Ex Parte BERG

Patent Trials and Appeals Board

May 8, 2019

14633813 - (D) (P.T.A.B. May. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/633,813 02/27/2015
2292 7590 05/10/2019
BIRCH STEW ART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
FALLS CHURCH, VA 22042-1248
FIRST NAMED INVENTOR
Richard Steenfeldt BERG
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5060-0104PUS3 7038
EXAMINER
LE,HUYEND
ART UNIT PAPER NUMBER
2655
NOTIFICATION DATE DELIVERY MODE
05/10/2019 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD STEENFELDT BERG 1
Appeal2018-005840
Application 14/633,813
Technology Center 2600
Before ROBERT E. NAPPI, ERIC S. FRAHM, and
MICHAEL T. CYGAN, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's Non-Final Rejection of claims 1 and 13 through 25, which
constitute all the claims pending in this application. We have jurisdiction
over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is Freebit AS. App. Br.
1.
Appeal2018-005840
Application 14/633,813
INVENTION
The invention is directed to "[a]n ear unit for stably fitting in an ear
includes a first surface facing inwardly toward the ear, a second, opposite
surface facing outwardly from the ear and an outer circumferential surface
formed between the first and second surfaces." Abstract.
Claim 1 is illustrative of the invention and is reproduced below.
1. An ear unit for stably fitting in an ear having an
antihelix, a ems of helix, a tragus and a concha surrounded by
the antihelix, the ear unit comprising a body and an ear
interface, the ear interface extending from the body and
comprising a C-shape member,
wherein the body comprises a housing for a hearing
element and an outlet for said hearing element,
wherein the C-shape member is configured as a
decremental curve corresponding to the antihelix, said
decremental curve adapting a first radius of curvature along the
upper inner part of the antihelix and a second radius of
curvature along the lower inner part of the antihelix, and
wherein the first radius of curvature is greater than the
second radius of curvature.
REJECTIONS AT ISSUE2
The Examiner has rejected claims 1 and 13 through 25 under
35 U.S.C. § 112(a) as failing to comply with the written description
requirement. 3 Non-Final Act. 3--4; Answer 3-5.
2 Throughout this Decision, we refer to the Appeal Brief ("App. Br.") filed
November 1, 2017, the Non-Final Office Action ("Non-Final Act.") mailed
April 20, 2017, and the Examiner's Answer ("Ans.") mailed February 22,
2018.
3 We note that the rejection under 35 U.S.C. § 112(a), is accompanied by an
objection of the Specification under 35 U.S.C. § 132(a) for introducing new
matter. Non-Final Act 2; Answer 2.
2
Appeal2018-005840
Application 14/633,813
The Examiner has rejected claims 1, 13, 14, 16, 17, 19, 20, and 24
under 35 U.S.C. § 112(b) as being indefinite. Non-Final Act. 5; Answer 5-
6.
The Examiner has rejected claims 1, 13, 15, 18, 22, and 23 under
35 U.S.C. § I02(b) as being anticipated by Dyer et al. (US 6,688,421 B2,
issued Feb. 10, 2004) (hereinafter "Dyer"). Non-Final Act. 6; Answer 6-7.
The Examiner has rejected claims 1, 13, 15, 18, 22, and 23 under
35 U.S.C. § I03(a) as being unpatentable over Dyer. Non-Final Act. 7-8;
Answer 7-9.
The Examiner has rejected claims 1, 13, 15, 18, 22, and 23 under
35 U.S.C. § I03(a) as being unpatentable over Smith et al. (US
2005/0008180 Al, pub. Jan. 13, 2005) (hereinafter "Smith '180") and Smith
et al. (US 2006/0067524 Al, pub. Mar. 30, 2006) (hereinafter "Smith
'524"). Non-Final Act. 8-9; Answer 9-10.
ANALYSIS
We have reviewed Appellant's arguments in the Briefs, the
Examiner's rejection, and the Examiner's response to Appellant's
arguments. Appellant's arguments have not persuaded us of error in the
Examiner's (i) written description rejection of claims 1 and 13 through 25;
(ii) anticipation rejection; or (iii) obviousness rejection based upon Dyer.
