Ex parte Leight

Board of Patent Appeals and Interferences

Aug 31, 2000

08297399 (B.P.A.I. Aug. 31, 2000)

Application for patent filed August 29, 1994, entitled1
"Multi-Cone Earplug And Method Of Forming And Using," which is
a continuation of Application 08/071,540, filed June 4, 1993,
now abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being
entered today was not written for publication in a
law journal and is not binding precedent of the Board.
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Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte HOWARD S. LEIGHT

Appeal No. 1997-1409
Application 08/297,3991

ON BRIEF

Before BARRETT, FLEMING, and GROSS, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1997-1409
Application 08/297,399
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This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1 and 3-8. Claim 2 has been
canceled (Paper No. 14).
We affirm-in-part.
BACKGROUND
The disclosed invention is directed to a molded earplug
which provides enhanced sound protection and more
comfortable withdrawal of the earplug from the ear.
Claim 1 is reproduced below.
1. An earplug comprising:
A unitary molded earplug having an axis that
extends in forward and rearward directions, having an
elongated central stem portion which extends along said
axis and which has forward and rearward stem portion
ends, and having a plurality of hollow truncated cone
elements including a first cone element, with each of
said cone elements having an apex end part merging with
said stem portion and having a rear end part with an
extreme rear end, and with each cone element extending
with rearward (R) and radially outward (A) directional
components from its apex end part along most of the
axial length of the cone element to its extreme rear
end, said apex end parts of said cone elements being
spaced apart along said stem;
said rear end part of said first cone element
having a maximum thickness which is no more than 7
percent of the diameter of said extreme rear end, and
said cone rear end part having an outer surface forming
an included angle of between 50E and 85E as seen in a
sectional view taken perpendicular to said axis.
Appeal No. 1997-1409
Application 08/297,399
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The Examiner relies on the following prior art:
Hill Des. 195,322 May 28, 1963
Knudsen 2,246,737 June 24, 1941
Baum 2,487,038 November 8, 1949
Huntress 4,055,233 October 25, 1977
Falco 4,867,149 September 19, 1989
The specification stands objected to, and claims 3, 6,
and 7 stand rejected under 35 U.S.C. § 112, first paragraph,
based on a lack of written description in the specification,
as originally filed, for the phrase "with the area radially
outside . . . said band means."
Claims 1 and 3-8 stand 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 his invention.
Claims 1, 4, 5, and 8 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Falco in view of either
Hill, Baum, or Huntress.
Claim 3 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Falco in view of either Hill, Baum, or
Huntress, as applied in the rejection of claim 1, further in
view of Knudsen.
Appeal No. 1997-1409
Application 08/297,399
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Claims 6 and 7 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Falco in view of either Hill, Baum,
or Huntress, further in view of Knudsen,
We refer to the Final Rejection (Paper No. 6) and the
Examiner's Answer (Paper No. 15) (pages referred to as
"EA__") for a statement of the Examiner's position and to
the Revised Appeal Brief (Paper No. 12) (pages referred to
as "Br__") and the Reply Brief (Paper No. 16) (pages
referred to as "RBr__") for a statement of Appellant's
arguments thereagainst.
OPINION
Written description
We agree with Appellant's argument (RBr1) that the
original figures 2 and 3 make it clear that the area around
the rear of the stem 12 is unobstructed so that the band
means (flange) 40 can be grasped to pull the earplug out of
the ear. Thus, we find descriptive support for the
limitation in question. See Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1564, 19 UPSQ2d 1111, 1117 (Fed. Cir. 1991)
("[D]rawings alone may be sufficient to provide the 'written
description of the invention' required by § 112, first
Appeal No. 1997-1409
Application 08/297,399
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paragraph."). Accordingly, the rejection of claims 3,
6, and 7 is reversed.
Indefiniteness
Claim 1
The Examiner states that "rearward (R) and radially
outward (A) directional components" of a "cone element" in
claim 1 is unclear, because a cone is not a vector (EA5).
We consider the limitation to be clear by itself and
especially when viewed together with the drawing. The
limitation defines the orientation of the cone.
The rejection of claim 1 is reversed.
Claim 3
The Examiner states that the term "semi-circular
cross-section" and the language "completely filled with
solid material" in claim 3 is indefinite (EA5).
We find nothing indefinite about the language. The
"band means" refers to the volume of material 40 lying
outside the cylinder 41, not the whole cross section shown
in figure 2A. The band is solid as shown in figure 2A.
Appeal No. 1997-1409
Application 08/297,399
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The Examiner states that "the area" lacks antecedent
