Ex Parte 8300863 et al

Patent Trial and Appeal Board

Nov 28, 2017

90013592 (P.T.A.B. Nov. 28, 2017)

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.
90/013,592 09/22/2015 8300863 4436-0210PUS3 1067
2292 7590 11/28/2017
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
FALLS CHURCH, VA 22042-1248
EXAMINER
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/28/2017 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 OTICON A/S
Patent Owner and Appellant
Appeal 2017-010619
Reexamination Control 90/013,592
United States Patent 8,300,863 B2
Technology Center 3900
Before JOHN A. JEFFERY, DENISE M. POTHIER, and FRANCES L.
IPPOLITO, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. §§ 134 and 306 the Examiner’s
decision to reject claims 6—8, 14, and 26-44. The remaining claims are not
subject to this reexamination. We have jurisdiction under 35 U.S.C. §§ 134
and 306, and we heard the appeal on November 16, 2017. We affirm.
STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
on September 22, 2015 of United States Patent 8,300,863 B2 (“the ’863
patent”), issued to Knudsen et al. on October 30, 2012.
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The ’863 patent describes a hearing device with (1) a first portion
arranged at a user and providing a signal, (2) an output transducer for
converting the signal into an acoustic output, and (3) a second portion
arranged in a user’s ear canal for providing acoustic output to the user. See
generally ’863 patent, col. 1,11. 8—17. Claim 6 is illustrative of the invention
and reproduced below:
Claim 6. A hearing device, comprising:
a first portion configured to be arranged at a user and to
provide a signal to a second portion;
the second portion configured to be arranged in an ear
canal of said user and to provide acoustic output to said user, the
second portion including an output transducer for converting said
signal into said acoustic output;
a coupling element coupling said first portion and said
second portion and transmitting said signal to said output
transducer, the coupling element including an electrically
conducting element an antenna; and
a wireless interface for receiving and/or sending data
through said antenna, wherein said electrically conducting
element is operatively coupled to said wireless interface and
functions as at least a part of said antenna by wirelessly receiving
or transmitting RF signals, and
wherein said coupling element comprises two wires for
transmitting said signal to said output transducer and a shield
element for shielding said wires, wherein said electrically
conducting element comprises said shield element, and
wherein said wireless interface is coupled to said shield
element via a balun.
RELATED PROCEEDINGS
This appeal is related to two terminated inter partes review
proceedings, IPR2015-00103 and IPR2015-00104 (the ’103 and ’104
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proceedings), that involved the ’863 patent. App. Br. 1. Notably, the ’103
proceeding included a challenge to claim 6 over one of the obviousness
grounds at issue here, namely over the Meskens and Yoshino references
cited below. See GN Resound A/S v. Oticon A/S, Case IPR2015-00103
(PTAB Apr. 29, 2015) (Paper 10) (“Oticon 7”), at 8—16 (concluding that
Petitioner failed to show a reasonable likelihood of prevailing that claims 6—
8 and 14 would have been obvious over Meskens and Yoshino), reh ’g
denied (PTAB June 18, 2015) (“Oticon IF).
Additionally, an Ex Parte Reexamination Certificate issued on
October 20, 2014 for the ’863 patent, based on Reexamination No.
90/013,189, (1) determining claims 1, 4—8, 11, 12, 14, and 16—20 are
patentable as amended; (2) canceling claims 2, 3, and 13; and (3) not
examining claims 9, 10, 15, and 21—24. US 8,300,863 Cl, col. 1,11. 16—24.
THE REJECTIONS
The Examiner rejected claims 6—8, 14, and 26-44 under 35 U.S.C.
§ 103(a) as unpatentable over Meskens (US 2008/0304686 Al; publ. Dec.
11, 2008) and “Patent Owner Admitted Prior Art” (“APA”). Final Act. 4—
10; Ans. 3-22.1
1 Throughout this opinion, we refer to (1) the Final Office Action mailed
August 12, 2016; (2) the Appeal Brief filed March 13, 2017 (supplemented
April 14, 2017) (“App. Br.”); (3) the Examiner’s Answer mailed June 5,
2017 (“Ans.”); and (4) the Reply Brief filed August 7, 2017 (“Reply Br.”).
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The Examiner rejected claims 6—8, 14, and 26-44 under 35 U.S.C.
