Ex Parte Falco

Board of Patent Appeals and Interferences

Apr 17, 2012

10422350 (B.P.A.I. Apr. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROBERT N. FALCO
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Appeal 2010-004021
Application 10/422,350
Technology Center 3700
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Before JENNIFER D. BAHR, PHILLIP J. KAUFFMAN and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004021
Application 10/422,350

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-12 and 30-35. Claims 13-29 are allowed (App. Br. 2,
Ans. 4). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and we designate this affirmance as a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b).

The Claimed Subject Matter
The claimed subject matter pertains to a multi-flanged earplug
comprising flanges having certain geometries. Sole independent claim 1 is
representative of the claims on appeal and is reproduced below:
1. A multi-flange earplug, comprising:
a stem;
a first flange positioned at a first end portion of the stem,
at least a portion of the first flange having a shape on a side of
the first flange facing a tip of the first end portion of the stem
that is generally convex with respect to a tip of the first end
portion of the stem, the first flange having a shape on a second
side of the first flange facing away from the tip of the first end
portion of the stem that defines a skirt cavity on an a
perpendicular of plane relative to the longitudinal axis earplug,
the longitudinal axis referring to a line between the rear end of
the stem of the earplug and the tip of the earplug, between a
portion of said flange skirt and said stem; and
a second flange positioned between the first flange and a
second end portion of the stem, at least a portion of the second
flange having a shape on a side of the second flange facing a tip
of the first end portion of the stem that is generally concave
with respect to the tip of the first end portion of the stem, the
second flange having a shape on a second side of the second
flange facing away from the tip of the first end portion of the
stem that defines a skirt cavity on a perpendicular of plane
relative to the longitudinal axis earplug, the longitudinal axis
referring to a line between the rear end of the stem of the
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Application 10/422,350

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earplug and the tip of the earplug, between a portion of said
flange skirt and said stem.

References Relied on by the Examiner
None (Ans. 3).

The Rejections on Appeal
1. Claims 1-12 and 30-35 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
(Ans. 3).
2. Claims 1-12 and 30-35 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
(Ans. 4).

ANALYSIS
The rejection of claims 1-12 and 30-35 under
35 U.S.C. § 112, second paragraph, for being indefinite
We initially address the Examiner’s rejection based on the claims
being indefinite. Each claim on appeal requires first and second flanges and
each claimed flange defines a respective “skirt cavity on a perpendicular
plane relative to the longitudinal axis earplug” with the perpendicular plane
extending “between a portion of said flange skirt and said stem.” The
Examiner states that “it is not clear as to how the stem defines the skirt
cavities on a perpendicular plane relative to the longitudinal axis of the
earplug” (Ans. 4, see also Reply Br. 2-3). Appellant addresses
perpendicularity stating that a perpendicular plane relative to a longitudinal
axis is an inherent geometrical description and that there can be no
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Application 10/422,350

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ambiguity and thus no indefiniteness (App. Br. 5). We agree with Appellant
regarding the inherent geometrical description of a perpendicular plane
relative to a longitudinal axis. However, claim 1 also “defines a skirt cavity
on” a perpendicular plane. The Specification describes that, for example,
first flange 12 is of a diameter to “provide an annular free space between the
inner surface of the skirt of the first flange 12 and the stem 14” (Spec. ¶
[0016]).1 Thus, the skirt cavity is an annual space around the longitudinal
axis of the stem 14 formed by the inner surface of the flange. Appellant’s
disclosure does not make clear how this cavity (annular free space) is
defined on a two-dimensional perpendicular plane relative to the
longitudinal axis. Appellant’s focus on perpendicularity does not address
how the claims particularly point out and distinctly claim the subject matter
that the Appellant regards as his invention. Accordingly, we affirm the
Examiner’s rejection of claims 1-12 and 30-35 as being indefinite but since
the basis of our rationale may differ from that of the Examiner2, pursuant to
our authority under 37 C.F.R. § 41.50(b), we designate this affirmance as a
new ground of rejection in order to afford Appellant a fair opportunity to
respond.
Having determined that the claims are indefinite under § 112, second
paragraph, we cannot reach the Examiner’s rejection of the same claims
under § 112, first paragraph, because such a determination would require
speculation as to the meaning of the claims. Cf. In re Steele, 305 F.2d 859,

1 The second flange likewise forms an annular free space (cavity) about the
stem 14 (Fig. 4 and Spec. ¶¶ [0023] and [0032]).
2 The Examiner states that it is not clear “how the stem defines the skirt
cavities on a perpendicular plane” and does not distinguish between “how
the stem defines the skirt cavities” or how the skirt cavities are defined “on a
perpendicular plane” (Ans. 4, 6).
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862 (CCPA 1962) (stating that rejections under 35 U.S.C. § 103 should not
be based upon “considerable speculation as to the meaning of the terms
employed and assumptions as to the scope of the claims”); In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970) (stating that “[i]f no reasonably definite
meaning can be ascribed to certain terms in the claim, the subject matter
does not become obvious”).

DECISION
The rejection of claims 1-12 and 30-35 under 35 U.S.C. § 112, second
paragraph is affirmed, however, since our rationale may differ from that
expressed by the Examiner, pursuant to our authority under 37 C.F.R.
§ 41.50(b), we designate this affirmance as a new ground of rejection in
order to afford Appellant a fair opportunity to respond. 37 C.F.R. § 41.50(b)
provides “[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that
Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . .

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED; 37 C.F.R. § 41.50(b)

MP