Ex Parte Falco

Board of Patent Appeals and Interferences

Jul 14, 2004

09226467 (B.P.A.I. Jul. 14, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

Paper No. 28

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ROBERT N. FALCO
__________

Appeal No. 2004-0034
Application No. 09/226,467
___________

ON BRIEF
___________

Before GARRIS, KRATZ, and DELMENDO, Administrative Patent
Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2004) from the examiner’s final rejection of claims 1 through
13 and 16 through 23 (final Office action mailed Feb. 14, 2001,
paper 19) in the above-identified application.1

1 The final rejection of claims 14 and 15, the only other
pending claims, has been withdrawn. (Examiner’s answer mailed
Nov. 19, 2003, paper 24, p. 2.)
Appeal No. 2004-0034
Application No. 09/226,467

2
The subject matter on appeal relates to an earplug (claims
1-6, 22, and 23) and to a method of manufacturing an earplug
(claims 7-13 and claims 16-21). Further details of this
appealed subject matter are recited in representative claims 1,
7, 13, and 16 reproduced below:
1. An earplug comprising:
a foam body free of detectable material; and
a detectable insert encapsulated within said foam
body, said foam body completely surrounding said
detectable insert.

7. A method of manufacturing an earplug
comprising:
providing an earplug having a foam body free of
detectable material;
forming a channel in said foam body;
placing a detectable insert in said channel; and
allowing said foam body to encapsulate said
detectable insert so that said foam body completely
surrounds said detectable insert.

13. The method of claim 7 wherein:
said channel is formed by inserting a punch in
said foam body.

16. A method of manufacturing an earplug
comprising:
providing an earplug having a foam body;
projecting a detectable insert into said foam
body at a predetermined trajectory and speed; and
allowing said foam body to encapsulate said
insert so that said foam body completely surrounds
said detectable insert.

Appeal No. 2004-0034
Application No. 09/226,467

3
The examiner relies on the following prior art references
as evidence of unpatentability:
Powers et al. 4,253,452 Mar. 03, 1981
(Powers)

Leonard 4,936,411 Jun. 26, 1990

Claims 1 through 13 and 16 through 23 on appeal stand
rejected under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Powers and Leonard. (Answer, pages 3-4;
final Office action, page 2.)
We affirm. Because we are in complete agreement with the
examiner’s factual findings and legal conclusions, we adopt them
as our own and add the following comments for emphasis.2
As pointed out by the examiner (final Office action, page
2), Powers describes an earplug comprising plug bodies 12 made
from an open cell resilient foam material having “memory” and a
low recovery rate. (Column 1, lines 32-33; column 1, line 57 to
column 2, line 51; Figures 1-5.) According to Powers, “[a]
characteristic of the foam material is that upon distortion by

2 The appellant submits that “[t]he claims herein stand or
fall together with the exception of claims 1, 7, and 13-16.”
(Substitute appeal brief filed Oct. 1, 2001, paper 23, p. 3.)
Thus, pursuant to 37 CFR § 1.192(c)(7)(2003)(effective Apr. 21,
1995), we will consider these claims separately to the extent
that they have been argued separately within the meaning of the
regulation.
Appeal No. 2004-0034
Application No. 09/226,467

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the application of a force thereto the foam material temporarily
remains distorted and then slowly recovers its original shape.”
(Column 2, lines 35-38.) The reference further teaches that
this characteristic allows the foam material to surround and
intimately contact a free end of a cord 14 to secure the end in
the plug body. (Column 2, lines 27-42.) Although Powers
teaches that the loss of the earplug in some areas of use (e.g.,
food processing) may cause “great consternation and trauma”
(column 1, lines 5-22), the reference does not teach a
detectable insert encapsulated in the foam plug body as recited
in appealed claim 1.
Leonard teaches that “[w]hen used on a food or beverage
processing line, a pharmaceutical line, or any other processing
line where there is exposure to consumable items, there is a
risk that an earplug may fall into...foodstuff, beverage,
pharmaceutical, or other substance being processed.” (Column 1,
lines 18-23.) To solve this problem, Leonard teaches securing a
detectable insert in a stem of an earplug so that a lost earplug
can be detected using equipment such as a metal detecting
equipment. (Column 2, lines 3-38.)
Thus, substantial evidence supports the examiner’s
determination of obviousness. Specifically, we share the
Appeal No. 2004-0034
Application No. 09/226,467

5
examiner’s view that one of ordinary skill in the art would have
found it prima facie obvious to provide Powers’s earplug with
Leonard’s detectable insert in order to eliminate the problem of
lost or fallen earplugs in a product processing line.
The appellant argues that Leonard does not teach or suggest
encapsulation of a detectable insert within a foam body.
(Substitute appeal brief, pages 4-6; reply brief filed Mar. 1,
2002, paper 25, page 4.) This argument is unpersuasive for the
reasons well stated in the answer (pages 3-4). While Leonard
teaches the use of a stem to secure the detectable insert, one
of ordinary skill in the art would have understood that the foam
described in Powers would necessarily be capable of performing
the same function. That is, one of ordinary skill in the art
would have reasonably expected that the foam described in Powers
would encapsulate and thus secure any inserted object, including
a detectable insert, because the foam is described as having
recovery and memory characteristics sufficient to secure the
free end of a cord. In considering the disclosures of prior art
references, it is appropriate to take into account not only the
specific teachings of the references but also the inferences
which one skilled in the relevant art would reasonably be
expected to draw therefrom. In re Hoeschele, 406 F.2d 1403,
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Application No. 09/226,467

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1406-07, 160 USPQ 809, 811-812 (CCPA 1969); In re Preda, 401
F.2d 825, 159 USPQ 342 (CCPA 1968); In re Shepard, 319 F.2d 194,
138 USPQ 148 (CCPA 1963).
As to separately argued claim 13, we agree with the
examiner’s analysis that Powers teaches the formation of a
channel by inserting a punch into the foam body. (See Figures
2-5.)
As to separately argued claim 16, we again find ourselves
in complete agreement with the examiner’s findings and
conclusions. (Answer, page 4.) Contrary to the appellant’s
apparent belief (reply brief, page 5), the recitation
“projecting of a detectable insert into a foam body at a
predetermined trajectory and speed” reads on mere automated or
manual insertion of a detectable insert into a foam body. In
other words, the claim recitation is not limited in scope to the
preferred embodiment described in the specification at page 4
where a detectable insert is projected into the foam body by a
source of energy (e.g., compressed air).
For these reasons and those set forth in the answer, we
affirm the examiner’s rejection under 35 U.S.C. § 103(a) of
appealed claims 1 through 13 and 16 through 23 as unpatentable
over the combined teachings of Powers and Leonard.
Appeal No. 2004-0034
Application No. 09/226,467

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The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

Bradley R. Garris )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Peter F. Kratz )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Romulo H. Delmendo )
Administrative Patent Judge )

RHD/kis
Appeal No. 2004-0034
Application No. 09/226,467

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