§ 103(a)2 as unpatentable over Meskens and Yoshino (US 2005/0245289
Al; publ. Nov. 3, 2005). Final Act. 11—12; Ans. 23—33.
The Examiner rejected claim 44 under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as indefinite. Final Act. 20.
THE REJECTION OVER MESKENS AND APA
The Examiner finds that Meskens’ hearing device in Figure 2A
comprises a “first portion,” namely the portion of behind-the-ear (BTE)
prosthetic device 100 with microphone 101, controls 102, etc., where the
first portion is configured to be arranged at a user and provide a signal to a
“second portion,” namely auxiliary device 440 that is configured to be
arranged in a user’s ear canal and provide acoustic output. Ans. 8—9.
According to the Examiner, Meskens’ hearing device includes a
“coupling element,” namely connector 170, that is said to (1) couple the first
and second portions, and (2) include an electrically conducting element
including a conductive outer body 171 and electrically conductive
receptacles 173. Ans. 10. The Examiner also finds that Meskens’ “wireless
interface” (RF transceiver 120) can receive and/or send data through an
“antenna,” namely the outer body 171 of connector 170. Ans. 10—11.
2 Although the Examiner erroneously cites the pre-AIA statute as “35 U.S.C
[§] 102(3)” for the obviousness rejection over Meskens and Yoshino (Ans.
23), we nonetheless presume that the Examiner intended to cite the correct
obviousness statute here, namely 35 U.S.C. § 103(a), and treat the
Examiner’s error in this regard as harmless. Accord App. Br. 3 (citing the
correct statute for this rejection).
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The Examiner adds that Meskens’ connector-based coupling element
comprises (1) two “wires,” namely receptacles 173, for transmitting the
signal to the output transducer, and (2) a “shield element” (outer body 171)
for shielding the “wires,” where the electrically conducting element
comprises the shield element. Ans. 12—13.
Although the Examiner acknowledges that Meskens’ wireless
interface, namely transceiver 120, is not coupled to the shield element (outer
body 171) via a balun, the Examiner nonetheless concludes that this balun-
based coupling would have been obvious to ordinarily skilled artisans in
light of their knowledge of baluns noted in column 4, lines 17 to 20 of the
’863 patent, which is said to be admitted prior art. Ans. 13—15. In reaching
this conclusion, the Examiner notes that in light of Meskens’ teaching of
using balanced and unbalanced antennas (e.g., dipoles and monopoles,
respectively), connecting balanced and unbalanced circuits using a balun
would have been obvious to ordinarily skilled artisans to avoid various
operational problems resulting from the lack of a balun, including less
efficient coupling, increased likelihood of losing signals, unpredictable
antenna patterns, and intensified signal interference. Id.
Appellant argues that (1) Meskens’ connector 170 does not
correspond to the recited “coupling element,” (2) those portions of the
removable part 300 in Meskens’ ear hook 180 do not correspond to the
recited “second portion,” (3) Meskens’ outer body 171 does not correspond
to the recited “shield element,” and (4) there is no proper rationale to modify
Meskens to include a balun in view of APA. App. Br. 5—14; Reply Br. 3—7.
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ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 6 by
finding that Meskens and APA collectively would have taught or suggested
the recited second portion, coupling element, and shield element?
(2) Is the Examiner’s proposed combination supported by articulated
reasoning with some rational underpinning to justify the Examiner’s
obviousness conclusion?
ANALYSIS
Claims 6—8, 27—29, 31—33, and36—43
As noted above, independent claim 6 recites, in pertinent part, a
“second portion” configured to (1) be arranged in the user’s ear canal, and
(2) provide acoustic output to the user, where the second portion includes an
output transducer for converting a signal provided from the first portion into
acoustic output. On this record, we see no error in the Examiner’s mapping
Meskens’ auxiliary device 440 to the recited “second portion.” Ans. 9. As
shown in Meskens’ Figure 2A reproduced below, auxiliary device 440 is
connected electrically to connector 170 via lead 430 and plug 410. See
Meskens 135.