basis (EA5).
It is not necessary to provide antecedent basis for
every term; e.g., if the claim recites a circle, it is not
necessary to provide antecedent basis before referring to
"the center of the circle" because all circles inherently
have a center. Here, there is inherently an area radially
outside and forward of the band, so express antecedent basis
is not required.
The Examiner states that the meaning of the phrase
"with the area radially outside . . . said band means"
cannot be ascertained (EA5).
As stated with respect to the written description
rejection, the limitation and its meaning is fully supported
by figures 2 and 3, as filed.
The rejection of claim 3 is reversed.
Claim 4
The Examiner states that it unclear what is meant by
the "rearward and radially-outward directional components"
Appeal No. 1997-1409
Application 08/297,399
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and "locations on said peripheral portion" in claim 4 (EA5).
We consider the limitations to be clear by themselves
and especially when viewed together with the drawings. The
directional components limitation defines the orientation of
the cone. The cone has a center portion merging with the
stem and a peripheral portion, so the peripheral portion is
the cone-shaped element. Thus, locations on the peripheral
portion refer to locations on the cone element.
The rejection of claim 4 is reversed.
Claim 6
The Examiner states that it is unclear what is meant by
the limitations "said peripheral portion . . . from said
axis" and "semicircular cross-sectional shape" in claim 6
(EA6).
We disagree. As discussed in connection with claim 4,
the directional components limitation is clear and defines
the orientation of the cone, and the peripheral portion is
the cone-shaped element. As discussed in connection with
claim 3, the "semicircular cross-sectional shape" refers to
Appeal No. 1997-1409
Application 08/297,399
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the flange portion, not the flange and stem means as a
whole.
The Examiner further states that "the area" lacks
antecedent basis (EA6).
As discussed in connection with claim 3, it is not
necessary to provide antecedent basis in this case.
The Examiner further states that the meaning of "with
the area . . . flange means" in claim 6 cannot be
ascertained (EA6).
As stated with respect to the written description
rejection, the limitation and its meaning is fully supported
by figures 2 and 3, as filed.
The Examiner further states that the terms "stem means"
and "flange means" purport to be means-plus-function
limitations under 35 U.S.C. § 112, sixth paragraph, but have
no functional connotations (EA6).
The limitations are not interpreted as means-plus-
function elements since the structures of the "stem means"
and the "flange means" are fully described. There is
nothing wrong with using the term "means" in a non-means-
plus-function way.
Appeal No. 1997-1409
Application 08/297,399
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The Examiner further states that the term
"substantially" provides no standard for determining the
metes and bounds of the claimed subject matter of claim 6
(EA6).
We consider the term "substantially constant
[diameter]" to require a diameter to be constant within a
small amount of variation. For example, the diameter of the
channel member in Baum would not be "substantially
constant." Thus, we conclude that the term is definite to
one of ordinary skill in the art.
The rejection of claim 6 is reversed.
Claim 7
The Examiner states that "(40)" should be deleted from
claim 7. Appellant states that he does not know why the use
of the numeral is objectionable (Br10).
The presence of the reference numeral does not render
claim 7 indefinite. See Manual of Patent Examining
Procedure § 706.03(d) (5th ed., Rev. 14, Nov. 1992) ("The
mere inclusion of reference numerals in a claim otherwise
allowable is not a ground for rejection."). Since this is
Appeal No. 1997-1409
Application 08/297,399
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the only claim using reference numerals, it may be the
Examiner's point that the claims would be more consistent in
appearance without the numeral. However, this is not a
ground for rejection. The rejection of claim 7 is reversed.
Claim 8
The Examiner states that claim 8 lacks clear support in
the specification, that it is impossible to determine the
scope of the claim, and that it ambiguously recites both the
process of forming and the process of using (EA7).
We disagree. Although claim 8 is somewhat unusual, we
do not see how the process of forming and using makes the
claim indefinite. Clearly, to infringe this claim would
require both the earplug structure and the method of use.
The rejection of claim 8 is reversed.
Obviousness
Initially, we observe that Huntress is directed to an
ear coupler, not an ear plug. The conical portion, or ear
horn, 2 fits within the ear (col. 2, lines 54-55) and the
peripheral bead 5 is intended to deform and lie upon the
Appeal No. 1997-1409
Application 08/297,399
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external surface of the ear as shown in figure 3 (col. 2,
line 64 to col. 3, line 1). Thus, the teachings of Huntress
are not relevant to the earplug of the present claim.
Claims 1, 3-5, and 8
The Examiner finds that the difference between Falco
and the subject matter of claim 1 is the shape of the flange