Appellant's arguments have persuaded us of error in the Examiner's
obviousness rejection based Smith' 180 and Smith '524.
3
Appeal2018-005840
Application 14/633,813
Rejection under 35 U.S.C. § 112(a) / Objection under 35 U.S.C.
§ 132(a)
As an initial matter, the board typically does not hear arguments and
render decisions on petitionable issues, however when there is a new matter
objection and a rejection as both the claims and the Specification recite the
new matter, the issue becomes appealable. See Manual of Patent Examining
Procedure (MPEP) § 2163. 06 (II). As there are several new matter/written
description issues, we will address them as they relate to the claims.
Independent Claims 1 and 22
With respect to Independent claims 1 and 22, the Examiner rejects the
claims as lacking written description as the original Specification does not
describe:
the ear unit comprising a body and an ear interface, the ear
interface extending from the body and comprising a C-shape
member, wherein the body comprises a housing for a hearing
element and an outlet for the hearing element, wherein the C-
shape member is configured as a decremental curve
corresponding to the antihelix, the decremental curve adapting a
first radius of curvature along the upper inner part of the
antihelix and a second radius of curvature along the lower inner
part of the antihelix, and wherein the first radius of curvature is
greater than the second radius of curvature as claimed in claims
1 and 22.
Answer 3.
The Examiner notes that these features were added by an amendment
to the Specification filed in this application on February 10, 2016, and are
not supported by the parent applications. Answer 10-11. Further, the
Examiner identifies that the amendments made to paragraphs 24, 25, and 27,
4
Appeal2018-005840
Application 14/633,813
were not entered into the Specification as they introduce new matter.
Answer 10-11.
Appellant argues the rejection is in error as the originally filed
disclosure supports the claims. App. Br. 5-7. 4 Specifically, Appellant
argues "[a]s plainly shown in the drawings and clearly understood by the
person of ordinary skill, since the detrimental curve 9 is not part of a circle,
there necessarily are different radii of curvatures at different points or parts
along the detrimental curve." App. Br. 6-7. Further, Appellant asserts that
Figure 5 shows that the radius of curvature along the upper inner part of the
antihelix is greater than the radius near the lower inner part of the antihelix.
App. Br. 7.
Appellant's arguments have not persuaded us of error in the
Examiner's rejection. We concur with Appellant that the originally filed
disclosure identifies the C-shaped curve is a detrimental curve, and thus has
many radiuses, see, e.g., para. 25 of Appellant's Specification filed February
27, 2015. However, we disagree with Appellant's assertion that Figure 5
demonstrates that Appellant possessed the limitation directed to the radius of
curvature along the upper inner part of the antihelix being greater than the
radius near the lower inner part of the antihelix. Appellant's originally filed
Specification does not describe such a relationship nor is this relationship
apparent to us from the drawings. Further, "it is well established that patent
drawings do not define the precise proportions of the elements and may not
be relied on to show particular sizes if the specification is completely silent
4 Appellant's arguments cite to elements 40-43 of the figures which were
depicted in the drawings of the originally filed Specification and the parent
applications, but not designated with these numbers.
5
Appeal2018-005840
Application 14/633,813
on the issue." Hockerson-Halberstadt, Inc. v. Avia Group Int'!., Inc., 222
F.3d 951, 956 (Fed. Cir. 2000). Accordingly, we sustain the Examiner's
rejection of independent claims 1, 22, and dependent claims 13 through 21,
and 23 through 25 under 35 U.S.C. § 112(a) as failing to comply with the
written description requirement.
Dependent claims 13, 14, 23, and 24
The Examiner has additionally rejected the claim limitations directed
to the C-shaped member having decremental curve having a third radius,
recited in claims 13, 14, 23, and 24, as lacking written description. Answer
4, 11-12.
We disagree with the Examiner as to this additional rejection of
claims 13, 14, 23, and 24, as discussed above the originally filed disclosure
identifies the C-shaped curve is a detrimental curve, and thus has many
radiuses. Accordingly, we do not sustain this additional rejection of claims
13, 14, 23, and 24, as lacking written description.