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FIG. 2A
Meskens’ Figure 2A showing auxiliary device 440
As shown in Meskens’ Figure 2A above, the very shape of auxiliary
device 440 and its description as an earphone in paragraph 35 suggests that
it is not only configured to be arranged in the user’s ear canal, but also
includes an output transducer to provide acoustic output. See Meskens 1 55
(noting that the auxiliary device can be an in-the-ear speaker). That the term
“earphone” is defined, in pertinent part, as “[a]n electroacoustic transducer
intended to be placed in or over the ear” only bolsters this suggestion. See
Rudolf F. Graf, Modern Dictionary of Electronics 303 (6th ed. 1984)
(“Modern Dictionary of Electronics”) (emphasis added).
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To be sure, the Examiner indicates on page 5 of the Answer in an
“Overview” section that the recited “second portion” corresponds to a
removable part 300 in Meskens’ Figure 1 that, in addition to auxiliary device
440, also includes lead 430, impedance matching circuit 420, and auxiliary
connector 410. The Examiner’s adopted rejection on pages 7 to 15 of the
Answer, however, limits the recited “second portion” to solely auxiliary
device 440. See Ans. 9—10. Accord Reply Br. 5 (noting this discrepancy).
Notably, not only is this adopted rejection articulated in its entirety in the
Answer, the Examiner identified auxiliary device 440 as corresponding to
the recited second portion during prosecution as Appellant acknowledges.
See Reply Br. 5.
Although the Examiner articulates two different mappings for the
recited “second portion” in the Answer, we are unpersuaded of error for
either interpretation. First, we are unpersuaded of error in the Examiner’s
mapping of “second portion” to solely auxiliary device 440 in the
Examiner’s adopted rejection (see Ans. 9-10) for the reasons noted
previously.
Nor are we persuaded of error in the Examiner alternatively mapping
auxiliary device 440 and other elements of removable part 300 to the recited
“second portion,” for nothing in the claim requires the second portion to be a
unitary structure or device. That is, the hearing device’s “second portion”
could comprise multiple devices and structures given the scope and breadth
of the term “portion” that is defined, in pertinent part, as “[a] section or
quantity within a larger thing ....” The American Heritage Dictionary
of the English Language 1368 (4th ed. 2006) (emphasis added).
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Because one of the structures of Meskens’ “second portion” under this
alternative mapping is configured to be arranged in an ear canal, namely
auxiliary device 440, at least part of the second portion is configured to be
arranged in an ear canal. To the extent that Appellant contends that the
entire second portion must be configured to be arranged in an ear canal (see
App. Br. 5—8; Reply Br. 3—5), such arguments are not commensurate with
the scope of the claim which has no such requirement. Accord Ans. 34
(“Claim 6 thus recites the second portion is configured to be arranged in an
ear canal of the user, not that the entirety of the second portion[’]s structure
fits within the ear canal as argued by the Appellant.”) (emphasis added).
In any event, we also see no error in the Examiner’s alternative
mapping of the “second portion” to solely auxiliary device 440 as articulated
in the adopted rejection (see Ans. 9-10) as noted previously. Therefore, to
the extent that the Examiner erred in articulating different mappings for the
recited “second portion” at different pages of the Answer, we deem such an
error harmless on this record.
Nor do we see error in the Examiner’s finding that Meskens’
“coupling element,” namely connector 170, (1) at least partially couples the
identified first and second portions, and (2) includes an electrically
conducting element including a conductive outer body 171 and two
electrically conductive receptacles 173. Ans. 10. Notably, the Examiner
finds that these two receptacles are “wires” for transmitting the signal to the
output transducer, and that these wires are shielded by a “shield element,”
namely the outer body 171 of connector 170. Ans. 12—13.
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We see no error in these findings. First, nothing in the claim requires
a single unitary element to constitute the recited “coupling element.” Nor
must the recited “coupling element” couple the first and second portions
directly, it could do so indirectly and still satisfy the limitation. See ’863
patent, col. 5,11. 38—43 (noting that “coupling” elements together in the ’863
patent’s parlance can be direct or involve intervening elements). Therefore,
Appellant’s contention that Meskens’ connector 170 and associated
receptacles 173 are not part of a coupling element that couples the hearing
device’s first and second portions together (Reply Br. 6) is unavailing, for
this argument is not commensurate with the scope of the claim which does
not preclude the Examiner’s mapping in this regard. Moreover, Appellant’s
reliance on Meskens’ lead 430—not connector 170—in connection with the
recited coupling element (App. Br. 8 Reply Br. 5—6) is inapposite, for it is
not germane to the Examiner’s mapping connector 170 to the recited
coupling element.
