95001305 - (R) (P.T.A.B. Feb. 19, 2013)

Ex Parte 7187948 et al

Patent Trials and Appeals BoardFeb 19, 2013

95001305 - (R) (P.T.A.B. Feb. 19, 2013)

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. 95/001,305 02/02/2010 7187948 21716-0013RX1 4686 22913 7590 08/06/2013 Workman Nydegger 60 East South Temple Suite 1000 Salt Lake City, UT 84111 EXAMINER FOSTER, ROLAND G ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 08/06/2013 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 ____________________ CSR PLC, Requester v. SKULLCANDY, INC. Patent Owner ____________________ Appeal 2013-000114 Reexamination Control 95/001,305 Patent 7,187,948 B2 Technology Center 3900 ____________________ Before HOWARD B. BLANKENSHIP, ROBERT E. NAPPI, and STEPHEN C. SIU, Administrative Patent Judges. SIU, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Requester submits a request for rehearing under 37 C.F.R. § 41.79(b) (dated March 21, 2013) from the Opinion of the Board of Patent Trial and Appeal Board, dated February 21, 2013 (“Decision”). Appeal 2013-000114 Reexamination Controls 95/001,305 Patent 7,187,948 B2 2 In the Decision, the Board affirmed the Examiner’s refusal to adopt the proposed rejection of claims 1 and 4 as anticipated by Smith; claims 2, 3, 5, and 6 as unpatentable over Smith and Wingate; and claims 4-6 under 35 U.S.C. 112, first paragraph. (see Decision 8). A “request for rehearing must state with particularity the points believed to have been misapprehend or overlooked in rendering the Board’s opinion reflecting its decision.” 37 C.F.R. § 41.79(b)(1). Claim 1 recites a second audio signal interrupts a first audio signal upon reaching the threshold value. We stated in the Decision that Smith fails to disclose this limitation (Decision 7). Requester argues that “[t]he Board ascribed an unreasonably narrow interpretation to threshold value” (Req. Reh’g. 2). We disagree for at least the previously stated reasons (see e.g., Decision 7). While Requester apparently disagrees with our Decision, Requester does not point out with particularity the specific points that were misapprehended or overlooked. Requester also argues that “[t]he Board apparently overlooked that the Examiner explicitly agreed with the Appellant’s stated position” (Req. Reh’g 3). We need not address whether the Examiner “explicitly agreed with Appellant’s stated position” as Requester asserts because Requester still has not persuasively demonstrated that Smith, in fact, discloses a second audio signal that interrupts a first audio signal upon the second audio signal reaching the specified threshold value. Appeal 2013-000114 Reexamination Controls 95/001,305 Patent 7,187,948 B2 3 Requester also argues that “[t]he Board overlooked the plain disclosure in Smith of discrimination based on signal strength” (Req. Reh’g. 4). Requester cites one passage from the Smith reference describing a user utilizing a device “within good signal range” and another passage from the Smith reference that describes a module that receives a phone call from a mobile phone while in a car that is parked near a house (Req. Reh’g 4). We are not persuaded by Requester’s argument because we do not agree with Requester that a second audio signal interrupting a first audio signal upon reaching the threshold value, as recited in claim 1, is the same as Smith’s disclosure of operating a device “within good signal range” and receiving a phone call while in a car that is parked near a house. Requester argues that “[t]he Board failed to address obviousness of the dependent claims” (Req. Reh’g 6). We disagree that we misapprehended or overlooked particular points in this regard because such points were not previously raised. In any event, as stated in the Decision, Smith discloses a user receiving a phone call while listening to an audio signal, such as music, and stopping the audio signal responsive to receiving a phone call (Decision 7). We stated that Smith does not disclose the phone call reaching a threshold value and interrupting the audio signal (i.e., music) when the second audio signal (i.e., phone call) reaches the threshold value. Instead, Smith merely discloses interrupting music when a phone call is received (at any level). Requester does not indicate that Wingate discloses this feature or how it would have been obvious to one of ordinary skill in the art receiving a Appeal 2013-000114 Reexamination Controls 95/001,305 Patent 7,187,948 B2 4 phone call that does not “reach” a “threshold value” (as in Smith) to have interrupted the audio signal only after the phone call reaches a specified threshold value. Requester now inquires “would it have been obvious through pure common sense to one of ordinary skill in the . . . art . . . that the music signal would only have to be interrupted when an incoming phone signal reached a threshold . . .?” (Req. Reh’g 6) and posits that “you do not have to interrupt the music if the phone signal is so weak or so corrupted or ill-formed . . .” (id.) We do not find that it would have been obvious to one of ordinary skill in the art given that Smith does not disclose that a phone call is even associated with a specific threshold value, as previously discussed. We have considered Appellant’s arguments but find no points that we have misapprehended or overlooked. Therefore, the Request for Rehearing is DENIED. DENIED Appeal 2013-000114 Reexamination Controls 95/001,305 Patent 7,187,948 B2 5 ak Patent Owner: Workman Nydegger 1000 Eagle Gate Tower 60 East South Temple Salt Lake City, UT 84111 Third Party Requester: Fish & Richardson, PC P.O. Box 1022 Minneapolis, MN 55440