Ex Parte McBagonluri et al

Patent Trial and Appeal Board

Mar 17, 2017

11696400 (P.T.A.B. Mar. 17, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/696,400 04/04/2007 Fred McBagonluri 2006P25331US 4377
24131 7590 03/21/2017
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, EL 33022-2480
EXAMINER
DABNEY, PHYLESHA LARVINIA
ART UNIT PAPER NUMBER
2655
NOTIFICATION DATE DELIVERY MODE
03/21/2017 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):
boxoa@patentusa.com
docket @ paten tusa. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRED MCBAGONLURI, ARTEM BOLTYENKOV, and
OLEG SALTYKOV
Appeal 2014-007579
Application 11/696,4001
Technology Center 2600
Before JEAN R. HOMERE, LINZY T. McCARTNEY, and
JOYCE CRAIG, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1, 5, and 11, which constitute all of the
claims pending in this appeal. App. Br. 3. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm in part.
1 Appellants identify the real party in interest as Siemens Hearing
Instruments, Inc. App. Br. 1.
Appeal 2014-007579
Application 11/696,400
Appellants ’ Invention
Appellants’ application describes a computer based system and
method for designing a three-dimensional (3D) model hearing aid including
a shell (20) housing deformable components (30) with a flexible cover (10).
Spec. 17, Fig. 1. In particular, upon entering data describing the
characteristics for each of the components, the forces bearing on each
component are added to determine if the sum results in a vector of zero
force. If not, the components are repositioned within the shell or the
dimensions of the components are modified until a zero sum force vector is
achieved. /<7.at||7, 14.
Illustrative Claim
Independent claim 1 is illustrative, and reads as follows:
1. A method for designing a hearing instrument, comprising:
generating a virtual three-dimensional model of a hearing
instrument comprising a shell and a plurality of hearing
instrument components within the shell, where at least one of the
components comprises a deformable surface and the model
further comprises characteristics of the materials of that
component;
calculating the forces bearing on that component; and
determining whether the sum of all of the forces on that
component results in a vector of zero force, and, if not,
repositioning the component within the shell until the sum of the
forces on the component equals zero.
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Appeal 2014-007579
Application 11/696,400
Rejections on Appeal
Claims 1 and 11 stand rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§112 (pre-AIA), second paragraph, as being indefinite for failing to
particularly point out the subject matter which Appellants regard as the
invention. Final Act. 2—3.
Claims 1, 5, and 11 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Deichmann et al, US 2004/0107080 Al, June 3, 2004
(“Deichmann” hereinafter). Final Act. 3—5.
ANALYSIS
35 U.S.C. § 112 Rejection
Appellants argue that because one of ordinary skill in the art, having
read the Specification, would have been apprised of the scope of claims 1
and 11 including the recitations “forces,” “characteristics of the materials,”
“at least one of the components,” “the component,” “that component,” the
claims are not indefinite. App. Br. 5. We agree with Appellants that the
ordinarily skilled artisan would have been apprised of the scope of the cited
limitations, except for the recitation “at least one of the components” in
claim 11. As correctly noted by the Examiner, the ordinarily skilled artisan
would have not readily discerned whether the second instance of “at least
one of the components” recited in dependent claim 11 pertains to the
previous instance of “at least one of the components” recited in independent
claim 1 or another one of the components. Ans. 4. Because the cited
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Appeal 2014-007579
Application 11/696,400
recitation is amenable to two plausible interpretations, it is indefinite.2
Accordingly, we sustain the Examiner’s indefmiteness rejection with respect
to claim 11, but we do not sustain the rejection of claim 1.
Anticipation Rejection
Regarding the rejection of claim 1, Appellants argue that Deichmann
does not describe rearranging the components to reduce the resultant forces
to zero. App. Br. 6. According to Appellants, Deichmann is directed to
rearranging the components to avoid collision therebetween, as opposed to
“repositioning the component within the shell until the sum of the forces on
the component equals zero”, as required by the claim. Id. (citing Deichmann
11278-282, 287-289, 320, 321, 335, 351, 379). This argument is
persuasive.
Deichmann discloses a computer-based system for modeling
customized earpieces for a hearing device. Abstr. In particular, the
components of the hearing device are arranged within a shell such that no
collision is detected between the components. Deichmann H 44-46, 278—
290. Further, Deichmann discloses modifying the dimensions of the
components as a way to adjust them and reduce the likelihood of collision
therebetween. Id. H 270—273. Thus, although the Examiner correctly notes
that in some collisions, colliding bodies exchange momentum such that the
resulting net force is between them is zero, we do not agree with the
2 “[I]f a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (“Precedential”).
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Appeal 2014-007579
Application 11/696,400
Examiner that the collision avoidance disclosed by Deichmann describes
“repositioning the component within the shell until the sum of the forces on
the component equals zero”. Ans. 6—7 (citing Newton’s 3rd law, definition
of collision, and Deichmann || 44, 199, 231—246, 256—294, 316—340). In
other words, because the collision avoidance disclosed by Deichmann seeks
to prevent components within a shell from colliding with one another, it
describes the opposite of two colliding bodies exchanging momentum to
have a zero net force between them. Therefore, we agree with Appellants
that the Examiner erred in finding Deichmann’s disclosure of rearranging
components to avoid collision therebetween describes the disputed limitation
of “arranging the components such that the sum of forces bearing upon that
component is zero”. App. Br. 6, Ans. 10. Because Appellants have shown
at least one reversible error in the Examiner’s anticipation rejection of claim
I, we do not sustain the anticipation rejection of claim 1. Likewise, we do
not sustain the rejection of claims 5 and 11, which depend from claim 1 and
also recite the disputed limitation.
DECISION
For the above reasons, we affirm the Examiner’s indefmiteness
rejection of claim 11. However, we reverse the Examiner’s indefmiteness
rejection of claim 1, as well as the anticipation rejection of claims 1,5, and
II.
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-IN-PART
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