We are also not persuaded of error in the Examiner’s finding that
Meskens’ connector-based coupling element 170 comprises (1) two “wires,”
namely receptacles 173, for transmitting the signal to the output transducer,
and (2) a “shield element” (outer body 171) for shielding the wires. Ans. 6,
13,38. Notably, the ’863 patent does not define the term “wire,” unlike
other terms whose concrete definitions leave no doubt as to their meaning.
See, e.g., ’863 patent, col. 1,11. 27—30 (defining “hearing device”); col. 4,11.
17—19 (defining “balun”); col. 5,11. 30-45 (defining various other terms
used in the ’863 patent).
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Therefore, we construe the term “wire” with its plain meaning in the
art, namely “[a] conductor of round, square, or rectangular section, either
bare or insulated.” See Modern Dictionary of Electronics, at 1130. To
be sure, Dr. Kiaei avers in connection with dependent claim 14 that a wire is
a thin strand or braid of an electrically conductive material, but not a rigid
hollow cylinder. See Declaration of Dr. Sayfe Kiaei, dated May 17, 2016
(“Kiaei Decl.”) Tflf 38, 52—53. Although we appreciate Dr. Kiaei’s insights
in this regard, and to the extent that they apply to the recited wires in
independent claim 6, we nevertheless see no reason why various solid or
hollow electrically-conductive structures other than thin strands or braids,
such as conductive cylinders, could not be considered “wires” under the
term’s definition in the art, particularly given the referenced hollow
cylinder’s round cross-section.
In any event, we see no error in the Examiner’s mapping Meskens’
receptacles 173 to the recited “wires.” Ans. 6, 13, 38. As explained in
Meskens’ paragraph 41, these electrically-conductive receptacles are
shielded from each other, and constitute a jack for transmitting and/or
receiving electrical signals to and from an auxiliary device 440 attached
thereto. Meskens’ electrically-conductive receptacles 173 are shown in the
partial detail view of Figure 3B reproduced below.
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Partial detail view of Meskens’ Figure 3B showing receptacles 173
As shown above, Meskens’ electrically-conductive receptacles are
cylindrical and, therefore, have a round cross-section. These conductors
with round cross-sections, then, are not only “wires” under the term’s
definition, but they also at least contribute to transmitting the signal to the
output transducer as the Examiner indicates. Ans. 13. That the Examiner
finds that these receptacles are not only equivalent to wires, but also
comprise integral wires (Ans. 38) only bolsters the propriety of the
Examiner’s findings regarding the recited wires under the term’s broadest
reasonable interpretation.
Nor are we persuaded of error in the Examiner’s finding that
Meskens’ receptacle-based wires are shielded by a “shield element,” namely
the outer body 171 of connector 170.3 Ans. 12—13, 39. As Professor
3 Notably, this mapping differs from that articulated for the shield element in
a related proceeding. See Oticon /, at 14 (interpreting Petitioner’s position
to be that Meskens’ lead 430 teaches the “electrically conducting element”
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McNair explains, because outer body 171 is formed from a conductive
material, it necessarily operates as a Faraday cage or shield that blocks
external electric fields. Declaration of Professor Bruce McNair, dated Sept.
18, 2015 (“McNair Decl.”) 1 67.
Even assuming, without deciding, that Meskens’ outer body 171 does
not shield the wires in lead 430 as Appellant contends (App. Br. 8—10; Reply
Br. 5—6) and as Dr. Kiaei avers (Kiaei Decl. 49-51), Appellant’s
argument is not germane to the Examiner’s finding that outer body 171
shields the receptacle-based wires in coupling element 170—not lead 430.
See Ans. 13, 39.
We reach this conclusion despite Dr. Kiaei’s statement that the shield
element is disclosed as a wire that extends along the entire length of the two
wires that carry audio signals to the transducer. Kiaei Decl. 130. This
particular shield element is shown in Figure 3 a of ’863 patent, where
electrically conducting element 24 forms a shield wire of coupling element
16. ’863 patent, col. 7,11. 23—25.
