; claim 1; see Spec. ¶ 12) and a “back cavity” (Fig. 1, 124; claim 1; see Spec. ¶ 12). Wurtz ‘316 also discloses a “front cavity” (Fig. 1, 119; claim 10; col. 2, l. 22), and a “back cavity” (Fig. 1, 124; col. 2, l. 44). Both (i) Appellant’s frame 130 and circumferential support arm 146; and (ii) Wurtz ‘316’s frame 122 and frame assembly composed of elements 122, 122.1, 122.3, 122.5, 122. 51, 122.52, 126, 126.2, and 128, serve to divide or separate an earcup cavity in a front cavity (the cavities closest to a user’s ear) and a back cavity (the cavities further from a user’s ear), as required by claim 1. We agree with the Examiner (see Ans. 9) that claim 1 does not require that the frame includes a circumferential support arm cooperating with a gasket or seal to seal against the ear seal plate (claim 1). In claim construction, “the name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (quoting Giles Sutherland Rich, Extent of Protection and Interpretation of Claims -- American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L. 497, 499 (1990)). Here, claim 1 on appeal merely recites a frame having a circumferential support within an earcup “to divide an earcup cavity into a front cavity and a back cavity” (claim 1), and 3 We do not rely on the Examiner’s additional explanation and findings made in the Answer as to column 1, lines 17-27; column 2, lines 17-22 and 43-44; column 3, lines 56-67; and column 4, lines 1-15 (see Ans. 9-12), as the language of claim 1 encompasses what is shown in Figure 1 and described in column 2, lines 33-40 of Wurtz ‘316 as set forth in the rejection (see Final Act. 2-3; Ans. 3-4). Appeal 2021-000413 Application 15/427,624 7 is silent as to how the earcup cavity is divided (e.g., completely divided using a seal versus partially divided, allowing air to move between the front and back cavities). Under the broadest reasonable interpretation,4 the recited “back cavity” can be any cavity inside an earcup that is separated (or as recited, divided) from a front cavity within the earcup cavity. We also note Appellant has not cited to a definition of “back cavity” in the Specification that would preclude the Examiner’s broader reading.5 In any event, Wurtz ‘316 discloses a back cavity 124 that meets the requirements of by claim 1. The arguments presented by Appellant (see Appeal Br. 3-5) based on Figure 1 of Wurtz ‘316 (e.g., that cavity 124 is not separated from cavity 119 as claimed) do not suffice to rebut the Examiner’s detailed factual findings based on Wurtz ‘316. In view of the foregoing, Appellant has not shown the Examiner’s anticipation rejection of claim 1 (as the as the rejections of claims 2-11 which ultimately depend from claim 1) to be in error, and we sustain the (i) 4 Claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 5 Any special meaning assigned to a term “must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.” Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (“A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description.”) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005)). Appeal 2021-000413 Application 15/427,624 8 anticipation rejection of claims 1-4 and 10 as being anticipated by Wurtz ‘316; and (ii) obviousness rejections of claims 5-9 and 11 also based on Wurtz ‘316. Issue (2): Anticipation Rejection of Claim 14 over Wurtz ‘316 In an anticipation rejection, “it is not enough that the prior art reference . . . includes multiple, distinct teachings that [an ordinary] artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the reference must “clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” Id. (quoting In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (alterations in original)). Thus, while “[s]uch picking and choosing may be entirely proper in the making of a 103, obviousness rejection . . . it has no place in the making of a 102, anticipation rejection.” Arkley, 455 F.2d at 587-88. Furthermore, while “[c]ombining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness,” Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009), we note that the court in Boston Scientific Scimed was considering a question of obviousness, in contrast to the question of anticipation presented here. In the context of anticipation, a prior art reference anticipates the claimed invention under 35 U.S.C. § 102 only if every element of a claimed invention is identically shown in that single reference, arranged as they are in the claims. