Ex Parte Saltykov

Patent Trial and Appeal Board

Mar 24, 2017

13176104 (P.T.A.B. Mar. 24, 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.
13/176,104 07/05/2011 Oleg Saltykov 2010P13456US01 3970
24131 7590 03/28/2017
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, EL 33022-2480
EXAMINER
ETESAM, AMIR HOSSEIN
ART UNIT PAPER NUMBER
2655
NOTIFICATION DATE DELIVERY MODE
03/28/2017 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 OLEG SALTYKOV
Appeal 2014-007260
Application 13/176,1041
Technology Center 2600
Before JEAN R. HOMERE, LINZY T. McCARTNEY, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—6.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 According to Appellant, the real party in interest is Siemens Hearing
Instruments, Inc. App. Br. 1.
2 Claims 7—14 have been allowed; claims 1—6 stand rejected under 35
U.S.C. § 103(a). Final Act. 1—2; App. Br. 1. In the heading of the rejection,
the Examiner indicated that claims 1—8 stand rejected. Id. We find this
misstatement by the Examiner was inadvertent and amounts to harmless
error.
Appeal 2014-007260
Application 13/176,104
INVENTION
Appellant’s application relates to a hearing aid with occlusion
reduction. Abstract. Claim 1 is illustrative of the appealed subject matter
and reads as follows:
1. A hearing aid, comprising an occlusion reduction system
having a tuned resonator.
REJECTION
Claims 1—6 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Munk et al. (US 8,130,992 B2; issued Mar.6, 2012)
(“Munk”), Wilmink (US 2007/0086599 Al; published Apr. 19, 2007), and
Boschung et al. (2010/0014696 Al; published Jan. 21, 2010).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. We disagree with Appellant’s
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief. We concur with the
conclusions reached by the Examiner. We highlight the following additional
points.
In rejecting claim 1, the Examiner found that the combination of
Munk and Wilmink does not specifically teach a “tuned resonator,” as
recited in claim 1. Final Act. 3. For that limitation, the Examiner relied on
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Application 13/176,104
Boschung, which teaches controlling attenuation in a venting channel of a
hearing aid through a controllable resonator. Id. (citing Boschung Abstract,
Fig. 8).
Appellant contends the cited portions of Boschung do not disclose the
limitation “tuned resonator,” recited in claim 1. App. Br. 3. In particular,
Appellant argues that “Boschung's converter member 9 (Boschung, Fig. 1,
10065), realized as a membrane 12 in an acoustic channel 1 (see Figs. 6—8;
Tflf0078-0080, 0083), only provides attenuation and does not function as a
tuned resonator.” Id. at 4. Appellant further argues that “Boschung lacks
the acoustic circuit elements required to create an acoustic resonance.” Id.
Appellant’s arguments do not persuade us of Examiner error. The
Examiner found that Boschung discloses controlling attenuation in a venting
channel of a hearing aid through a controllable resonator. Final Act. 3
(citing Boschung Abstract, Fig 8). The Examiner explained that membrane
12 in figure 8 of Boschung resonates once acoustical energy enters the
acoustic channel and can be tuned to resonate with a particular frequency.
Ans. 2.
Appellant points to no definition of the limitation “tunable resonator”
in the Specification, and we find none. The broadest reasonable construction
of the claim term “tuned resonator” includes a hollow chamber adjusted to
permit internal resonant oscillation of acoustical waves of specific
frequencies. See Resonator, American Heritage Dictionary 707, 873
(5th ed. 2012). Paragraph 65 of Boschung, relied on by Appellants, teaches
that the oscillating behavior of member 9 is “controllably variable by a
controlling signal Sc.” Bosching | 65. Because Appellant has not provided
sufficient persuasive explanation or objective evidence that the converter
member 9 of Boschung, which exhibits oscillating behavior and is
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Appeal 2014-007260
Application 13/176,104
adjustable, does not teach or suggest a “tunable resonator,” we agree with
the Examiner that the disputed term is broad enough to encompass
Boschung’s converter member.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Munk, Wilmink, and Bosching teaches or
suggests the limitations of claim 1. Accordingly, we sustain the 35 U.S.C.
§ 103(a) rejection of independent claim 1. We also sustain the Examiner’s
rejection of dependent claims 4—6, for which Appellant makes no additional
arguments. See id. at 3—5.
With regard to dependent claims 2 and 3, Appellant argues the
Examiner erred because the claims require that the tuned resonator be
positioned at the end of an acoustic channel and, in the cited references, the
tuned resonator is within the acoustic channel. App. Br. 4.
We are unpersuaded of error. The Examiner concluded that the
placement of the tuned resonator would have been obvious to an artisan of
ordinary skill because it is a design preference. Final Act. 3^4; Ans. 3. In
the Reply Brief, Appellant argues that considering the placement of the
tuned resonator a design choice improperly requires one to disregard the
expressly-stated claim limitation “located at the one end of the ventilation
channel that faces away from the user.” Reply Br. 1—2 (citing In re NTP,
Inc., 654 F.Sd 1268, 1275 (Fed. Cir. 2011)). Here, the issue is one of
obviousness, not claim construction, and thus Appellant’s reliance on In re
NTP does not address the rejection made by the Examiner.
A claimed modification to the prior art may be obvious if the claimed
structure performs the same function as in the prior art and it presents no
novel or unexpected result over the prior art. See In re Kuhle, 526 F.2d 553,
555 (CCPA 1975) (use of claimed feature solves no stated problem and
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Application 13/176,104
presents no unexpected result and “would be an obvious matter of design
choice within the skill of the art”). However, when the claimed structure
performs differently from the prior art, a finding of obvious design choice is
precluded. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious
design choice precluded when claimed structure and the function it performs
are different from the prior art). Appellant has not persuasively shown that
the claimed vent (with the tuned resonator at the end) and the function it
performs are different from the prior art.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Munk, Wilmink, and Bosching teaches or
suggests the limitations of claims 2 and 3. Accordingly, we sustain the
35 U.S.C. § 103(a) rejection of those claims.
DECISION
We affirm the decision of the Examiner rejecting claims 1—6.
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
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