Although this disclosure informs our understanding of a particular
embodiment of a shield element, the shield element of claim 6 is not so
limited, nor will we import this embodiment into the claim. Accord Phillips
v. AWHCorp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (enbanc) (“[Although
in claim 6, and Meskens’ “optional wire” in Figure 6B discloses a “shield
element”). But see Oticon II, at 6 (finding unpersuasive Petitioner’s newly-
raised arguments on rehearing that Meskens’ outer body 171 shields
receptacles 173 because the Petition did not clearly identify the recited
“shield element” nor explain this particular shielding function of Meskens’
outer body).
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the specification often describes very specific embodiments of the invention,
we have repeatedly warned against confining the claims to those
embodiments. . . . [CJlaims may embrace different subject matter than is
illustrated in the specific embodiments in the specification.”) (citations and
internal quotation marks omitted). That dependent claim 26 further recites
that the shield element shields the wires’ entire length only underscores the
fact that the shield element of claim 6 is not so limited under claim
differentiation principles; otherwise, claim 26 would be superfluous to claim
6. See Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343, 1351
(Fed. Cir. 2005). The Examiner’s point in this regard (Ans. 39) is well
taken.
We recognize, however, that the broadest reasonable interpretation in
light of the Specification is not whether the Specification precludes some
broad reading of the claim term adopted by the Examiner. See In re Smith
Inti, Inc., 871 F.3d 1375, 1382—83 (Fed. Cir. 2017). Nor is the broadest
reasonable interpretation simply one that is not inconsistent with the
Specification. Id. at 1383. Rather, it is an interpretation that corresponds
with what and how the inventor describes his invention in the
Specification— that is, an interpretation consistent with the Specification.
Id. (citing In re Suitco Surface, Inc., 603 F.3d 1255, 1259—60 (Fed. Cir.
2010)).
On this record, we find the Examiner’s interpretation of the recited
shield element is reasonably consistent with the Specification at least to the
extent that this shield element is an electrically conducting element that
electrically shields wires. See Ans. 13, 39 (citing McNair Deck 1 67).
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Appellant’s arguments regarding the recited shield element (App. Br. 8—10;
Reply Br. 5—6) are, therefore, unavailing because they are not commensurate
with the scope of the claim.
In addition, Meskens’ transceiver 120 (“wireless interface”) is
coupled to the identified “shield element” (outer body 171) via impedance
matching circuit and high-pass filter 130 as shown in Figure 3B. As the
Examiner acknowledges, however, Meskens does not teach using a balun to
effect this coupling. See Ans. 15.
But as Professor McNair explains, Meskens does not explicitly
disclose the transceiver 120’s specific operation, and because baluns are well
known components that connect between balanced and unbalanced
terminals, ordinarily skilled artisans would have included a balun to process
balanced and unbalanced signals. McNair Decl. 172. In fact, the ’863
patent acknowledges that baluns are known devices that convert between
balanced and unbalanced electrical signals. ’863 patent, col. 4,11. 17—20.
Notably, Meskens’ antenna 171 (a numeral that also identifies the
conductive outer body) may operate either as (1) a dipole with a balanced
transmission line, or (2) a monopole with an unbalanced transmission line.
McNair Decl. 134. As the Examiner explains, a balun would be required to
interface an unbalanced wireless interface (transceiver 120) and a balanced
dipole antenna 171. Ans. 40 (citing McNair Decl. Tflf 34—35).
We see no error in this reasoning. To be sure, Dr. Kiaei notes that
Meskens’ antenna 171 is an unbalanced monopole antenna driven by an
unbalanced RF transceiver 120. Kiaei Decl. 1 55. Nevertheless, ordinarily
skilled artisans would understand that Meskens’ antenna 171 is not limited
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to monopoles, but rather can operate as a dipole, among other antennas. See
Meskens 146. Although Meskens does not further explain how antenna 171
operates as a dipole as Dr. Kiaei indicates (Kiaei Deck 1 55), ordinarily
skilled artisans would nevertheless understand from Meskens’ paragraph 46
that a dipole antenna would have been at least an obvious variation.
We reach this conclusion despite Dr. Kiaei’s view that because
Meskens lacks sufficient structure to implement a dipole, namely by
disclosing a single conductor, ordinarily skilled artisans would ostensibly
lack sufficient information to implement a dipole in Meskens’ device or
have no reason to do so. Kiaei Decl. 56—57. Although we appreciate Dr.
Kiaei’s insights in this regard, they are nonetheless uncorroborated by
factual evidence on this record, thus reducing their probative value.