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Appeal 2021-000413 Application 15/427,624 9 We have reviewed Appellant’s arguments in the Appeal Brief (see Appeal Br. 5-6), the Examiner’s rejection (see Final Act. 4; Ans. 4), and the Examiner’s response to Appellant’s arguments (see Ans. 11-13). Appellant’s arguments have persuaded us of error in the Examiner’s rejection of claim 14, as well as claims 15-19 ultimately depending therefrom. As stated above (see Decision 3), as to claim 14, the Examiner expands the reliance on the embodiment of Figure 1 by citing many new portions, and embodiments, of Wurtz ‘316, including column 1, lines 17-27; column 2, lines 17-22 and 43-44; column 3, lines 56-67; and column 4, lines 1-15 (see Ans. 9-12). Notably, the Figure 1 embodiment fails to provide for a front cavity being “sealed from the back cavity” as recited in claim 14. The Examiner has newly relied upon at least one additional embodiment in citing to columns 3 and 4 of Wurtz ‘316, which portions appear to suggest sealing the cavities off from each other as claimed. However, “[s]uch picking and choosing may be entirely proper in the making of a 103, obviousness rejection . . . it has no place in the making of a 102, anticipation rejection.” Arkley, 455 F.2d at 587-88. The Examiner’s reliance on multiple embodiments is improper, and multiple embodiments cannot be combined to meet the limitations of claim 14 as arranged as in claim 14 in making a prima facie case of anticipation. Id. We are constrained by the record before us to find that the Examiner erred in rejecting claim 14 based on the Examiner’s reliance on a plurality of different and mutually exclusive embodiments of Wurtz ‘316 to support the anticipation rejection. Appeal 2021-000413 Application 15/427,624 10 Because the Examiner’s findings regarding Wurtz ‘316 do not support a finding that Wurtz ‘316 teaches or suggests a front cavity sealed from a back cavity as arranged and recited in claim 14, we are persuaded by Appellant’s arguments that the rejections of claims 14-19 are based on erroneous findings as to Wurtz ‘316. Therefore, we are constrained by the record to reverse the Examiner’s rejections of claims 14-19. CONCLUSIONS (1) Appellant has not adequately shown the Examiner erred in rejecting claim 1 as being anticipated under 35 U.S.C. § 102(a)(1) by Wurtz ‘316. Based on Appellant’s arguments (see Appeal Br. 7) that claims 2-11 stand or fall with the outcome for claim 1, we sustain the Examiner’s rejections of claims 1-11 (which all rely on the underlying findings as to Wurtz ‘316). (2) Appellants have established that the Examiner erred in rejecting claim 14 under 35 U.S.C. § 102(a)(1) by Wurtz ‘316, because the Examiner has improperly combined multiple different embodiments of Wurtz ‘316 to meet the limitations recited in claim 14, resulting in the relied upon portions of Wurtz ‘316 not being arranged as recited in independent claim 14.6 To 6 Our finding is directed to a determination of whether or not Wurtz ‘316 anticipates the invention set forth in claims 14-19. We make no finding regarding whether or not it would have been obvious to seal a back cavity from a front cavity as set forth in claim 14. We leave such a conclusion to the Examiner’s consideration during subsequent prosecution. Although not before us on Appeal, we leave it to the Examiner to evaluate whether the independent claims are obvious under 35 U.S.C. § 103 over Wurtz ‘316 alone or Wurtz ‘316 in combination with (i) other prior art, or (ii) previously Appeal 2021-000413 Application 15/427,624 11 the extent the Examiner’s obviousness rejections of claims 15-19 are based upon the erroneous rejection of claim 14 as anticipated by Wurtz ‘316 (see Appeal Br. 7), we find that the Examiner also erred in the obviousness rejections of claims 15-19 which are also based on Wurtz’ 316 for the reasons set forth above in our analysis of claim 14. Therefore, we (i) affirm the Examiner anticipation rejection of claims 1-4 and 10 and obviousness rejections of claims 5-9 and 11; and (ii) reverse the Examiner’s anticipation rejection of claim 14 and obviousness rejections of claims 15-19. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 10, 14 102(a)(1) Wurtz ‘316 1-4, 10, 14 5, 6 103 Wurtz ‘316, Bakalos or Bourk 5, 6 7-9, 14-16 103 Wurtz ‘316, Wurtz ‘410 7-9 14-16 11 103 Wurtz ‘316 11 17-19 103 Wurtz ‘316, Wurtz ‘410, Bakalos or Bourk 17-19 Overall Outcome 1-11 14-19 applied references. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. Appeal 2021-000413 Application 15/427,624 12 TIME PERIOD FOR RESPONSE 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 IN PART