Dependent claims 15 through 20
The Examiner has additionally rejected the claim limitations directed
to the C-shaped member having an oblong cross section, recited in claims 15
through 20, as lacking written description. Answer 4--5, 11-12.
Appellant argues that the Specification demonstrates possession of the
oblong limitations as:
the oblong cross sections, as shown in Fig. 4, the ends 5 and 8
are clearly oblong, one having a dimension normal greater than
the dimension parallel to the inner part of the antihelix, and the
other having a dimension normal smaller than the dimension
parallel to the inner part of the antihelix.
App. Br. 7.
6
Appeal2018-005840
Application 14/633,813
Appellant's arguments have not persuaded us of error in the
Examiner's rejection with respect to the oblong limitations of dependent
claims 15 through 20. We disagree with Appellant's assertion that Figure 4
demonstrates that Appellant possessed the limitations directed to the C-
shaped member being oblong in cross section, or that the limitations directed
to the orientation and dimensions of the oblong cross section relative to the
antihelix. Appellant has not identified any paragraphs of the originally filed
disclosure which discuss an oblong cross section, nor do we find any.
Further, Figure 4 does not show a cross section of the C-shaped member and
as such it is not apparent to us from viewing Figure 4 that the cross section is
oblong. Accordingly, we sustain the Examiner's additional rejection of
dependent claims 15 through 20 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
Dependent claims 21 and 25
The Examiner has additionally rejected the claim limitations directed
to the ear interface being removably attached to the body, recited in claims
21 and 25, as lacking written description. Answer 5, 13.
Appellant argues that support for this limitation of claims 21 and 25 is
provided in paragraph 6 of the originally filed disclosure which states:
"[t]hus, using the outer shape of the ear for attachment of an ear
unit only 2 or 3 different sizes will accomplish said
differences." Appellant further notes that the focus of the parent
application is the ear interface regardless of the body attached
thereon, while the present application focuses on the ear unit in
a combination of the ear interface and body.
App. Br. 8.
We agree with the Examiner and disagree with Appellant. The cited
paragraph of the originally filed disclosure merely states that the different
7
Appeal2018-005840
Application 14/633,813
sizes of the ear unit are needed to accommodate different users and does not
identify the body is removable attached to ear unit. Accordingly, we also
sustain the Examiner's additional rejection of dependent claims 21 and 25
under 35 U.S.C. § 112(a) as failing to comply with the written description
requirement.
Rejection under 35 U.S.C. § 112(b)
Appellant's arguments directed to the Examiner's rejection of claims
1, 13, 14, 16, 17, 19, 20, and 24 under 35 U.S.C. § 112(b), Appellant argues
that rejection is in error for the reasons discussed with respect to the
rejection of the claims under 35 U.S.C. § 112(b). App. Br. 9.
The Examiner's rejection of claims 1, and 13 under 35 U.S.C.
§ 112 (b) states that the terms upper inner part of the antihelix, lower inner
part of the antihelix and middle inner part of the antihelix, lack antecedent
basis and are indefinite as lacking sufficient antecedent basis. Non-Final
Act. 5. We disagree with the Examiner. To the extent that the first clause of
the claim merely identifies "an antihelix," the further limitations are merely
identifying specific parts of the antihelix, which is part of the human ear, and
as such, would be clearly understood by one of ordinary skill in the art.
Accordingly, we do not sustain the rejection of claims 1, and 13 under
35 U.S.C. § 112(b).
With respect to claims 14 and 24, the Examiner states that it is unclear
what the limitation directed to the further curvature is referring to. We
disagree. Appellant has identified this feature as equating to the curve 21 in
Figure 4. See App. Br. 7. We consider this claim limitation to clearly define
the relationship between the further curvature and the decremental curve
8
Appeal2018-005840
Application 14/633,813
defined in claims 1 and 13. Accordingly, we do not sustain the rejection of
claims 14 and 24 under 35 U.S.C. § 112(b).
With respect to claims 16, 17, 19, and 20, the Examiner states that it is
unclear what the limitation directed to the oblong cross-section or the
orientation of the oblong cross-section is referring to. As discussed above,
Appellant's Specification does not demonstrate Appellant possessed or
disclosed these features. As such, we cannot interpreted the limitations in
light of the Specification, and have no basis to ascertain the scope of this
limitation. Accordingly, we sustain the rejection of claims 16, 17, 19, and
20 under 35 U.S.C. § 112(b).