Nevertheless, even assuming, without deciding, that Meskens does not
enable using a dipole antenna in lieu of, or in addition to, a monopole
antenna as Appellant contends (App. Br. 12), it is well settled that a non­
enabling disclosure is prior art for all that it teaches in obviousness
determinations, as is the case here. See In re Antor Media Corp., 689 F.3d
1282, 1292 (Fed. Cir. 2012) (citing Symbol Techs. Inc. v. Opticon Inc., 935
F.2d 1569, 1578 (Fed. Cir. 1991)). To be sure, the prior art must enable
skilled artisans to make and use the claimed invention to render that
invention obvious. In re Kumar, 418 F.3d 1361, 1368—69 (Fed. Cir. 2005).
But this requirement is not based solely on the prior art references
themselves, but also those references considered together with the
knowledge of ordinarily skilled artisans. In re Paulsen, 30 F.3d 1475, 1480—
81 (Fed. Cir. 1994) (citations and internal quotation marks omitted). Cited
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references, therefore, do not have to explain every detail to render a claimed
invention obvious because the references speak to those skilled in the art.
Id. at 1480.
So even assuming, without deciding, that a balun is unnecessary for
interfacing Meskens’ unbalanced transceiver with an unbalanced monopole
antenna as Dr. Kiaei declares (Kiaei Deck 1 59), the Examiner’s rejection is
not based on interfacing Meskens’ transceiver with an unbalanced monopole
antenna, but rather a balanced dipole antenna. See Ans. 40 (citing McNair
Deck H34—35). In this scenario, ordinarily skilled artisans would have
known to use a balun for interfacing an unbalanced transceiver with a
balanced dipole antenna to, among other things, avoid various operational
problems resulting from the lack of a balun, including less efficient
coupling, increased likelihood of losing signals, unpredictable antenna
patterns, and intensified signal interference. See Ans. 14 (citing McNair
Deck 1137—38). In short, using a balun in Meskens as the Examiner
proposes uses prior art elements predictably according to their established
functions to yield a predictable result. See KSR Int 7 Co. v. Teleflex, Inc.,
550 U.S. 398, 417 (2007). Therefore, the Examiner’s proposed combination
is supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion.
Accordingly, we are not persuaded that the Examiner erred in
rejecting claim 6, and claims 7, 8, 27—29, 31—33, and 36-43 not argued
separately with particularity.
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Claim 14
We also sustain the Examiner’s rejection of claim 14 reciting that the
shield element is a conductive wire operatively connected to the wireless
interface. Despite Appellant’s arguments to the contrary (App. Br. 14—15;
Reply Br. 7—8), we see no error in the Examiner’s finding in the rejection
that Meskens’ outer body 1714 is a conductive “wire” operatively connected
to the wireless interface, namely transceiver 120. Ans. 19 (citing Meskens
142).
As noted previously, the term “wire” is defined quite broadly in the
art as “[a] conductor of round, square, or rectangular section, either bare or
insulated.” See Modern Dictionary of Electronics, at 1130. To be sure,
Dr. Kiaei avers that a wire is a thin strand or braid of an electrically
conductive material, but not a rigid hollow cylinder. See Kiaei Deck 1138,
52—53. Although we appreciate Dr. Kiaei’s insights in this regard, we
nevertheless see no reason why various solid or hollow electrically-
conductive structures other than thin strands or braids, such as conductive
cylinders, could not be considered “wires” under the term’s definition in the
art, particularly given the referenced hollow cylinder’s round cross-section.
On this record, then, we see no error in the Examiner’s mapping
Meskens’ conductive outer body 171 to the recited “wire” under the term’s
4 Although the Examiner refers to numeral 71 as corresponding to Meskens’
outer body (Ans. 19), we nonetheless presume that the Examiner intended to
refer to the outer body by its correct numeral 171, and treat the Examiner’s
error in this regard as harmless. See, e.g., Meskens 141 (referring to
conductive outer body 171). Accord App. Br. 14 (noting that the Examiner
finds that outer body 171 corresponds to the claimed shield element); see
also Reply Br. 7 (same).
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broadest, reasonable interpretation. Ans. 19. As explained in Meskens’
paragraph 41, these electrically-conductive receptacles are shielded from
each other, and constitute a jack for transmitting and/or receiving electrical
signals to and from an auxiliary device 440 attached thereto. Meskens’ outer
body 171 is shown in the partial detail view of Figure 3B reproduced below.
