Ex parte Lyren

• Docket Number: Appeal 2023-000985,Application 17/000,316,Technology Center 2100
• Decision Date: 07 November 2023
• Parties: Ex parte PHILIP SCOTT LYREN
• Court: Patent Trial and Appeal Board

1

Ex parte PHILIP SCOTT LYREN

Appeal 2023-000985

Application 17/000,316

Technology Center 2100

United States Patent and Trademark Office, Patent Trial and Appeal Board

November 7, 2023

FILING DATE: 08/22/2020

Before MAHSHID D. SAADAT, ERIC S. FRAHM, and JAMES W. DEJMEK, Administrative Patent Judges.

DECISION ON APPEAL

FRAHM, Administrative Patent Judge.

2

STATEMENT OF THE CASE^[1]

Appellant^[2] appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 21, 22, 24, 25, 27-38, and 40. Claims 1-20 have been canceled. Claims 23, 26, and 39 have been indicated as allowable if rewritten to

3

include all of the limitations of their respective base claims (claims 21 and 36) (see Final Act. 7). We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

DISCLOSED AND CLAIMED INVENTION

The invention, entitled "Emoji That Indicates a Location of Binaural Sound" (see Title; see also Figs. 5A-F), concerns "[t]hree-dimensional (3D) sound localization" (Spec. 1:5), for allowing a user involved in an electronic communication with another user to be notified that the communication is in binaural sound and headphones/earphones will be needed to prevent the loss of binaural sound that externally localizes (Spec. 6:12-31). With this is in mind, Appellant discloses and claims (see claim 21) a method for displaying a graphical representation on the display of a wearable electronic device (WED) to inform the listener that sound will be played binaurally (see claim 21; Spec. 5:3-9, 6:12-21; Figs. 5A-F).

Independent claim 21, reproduced below, is illustrative of the claimed subject matter:

21. A method comprising

displaying, with a display of a wearable electronic device (WED) worn on a head of a listener, a graphical representation that [1] when activated plays binaural sound to the listener and that [2] has a body with an indication informing the listener that sound from the graphical representation will play as the binaural sound

Appeal Br. 20 (Claims Appendix) (formatting, bracketed lettering, and emphases added).

4

REJECTIONS

The Examiner made the following rejections: (1) Claims 21, 22, 24, 28, 30-38, and 40 stand rejected under 35 U.S.C. § 103 as being unpatentable over Heinen et al. (US 2020/0312029 A1; published Oct. 1, 2020 based on U.S. Provisional Appl. No. 62/342,808 filed on May 27, 2016) (hereinafter, "Heinen") and Lee et al. (US 2007/0061761 A1; published Mar. 15, 2007) (hereinafter, "Lee"). Final Act. 3-6.

(2) Claims 25 and 27 stand rejected under 35 U.S.C. § 103 as being unpatentable over Heinen, Lee, and Hernandez Garcia et al. (US 10,088,868 B1; issued Oct. 2, 2018 and filed on Jan. 5, 2018) (hereinafter, "Hernandez Garcia"). Final Act. 6.

(3) Claim 29 stands rejected under 35 U.S.C. § 103 as being unpatentable over Heinen, Lee, and Lotto et al. (US 2018/0144524 A1; published May 24, 2018 and filed Nov. 17, 2017) (hereinafter, "Lotto"). Final Act. 6-7.

ISSUE

Appellant presents arguments in the Appeal Brief only as to claim 21, and relies on the arguments presented as to claim 21 for the patentability of remaining claims 22, 24, 25, 27-38, and 40 (see Appeal Br. 6-18). Specifically, with regard to the rejection of claims 21, 22, 24, 28, 30-38, and 40 over Heinen and Lee (see supra Rejection 1), Appellant argues the patentability of claims 21, 22, 24, 28, 30-38, and 40 on the basis of the arguments presented as to claim 21 (see Appeal Br. 6). Based on Appellant's arguments and our discretion under 37 C.F.R. § 41.37(c)(1)(iv),

5

we decide the appeal of claims 21, 22, 24, 28, 30-38, and 40 on the basis of representative apparatus claim 21.^[3] And, based on (i) Appellant's arguments; (ii) the fact that claims 25 and 27 depend directly from claim 21 and claim 29 depends directly from claim 28; and (iii) the rejections for claims 25, 27, and 29 being based on the same base combination of Heinen and Lee as applied to claims 21 and 28, we decide the outcome of claims 25 and 27 (see supra Rejection 2), and 29 (see supra Rejection 3), on the same basis as claim 21 (see supra Rejection 1).