elements and concludes that it would have been obvious to
make the flanges in Falco in the shape of a hollow truncated
cone in view of Huntress, Hill, or Baum (EA8). The Examiner
finds that Falco shows the included angle formed by the
intersection of two construction straight lines drawn so as
to contact the skirt is "between 50E and 85E" or "about 60E."
Appellant argues that the references do not show the
claimed angle range of between 50E and 85E (claim 1) or
about 60E (claims 4 and 8). It is argued that Falco shows
the rear ends of the hemispherical elements extending
parallel to the axis, so they have an included angle of 0E
(Br5).
While we agree with the Examiner that it would have
been obvious to substitute cone-shaped elements for the
hemispherical elements in Falco, we agree with Appellant
Appeal No. 1997-1409
Application 08/297,399
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that the references do not teach the claimed angle. Hill
and Baum show cone angles that are clearly greater than 90E.
It is impossible to derive any cone-angle information from
the hemispherical-shaped elements in Falco without
speculation, because of the difference in shape. Measuring
the angle between chords to the circular sections in the
figure is only one of many possible angles. Appellant
describes that the angle has the advantages of having the
rear end of the cone lie flat against the ear canal and
achieving reverse bend during pullout to minimize creation
of a vacuum. Thus, although these functions have not been
claimed, it cannot be said that the angle is merely a matter
of design choice. Nor is the angle a matter of routine
experimentation to optimize a result effective variable
because none of the references discuss that the cone angle
is a result effective variable for the functions taught by
Appellant.
For these reasons, we conclude that the Examiner has
failed to establish a prima facie case of obviousness with
respect to independent claims 1, 4, and 8. The rejection of
claims 1, 4, and 8 is reversed. The rejection of dependent
Appeal No. 1997-1409
Application 08/297,399
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claim 5 is also reversed. The addition of Knudsen as to the
rejection of claim 3 does not cure the noted deficiencies.
Accordingly, the rejection of claim 3 is also reversed.
Claims 6 and 7
The Examiner finds the differences between Falco and
the subject matter of claim 6 to be the shape of the flange
elements and the addition of a flange means of semicircular
cross-sectional shape at the rear of the stem means. The
Examiner concludes that it would have been obvious to make
the flanges in Falco in the shape of a cone in view of
Huntress, Hill, or Baum (EA11). The Examiner concludes that
it would have been obvious to provide a rounded flange means
on Falco in view of the flange in Knudsen. Claim 6 does not
recite the angle of the cone elements.
Appellant argues that the flanges in Knudsen lie within
a large skirt that restricts easy grasping of the stem
immediately forward of the flange while the claims require
the area radially beyond and forward of the flange to be
completely unobstructed to grasping (Br8).
Appeal No. 1997-1409
Application 08/297,399
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We agree with the Examiner that it would have been
obvious to substitute cone-shaped elements for the
hemispherical elements in Falco given the teachings of
cone-shaped elements in Hill and Baum.
We further agree with the Examiner that it would have
been obvious to one of ordinary skill in the art to add a
flange to the stem of Falco in view of the flange 18 or knob
23 in Knudsen for the same purpose of making it easier to
insert and remove the earplug. The knob 23 in figure 4 of
Knudsen shows that the flange may be rounded. Placing the
flange at the rear of the stem in Falco would leave the area
radially beyond and forward of the flange unobstructed. One
of ordinary skill in the art would have realized that the
knob in Knudsen does not require a surrounding skirt to
perform its function.
The Examiner has established a prima facie case of
obviousness with respect to claim 6. The rejection of
claim 6 is sustained.
Appellant does not argue the separate patentability of
claim 7. However, in any case, Knudsen shows the flange
having a smaller diameter than both flanges and, thus, it
Appeal No. 1997-1409
Application 08/297,399
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would have been obvious to make the flange with an outside
diameter less than the outside diameter of the middle cone
element in Falco. The rejection of claim 7 is sustained.
CONCLUSION
The rejection of claims 3, 6, and 7 under 35 U.S.C.
§ 112, first paragraph, is reversed.
The rejection of claims 1 and 3-8 under § 112, second
paragraph, is reversed.
The rejections of claims 1, 3-5, and 8 under § 103 are
reversed.
The rejection of claims 6 and 7 under § 103 is
sustained.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
LEE E. BARRETT )
Appeal No. 1997-1409
Application 08/297,399
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Administrative Patent Judge )
)
)
)
) BOARD OF
PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 1997-1409
Application 08/297,399
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Leon D. Rosen
FREILICH, HORNBAKER & ROSEN
10960 Wilshire Boulevard
Suite 1434
Los Angeles, CA 90024