Partial detail view of Meskens’ Figure 3B showing outer body 171
As shown above, Meskens’ outer body 171 is cylindrical and,
therefore, has a round cross section. This conductor with a round cross
section, then, is not only a “wire” under the term’s definition, but it is also
operatively connected to the wireless interface (transceiver 120) via high
pass filter 130 as the Examiner indicates. Ans. 19. Appellant’s arguments
to the contrary (App. Br. 14—15; Reply Br. 7—8) are unavailing and not
commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 14.
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Claim 26
We also sustain the Examiner’s rejection of claim 26 reciting that the
shield element shields the entire length of said wires, namely the two wires
of the coupling element for transmitting the signal to the output transducer.
Despite Appellant’s arguments to the contrary (App. Br. 15; Reply Br. 8—9),
Appellant does not persuasively rebut the Examiner’s finding that Meskens’
outer body 171 shields the entire length of the wires inside the connector.
Ans. 20. Our emphasis underscores the Examiner’s finding that the entire
length of the wires inside connector 170, namely receptacles 173, is shielded
by the outer body 171. See id.
This finding, consistent with the Examiner’s mapping of the recited
wires to Meskens’ receptacles 173 as noted previously, has not been
persuasively rebutted on this record. As Professor McNair explains, because
outer body 171 is formed from a conductive material, it necessarily operates
as a Faraday cage or shield that blocks external electric fields. McNair Deck
167.
Even assuming, without deciding, that Meskens’ outer body 171 does
not shield the wires in lead 430 as Appellant contends (App. Br. 15; Reply
Br. 8—9) and as Dr. Kiaei avers (Kiaei Decl. H 49-51), Appellant’s
argument is not germane to the Examiner’s finding that outer body 171
shields the entire length of the wires inside the connector 170—not lead 430.
See Ans. 20, 42.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 26.
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Claim 30
We also sustain the Examiner’s rejection of claim 30 reciting that the
shield element extends continuously from the first portion to the second
portion. Despite Appellant’s arguments to the contrary (App. Br. 16; Reply
Br. 9—10), we see no error in the Examiner’s finding that Meskens’ shield
element (outer body 171) extends continuously from the first portion (BTE
100) to the second portion (removable part 300) because the connector 170
protrudes from the identified first portion into the second portion as shown
in Figure 7. See Ans. 20 (citing Meskens 140).
To be sure, only auxiliary device 440 of the removable part 300 that is
mapped to the “second portion” is configured to be arranged in an ear canal.
But as noted previously, the Examiner articulated alternate mappings for the
recited “second portion,” namely either (1) auxiliary device 440 alone; or (2)
removable part 300 comprising auxiliary connector 410, impedance
matching circuit 420, lead 430, and auxiliary device 440 as shown in
Meskens’ Figure 1. Compare Ans. 5 (“[T]he second portion in its entirety is
the removable part 300 . . .”) with Ans. 9 (mapping auxiliary device 440 to
the recited second portion).
We recognize that Meskens’ shield element (outer body 171) does not
extend continuously from the first portion (BTE 100) to the second portion
under one mapping of the recited second portion articulated by the
Examiner, namely Meskens’ auxiliary device 440. Nevertheless, outer body
171 extends continuously from the identified first portion to the second
portion under the Examiner’s alternative mapping of the recited second
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portion, namely Meskens’ removable part 300. And it is this alternative
interpretation on which the Examiner relies in rejecting claim 30. See Ans.
20.
As noted previously, because one of the structures of Meskens’
“second portion” under this alternative mapping is configured to be arranged
in an ear canal, namely auxiliary device 440, then at least part of the second
portion is configured to be arranged in an ear canal. To the extent that
Appellant contends that the entire second portion must be configured to be
arranged in an ear canal (see App. Br. 16; Reply Br. 9—10), such arguments
are not commensurate with the scope of the claim which has no such
requirement. Accord Ans. 34 (“Claim 6 thus recites the second portion is
configured to be arranged in an ear canal of the user, not that the entirety of
the second portion[’]s structure fits within the ear canal as argued by the
Appellant”) (emphasis added).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 30.