We have considered all of Appellant's arguments regarding motivation to combine (see Appeal Br. 8-18; Reply Br. 3), and any evidence presented (e.g., the Declaration Under 37 CFR 1.132 of Philip Scott Lyren filed on January 31, 2022). To the extent Appellant has not timely advanced separate, substantive arguments for particular claims, or other issues (such as the failure of Heinen to teach or suggest limitations of claim 21), such arguments are forfeited. See, e.g., 37 C.F.R. § 41.37(c)(1)(iv); In re Watts, 354 F.3d 1362, 1367-68 (Fed. Cir.2004) (under the doctrine of forfeiture, our reviewing court generally does not consider arguments that a party failed to present to the Board); Ex parte Borden, 93 U.S.P.Q.2d 1473, 1474 (BPAI 2010) ("Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived."); see also Optivus Tech., Inc. v. Ion Beam Appl'ns. S.A.,

6

469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue not raised by an appellant in its opening brief... is waived." (citations and quotation marks omitted)); In re Google Tech. Holdings, 980 F.3d 858, 863 (Fed. Cir. 2020) (The "failure to raise . . . arguments, inadvertent or not, compels a finding of forfeiture.").

In view of the foregoing, based on Appellant's arguments as to claim 21 in the Appeal Brief (Appeal Br. 6-18) and the Reply Brief (Reply Br. 2-3), the following principal issue is presented on appeal:

Under a proper claim interpretation of representative claim 21, has Appellant shown the Examiner erred in rejecting claims 21, 22, 24, 25, 27-38, and 40 under 35 U.S.C. § 103 as being unpatentable over the base combination of Heinen and Lee?

ANALYSIS

We have reviewed the Examiner's rejection of claim 1 (see Final Act. 3-7) in light of Appellant's arguments (Appeal Br. 6-18; Reply Br. 2-6) that the Examiner has erred, as well as the Examiner's response to Appellant's arguments in the Appeal Brief (Ans. 3-9). Appellant's arguments regarding claim 21, focusing on the motivation to combine Heinen and Lee (see Appeal Br. 6-18; Reply Br. 3), are not persuasive of Examiner error. We provide the following explanation for emphasis.

Claim construction is an important step in a patentability determination. A legal determination that a claim is anticipated or obvious involves a two-step inquiry wherein first, the claims are properly construed, and second, the properly construed claims are compared to the prior art. See

7

Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003); see also In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).

When construing claim terminology during prosecution before the Office, claims are to be given their broadest reasonable interpretation consistent with the Specification, reading claim language in light of the Specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Or., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We are mindful, however, that limitations are not to be read into the claims from the Specification. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Because "applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).

Moreover, in the instant case on appeal, a proper construction for claim 21 involves the consideration of the claim construction doctrine regarding non-functional descriptive material.

It is well-settled that in order to be given patentable weight, printed matter must have a functional relationship to its substrate. See, e.g., In re Miller, 418 F.2d 1392, 1396 (CCPA 1969). In Miller, the predecessor to our reviewing court made clear that "printed matter by itself is not patentable subject matter, because [it is] non-statutory." Miller, 418 F.2d at 1396. However, if the printed matter has a "new and unobvious functional relationship" with the substrate (e.g., volumetric indicia on measuring vessels), it is entitled to patentable weight. Miller, 418 F.2d at 1396.

8

"Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability." In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability).

Further, although the cases discussed supra relate to apparatus claims, the same reasoning is equally applicable to process (i.e., method) claims. See, e.g., KingPharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278-79 (Fed. Cir. 2010) ("we believe that the rationale underlying these cases extends to the situation presented in this case"). See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).

"Claim limitations directed to printed matter are not entitled to patentable weight unless the printed matter is functionally related to the substrate on which the printed matter is applied." Praxair Distribution, Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1031 (Fed. Cir. 2018) (emphasis added). Our reviewing court has also explained that this printed matter doctrine is not strictly limited to "printed" materials. Praxair, 890 F.3d at 1032. More specifically, "a claim limitation is directed to printed matter 'if it claims the content of information.'" Praxair, 890 F.3d at 1032 (quoting In re DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015)).

In addition, our reviewing court has held that non-functional descriptive material cannot lend patentability to an invention that would have otherwise been unpatentable. See Ngai, 367 F.3d at 1339. The content of non-functional...