Rejection under 35 U.S.C. § 102(b)
Independent claims 1 and 22
Appellant argues that each of the independent claims recites the
features of a C-shaped member with a detrimental curve corresponding to
the antihelix, where the curve adapts a first radius along the upper inner part
of the antihelix and a second radius along the lower inner part of the
antihelix, which is not taught by Dyer. App. Br. 9-11. Appellant argues
that the "outermost surface of the [ ear mold] of Dyer is not shaped as a
decremental curve conforming to the inner part of the antihelix." App. Br.
10 (emphasis omitted). Appellant provides a marked up version of Dyer's
Figure 1 to show that there is a gap between portions of the antihelix and
portions of the earpiece. App. Br. 10.
The Examiner responds to Appellant's argument stating:
Dyer shows the ear unit (101, 102) having a member that is
configured as a decremental curve corresponding to the
antihelix of the ear, wherein the decremental curve adapts a first
radius curvature along the upper inner part of the antihelix and
9
Appeal2018-005840
Application 14/633,813
a second radius curvature along the lower inner part of the
antihelix. As shown in figures 1, 2, 3 and 4, the first radius
curvature along the upper inner part of the antihelix is greater
than the second radius curvature along the lower inner part of
the antihelix
Answer 14--15.
We concur with the Examiner, and are not persuaded of error by the
Examiner's rejection. Appellant's arguments, which show Dyer's device
having a space between the ear mold and the antihelix, do not differentiate
the claims from Dyer. We do not find that either of independent claims 1
and 22 require the C-shaped member (equated to Dyer's ear mold) to be in
contact with the antihelix across the entire detrimental curve, rather only that
one part adapt to the upper inner part and another part to the lower inner
radius, which Dyer depicts in Figure 1. We also note the claims generally
recite a radius in the vicinity of the upper antihelix being greater than a
radius in the lower antihelix but do not define a specific location the radiuses
are measured. Further, we additionally note that Dyer teaches the ear mold
may have subtle changes in curvature and change from a convex to a
concave shape, thus having varying radiuses. See col. 3 11. 45--48, 11. 63---65
and Figs. 1-3. The disclosure and figures of Dyer show that as the ear mold
goes from convex to concave and convex again, the portion of the ear mold
adjacent the lower antihelix has a radius which is smaller than the radius of
the ear mold adjacent the upper antihelix. See, e.g., Fig. 2. Accordingly,
Appellant's arguments have not persuaded us of error in the Examiner's
rejection of independent claims 1 and 22 and we sustain the Examiner's
anticipation rejection of these claims.
Dependent claims 13 and 23
10
Appeal2018-005840
Application 14/633,813
Appellant argues that each of these dependent recites the features of
having a third radius of curvature, and similar to the arguments with respect
to claim 1, asserts the rejection is in error, as a space exists between the ear
mold and antihelix in Dyer's device. App. Br. 11.
We are not persuaded of error by Appellant's arguments, which show
Dyer's device having a space between the ear mold and the antihelix, as
differentiating the claims from Dyer. Similar to our discussion above, we do
not find that either of claims 13 or 23 require the C-shaped member ( equated
to Dyer's ear mold) to be in contact with the antihelix across the entire
detrimental curve. Accordingly, Appellant's arguments have not persuaded
us of error in the Examiner's rejection of dependent claims 13 and 23, and
we sustain the Examiner's anticipation rejection these claims.
Dependent claims 15 and 18
Appellant argues that each of these dependent recites the features of
having a first radius of curvature having an oblong cross section which is not
taught by Dyer. App. Br. 11-12.
The Examiner responds finding that the upper portion of the ear mold,
items 101, 102, and 103 or is shown to be oblong in Figures 1 through 4.
Answer 7, 15.
We concur with the Examiner, and note that Figures 5 through 8
further, depict the item 103 as oblong. We note in these figures the item 103
is shown with no edges other that the outer contour, thus it is a continuously
curving shape. Accordingly, we sustain the Examiner's rejection of claims
15 and 18.