Claim 34
We also sustain the Examiner’s rejection of claim 34 reciting that the
coupling element extends continuously from the first portion to the second
portion. Despite Appellant’s arguments to the contrary (App. Br. 16; Reply
Br. 9—10), we see no error in the Examiner’s finding that Meskens’ coupling
element (connector 170) extends continuously from the first portion (BTE
100) to the second portion (removable part 300) for the reasons noted
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previously in connection with claim 30 and those indicated by the Examiner.
See Ans. 21.
Claim 35
We also sustain the Examiner’s rejection of claim 35 reciting that the
two wires and shield element extend continuously from the first portion to
the second portion. Despite Appellant’s arguments to the contrary (App. Br.
17; Reply Br. 9—10), we see no error in the Examiner’s finding that
Meskens’ two wires (receptacles 173) and shield element (outer body 171)
extend continuously from the first portion (BTE 100) to the second portion
(removable part 300) for the reasons noted previously in connection with
claim 30 and those indicated by the Examiner. See Ans. 21.
Claim 44
We also sustain the Examiner’s rejection of claim 44 reciting that (1)
the first portion is arranged in a BTE portion configured to be placed behind
the user’s external ear, (2) the two wires and shield element extend
continuously from the first portion to the second portion, and (3) the two
wires for transmitting the signal to the output transducer are balanced wires.
Despite Appellant’s arguments to the contrary (App. Br. 17—18; Reply Br.
9—10), we see no error in the Examiner’s finding, among other things, that
Meskens’ two wires (receptacles 173) and shield element (outer body 171)
extend continuously from the first portion (BTE 100) to the second portion
(removable part 300) for the reasons noted previously in connection with
claim 30 and those indicated by the Examiner. See Ans. 22.
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THE REJECTION OVER MESKENS AND YOSHINO
Because our decision is dispositive regarding patentability of all
appealed claims based on the foregoing prior art references, we need not
reach the merits of the Examiner’s decision to also reject claims 6—8, 14,
and 26-44 as obvious over Meskens and Yoshino. Ans. 23—33. See Beloit
Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (approving ITC’s
determination based on a single dispositive issue, and not reaching other
issues not decided by the lower tribunal).
THE INDEFINITENESS REJECTION
We do not sustain the Examiner’s indefiniteness rejection of claim 44.
Final Act. 20. Notably, the Examiner’s Answer did not include this rejection
(unlike the other rejections), let alone address Appellant’s arguments in this
regard. Accord Reply Br. 1 n.l (noting this omission).
Nevertheless, the Examiner indicates on page 2 of the Answer that
every ground of rejection in the Final Office Action is maintained unless
listed under a “withdrawn rejections” heading in the Answer—a header that
is lacking here. So despite the Examiner’s statement that “[t]he following
ground(s) of rejection are applicable to the appealed claims” (Ans. 2) where
these applicable grounds are limited to the two obviousness rejections (see
Ans. 2-43), we nonetheless presume that the Examiner intended also to
maintain the indefiniteness rejection notwithstanding the Answer’s silence in
this regard.
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In the rejection, the Examiner finds that there is no antecedent basis
for “the user’s external ear” in dependent claim 44 in light of independent
claim 6’s reciting the term “to be arranged in an ear canal of said user.”
Final Act. 20. But as Appellant explains, although a user may have two
external ears, the scope of the term “behind the user’s external ear” is
reasonably ascertainable by ordinarily skilled artisans, and that “the user’s
external ear” refers to the external ear of the recited “said user.” App. Br.
22-23.
We agree. That the Examiner failed to respond to these arguments as
Appellant indicates (Reply Br. 1 n.l) only further undermines the propriety
of the Examiner’s indefiniteness rejection.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 44 as indefinite.
CONCLUSION
The Examiner erred in rejecting claim 44 under § 112, second
paragraph.
The Examiner did not err in rejecting claims 6—8, 14, and 26-44 as
obvious over Meskens and APA under § 103.
We do not reach the Examiner’s other obviousness rejection of claims
6—8, 14, and 26-44 over Meskens and Yoshino.
DECISION
The Examiner’s decision to reject claims 6—8, 14, and 26-44 is
affirmed.
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Because the rejection of each appealed claim is affirmed on at least
one of the grounds specified in the Office Action from which the appeal was
taken, the Examiner’s decision to reject claims 6—8, 14, and 26-44 is
affirmed. See 37 C.F.R. § 41.50(a)(1).
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED
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