Ex Parte Falco

Patent Trial and Appeal Board

Feb 7, 2013

11270053 (P.T.A.B. Feb. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROBERT N. FALCO
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Appeal 2011-003999
Application 11/270,053
Technology Center 3700
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Before DONALD E. ADAMS, ERIC GRIMES, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims relating to
an earplug. The Examiner has rejected the claims as anticipated and
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification discloses “a stem for an earplug which is offset
from an attenuating portion of the earplug, and an earplug having such stem”
(Spec. 1, ¶ 0002). Figure 1 of the Specification is shown below:

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Application 11/270,053

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Figure 1 shows an earplug “stem 10 [which] generally includes a handle
portion 12 and a[n] attachment portion 14” (id. at 5, ¶ [0048]). The handle
portion 12 includes “distal portion 18 [that] diverges from the proximate
portion 16 along an axis B-B. The axis B-B is disposed at an angle θ
relative to the axis A-A.” (Id. at 6, ¶ [0050].)
Claims 1-20 are on appeal. Claims 1, 10 and 20, the only independent
claims, read as follows:
1. A stem for an earplug, comprising:
an attachment portion configured to receive and retain a sound
attenuating element, the attachment portion extending substantially along an
attachment axis; and
a handle portion extending from the attachment portion substantially
along a handle axis;
wherein at least part of the handle axis is non-collinear with respect to
the attachment axis.

10. An earplug, comprising:
a sound attenuating element extending substantially along a first axis;
and
a stem extending from the sound attenuating element;
wherein at least a portion of the stem extends substantially along a
second axis;
wherein the second axis is not collinear with the first axis.

20. A hearing protector, comprising:
attenuating means for at least partially occluding an ear canal to
attenuate sound;
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handle means extending from the attenuating means for facilitating
handling, insertion, and removal of the hearing protector;
wherein the handle means is offset relative to the attenuating means
for disposing the handle means in close proximity to the ear of the wearer.

Issue
The Examiner has rejected claims 1-4, 6-10, 12, 14-19 and 20 under
35 U.S.C. § 102(b) as anticipated by Grozil.
1
The Examiner has rejected
claims 5, 11, and 13 under 35 U.S.C. § 103(a) as obvious in view of Grozil
and Leight.
2
The same issue is dispositive for both rejections.
The Examiner finds that Grozil discloses an earplug stem having an
attachment portion and handle portion configured as required by the claims
on appeal (Answer 3-4). The Examiner provides the following annotated
version of Grozil‟s Figure 1:

1
Grozil, US 5,074,375, issued Dec. 24, 1991.
2
Leight, US 6,241,041 B1, issued June 5, 2001.
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(Answer 5.) Grozil‟s Figure 1 shows “a partly exploded perspective view”
of its hearing protection system (Grozil, col. 2, ll. 50-51). The Examiner has
annotated the figure to indicate what he interprets to be a first axis for the
attachment portion and a second axis for the handle.
Appellant argues that Grozil fails to describe an earplug stem with “a
handle axis that is non collinear [with respect] to the attachment axis” as
required by claim 1 (Appeal Br. 4). Appellant argues that “[a]s … the
Penguin Dictionary of Science indicates, an axis is „an imaginary line about
which a given body or system is considered to rotate.‟” (Id. at 6-7.)
Appellant argues that “[i]n Grozil, the handle 30 is symmetrical about the
handle axis, and the handle axis is in direct alignment with the attachment
axis.… [T]he handle axis and the attachment axis are collinear.” (Id. at 5.)
We agree with Appellant that the Examiner has not shown that Grozil
discloses the earplug stem of claim 1, because the Examiner‟s interpretation
of the claim term “a handle axis” is unreasonably broad.
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by … the
applicant‟s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appellant has provided
evidence that the ordinary meaning of an “axis” is “an imaginary line about
which a given body or system is considered to rotate” (Appeal Br. 6-7).
That definition is consistent with the use of the term in the Specification.
For example, Figure 1 (supra) indicates that the attachment axis A-A and the
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handle axis B-B run through the center of the attachment portion and handle
portion, respectively.
The Examiner reasons that claim 1 requires only part of the handle
axis to be non-collinear, and “Grozil can have more than one axis for the
handle part, since the … handle axis can be any axis on the handle (30)”
(Answer 7-8). The Examiner interprets an axis as a “line used as a fixed
reference for determining the point or position of a series of points to which
an individual wants to define an axis with respect to another object.
Therefore, the line of axis chosen can be varied for various individuals, since
it is just an reference line.” (Id. at 8.)
The Examiner, however, has not provided evidence to support his
position that those skilled in the art would interpret an “axis” to be simply a
reference line that can be varied at will. The preponderance of the evidence
therefore supports Appellant‟s interpretation of the claim language, and we
reverse the anticipation rejection of independent claim 1 and dependent
claims 2-9.
Similar to claim 1, claim 10 requires that a portion of an earplug stem
extends along an axis that is not collinear with the axis of a sound
attenuating element. As discussed above, the Examiner has not shown that
Grozil‟s earplug includes a stem with a portion that extends along an axis
that is not collinear with the axis of the sound attenuating element. We
reverse the anticipation rejection of independent claim 10 and dependent
claims 11-19.
Claim 20 requires a handle means extending from an attenuating
means, wherein the handle means is offset relative to the attenuating means.
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As shown above, Grozil‟s earplug includes a handle in direct alignment with
the attenuating means. The Examiner has not shown that a skilled worker
would interpret the claimed “offset” relationship to encompass the
attenuating means and handle means of Grozil‟s earplug. Thus, we also
reverse the anticipation rejection of claim 20.
With regard to the rejection of claims 5, 11, and 13 as obvious in view
of Grozil and Leight, the Examiner relies on the reasoning with respect to
Grozil as discussed above and relies on Leight only to show dependent claim
limitations. Thus, we also reverse this rejection.

REVERSED

cdc