Rejection under 35 U.S.C. § 103(a) based upon Dyer
Independent claims 1 and 22
11
Appeal2018-005840
Application 14/633,813
Appellant argues the Examiner's obviousness rejection based upon
Dyer is in error as: a) "it is unclear how Dyer estimates the ear unit having
the curvatures along the upper inner part of the antihelix and along the lower
inner part of the antihelix" and b) as mentioned with respect to the
anticipation rejection, Dyer has a space between the ear mold and the
antihelix, thus there is no teaching or suggestion to make Dyer's outer
surface conform to the inner part of the antihelix. App. Br. 12-13.
The Examiner identifies that the rejection under 35 U.S.C. § 103 is
based upon an alternative interpretation of Dyer identifying that the
disclosure of Dyer does not expressly identify the curves in the manner
claimed, but that they are nonetheless obvious. Answer 7-8, 15-16.
We concur with the Examiner's findings of obviousness. As
discussed above, the claimed curves are depicted in the drawings of Dyer,
thus we find that claimed curves are taught and suggested by Dyer. Further,
in as much as the Specification does not expressly disclose these curves, the
drawings suggest they are there. Accordingly, we sustain the Examiner's
obviousness rejection of claims 1 and 22 based upon Dyer.
Dependent claims 13, 15, 18, and 23
Appellant's arguments directed to the obviousness rejection of claims
15 and 18 present the same arguments as discussed above with respect to the
anticipation rejection of these claims. App. Br. 13-14. As discussed above,
we are not persuaded of error by these arguments as the disputed features
appear in the drawings of Dyer. In as much as the Specification does not
expressly disclose these curves, and oblong cross section, the drawings
suggest they are there. Accordingly, we sustain the Examiner's obviousness
rejection of claims 13, 15, 18, and 23 based upon Dyer.
12
Appeal2018-005840
Application 14/633,813
Rejection under 35 U.S.C. § 103(a) based upon Smith '180 and Smith
Appellant argues that the Examiner's obviousness rejection based
Smith '180 and Smith '524 is in error as the combination would change the
principle of operation of the Smith '180. App. Br. 15-16. Appellant asserts
that Smith '180 teaches an earpiece that is a symmetric curve to make it
suitable for ambidextrous use and that modifying it to have the different
radiuses such as in Smith '524 would render it inoperable for its intended
purpose. App. Br. 16.
The Examiner does not directly address this argument by Appellant,
but rather states that the use of the two radiuses as claimed is known in the
art, citing Smith '524. Answer 17-18.
Appellant's arguments have persuaded us of error in the Examiner's
rejection. Smith '180 teaches the earpiece is made to be used in either ear, is
ambidextrous, and is symmetric in the line that bisects the earpiece top and
bottom. (See Smith' 180, Title, Abstract, and para. 24). The top of the
earpiece when in the left ear becomes the bottom when in the right ear,
hence the need for symmetry. Smith ,r 69. Thus, modifying the earpiece
such that the radius on the upper portion is different from the lower portion
would destroy the symmetry and the ability to use the device in either ear.
As such, we concur with Appellant the combination is in error as it would
render Smith '180 inoperable for its intended purpose. Accordingly, we do
not sustain the Examiner's obviousness rejection based upon Smith '180 and
Smith '524.
SUMMARY
13
Appeal2018-005840
Application 14/633,813
We affirm the Examiner's rejections of claims 1 and 13 through 25
under 35 U.S.C. § 112(a), of claims 16, 17, 19, and 20 under 35 U.S.C.
§ 112(b) and the rejection of claims 1, 13, 15, 18, 22, and 23 under
35 U.S.C. § 102(b) and 35 U.S.C. § 103(a) based upon Dyer.
We reverse the Examiner's rejections of claims 1, 13, 14, and 24
under 35 U.S.C. § 112(b) and claims 1, 13, 15, 18, 22, and 23 under
35 U.S.C. § 103(a) based upon Smith '180 and Smith '524.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 1 through 10
is affirmed. See 37 C.F.R. § 41.50(a)(l ).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
14