Ex Parte Barwacz

Board of Patent Appeals and Interferences

Jun 22, 2012

10282280 (B.P.A.I. Jun. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT FRANCISZEK BARWACZ
____________

Appeal 2011-012900
Application 10/282,280
Technology Center 2800
____________

Before JOSEPH L. DIXON, THU A. DANG, and
JAMES R. HUGHES, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-012900
Application 10/282,280

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-12 and 15-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a hearing protective device including two
attenuating elements connected by a knotted flexible elongated member.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A hearing protective device, comprising:

a first sound attenuating element;

a second sound attenuating element;

a flexible elongated member connecting the first sound
attenuating element and the second sound attenuating element,
the flexible elongated member being in the form of a bundle,
and

a knot formed in the flexible elongated member, the knot being
a slip knot that maintains the flexible elongated member in the
bundle, wherein the knot is untied and the bundle unraveled by
moving the first and second sound attenuating elements in a
direction away from each other.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Johnston

Powers

Knauer

US 2,459,530

US 4,253,452

WO 02/43633 A1
Jan. 18, 1949

Mar. 3, 1981

June 6, 2002
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Application 10/282,280

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Applicant’s Admitted Prior Art (“AAPA”)

REJECTIONS1
Claims 1-6, 10-12, 15, 16, and 18-20 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over AAPA and Johnston.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA, Johnston, and Knauer.
Claims 9 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA, Johnston, and Powers.

ANALYSIS
Appellant contends that the fact that others have used various
techniques different from the claimed technique for maintaining corded
earplugs in a bundle shows that one of ordinary skill in the art would not
have appreciated the benefits of the claimed invention (App. Br. 4-5).
Appellant also contends that the claimed invention is nonobvious because
slipknots have been known for a long time but have not been used to
maintain corded earplugs in a bundle (App. Br. 5-6). Appellant further
argues that there is no teaching in AAPA or Johnston on how to use
Johnston’s knot with a bundle of corded earplugs (App. Br. 6-8).
The plain meaning of the claim 1 term “bundle” is “[a] number of
things bound together, as by a cord or envelope, into a mass or package
convenient for handling or conveyance.”2 Accordingly, the broadest

1 We list all the outstanding rejections based on the Final Rejection (Final
Rej. 2-7).
2 WEBSTER’S REVISED UNABRIDGED DICTIONARY 192 (1913).
Appeal 2011-012900
Application 10/282,280

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reasonable interpretation of “the flexible elongated member being in the
form of a bundle,” includes a flexible elongated member folded over at least
once to form two or more lengths of the member which are then bound
together. Based on this construction, Johnston shows a bundle—the
doubled-over rope forming a loop around the bag of produce—which is
bound by tying a variety of slipknot in the rope so as to maintain the bundle
(Johnston Figures 2-5).
Appellant compares Figure 5 of the present application to Johnston’s
Figures 2-5 in attempt to show that Johnston’s slipknot could not be used
with Appellant’s particular bundle of corded earplugs (see App. Br. 7).
However, the focus of examination is on the claims. See In re Hiniker, 150
F.3d 1362, 1369 (Fed. Cir. 1998) (“[T]he name of the game is the claim.”);
see also Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875
(Fed. Cir. 2004) (“[A] particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”). Claim 1 is not limited by the specific bundle and
knot shown in Appellant’s Figure 5. Therefore, we are not persuaded of
error in the Examiner’s finding (see Ans. 5-6; 8-9) that it would have been
obvious to use Johnston’s slipknot in a bundle of corded earplugs.
Moreover, Appellant’s secondary considerations—(1) various other
techniques have been used, and (2) slipknots have been known for a long
time—are not persuasive of nonobviousness. Appellant has not provided
sufficient evidence showing that the advantages of the claimed technique,
that is, using a slipknot to bundle corded earplugs, outweigh the advantages
of other techniques, for example, AAPA’s Figures 2-4. Merely claiming a
new and different technique does not necessarily prove its benefit over other
Appeal 2011-012900
Application 10/282,280

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methods. For instance, a slipknot technique for bundling corded earplugs
could be easier for an end-user to unravel, but could be prohibitively
complicated to manufacture. In such case, even if slipknots were known for
a long time, one would not apply slipknots to corded earplugs. Thus,
without more evidence, the absence of the claimed technique in the prior art
of record is not probative of nonobviousness in this case.
Additionally, claim 1 is directed to an apparatus, namely, a “hearing
protective device.” However, the claim 1 language “maintains the flexible
elongated member in the bundle” and “the knot is untied and the bundle
unraveled by moving the first and second sound attenuating elements in a
direction away from each other” recites functional limitations. While an
applicant may claim an apparatus by reciting either structural or functional
limitations, if the prior art is capable of performing the claimed functions,
the claimed apparatus is not patentable over the prior art. See In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Here, the prior art
includes corded earplugs, i.e., a “hearing protective device,” for example,
AAPA’s Figure 4. Appellant has not shown that the prior art earplugs
cannot be tied and untied in the manner claimed.
We therefore are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2-12 and 15-20 not separately argued. Nor has
Appellant show that the prior art hearing protective device functions
differently than the AAPA’s Figure 4.

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CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-12 and 15-20 under 35
U.S.C. § 103(a).

DECISION
For the above reasons, we affirm the rejections of claims 1-12 and 15-
20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED

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