Ex Parte Westermann et alDownload PDFPatent Trial and Appeal BoardAug 11, 201612104220 (P.T.A.B. Aug. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/104,220 04/16/2008 23373 7590 08/15/2016 SUGHRUE MION, PLLC 2100 PENNSYLVANIA A VENUE, N.W. SUITE 800 WASHINGTON, DC 20037 FIRST NAMED INVENTOR Soren Erik WESTERMANN 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 ATTORNEY DOCKET NO. CONFIRMATION NO. Ql07148 3477 EXAMINER MCCARTY, TAUNYA A ART UNIT PAPER NUMBER 2651 NOTIFICATION DATE DELIVERY MODE 08/15/2016 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): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SOREN ERIK WESTERMANN and HENRIK HEILE CHRISTENSEN Appeal2015-001853 Application 12/104,220 Technology Center 2600 Before ST. JOHN COURTENAY III, NORMAN H. BEAMER, and MATTHEW J. McNEILL, Administrative Patent Judges. BEAMER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-11. 1 We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. 1 In the Appeal Brief, Appellants identify Widex A/S as the real party in interest. (App. Br. 2.) Appeal2015-001853 Application 12/104,220 THE INVENTION Appellants' disclosed and claimed inventions are directed to an interchangeable acoustic system for a hearing aid. (Spec. Title.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An acoustic system for a hearing aid, where said acoustic system is adapted for releasable attachment to a hearing aid housing and for conducting sound from an output transducer in said housing to an ear of a user, and where said acoustic system comprises a type indicator indicating type information of at least one element of said acoustic system, which may be decoded by means in said housing. REJECTIONS The Examiner rejected claims 1, 2, and 7 under 35 U.S.C. § 103(a) as being unpatentable over Fretz et al. (US 2003/0002700 Al, pub. Jan. 2, 2003) and Carlson (US 2005/0268000 Al, pub. Dec. 1, 2005). (Final Act. 5- 6.) The Examiner rejected claims 3 and 10 under 35 U.S.C. § 103(a) as being unpatentable over Fretz, Carlson, and Willis (US 6,651,501 Bl, issued Nov. 25, 2003). (Final Act. 6-8.) The Examiner rejected claims 4---6 and 8-9 under 35 U.S.C. § 103(a) as being unpatentable over Fretz, Carlson, and Feeley (US 7,139,404 B2, issued Nov. 21, 2006). (Final Act. 8-10.) The Examiner rejected claim 11under35 U.S.C. § 103(a) as being unpatentable over Fretz, Carlson, and Goyal (US Patent 7 ,450, 726 B2, issued Nov. 11, 2008). (Final Act. 10-11.) 2 Appeal2015-001853 Application 12/104,220 ISSUES ON APPEAL Appellants' arguments in the Appeal Brief present the following issues: 2 Issue One: Whether the combination of Fretz and Carlson teaches or suggests the independent claim 1 limitation, "a type indicator indicating type information," and similar limitations recited in independent claim 7. (App. Br. 5-9.) Issue Two: Whether the combination of Fretz and Carlson teaches or suggests the independent claim 2 limitation, "said type indicator indicates whether the earplug is of the closed type or not." (App. Br. 10.) ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner errs. We disagree with Appellants' arguments, and we adopt as our own ( 1) the pertinent findings and reasons set forth by the Examiner in the Action from which this appeal is taken (Final Act. 5-11) and (2) the corresponding reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief (Ans. 9-18). We concur with the applicable conclusions reached by the Examiner and emphasize the following. 2 Rather than reiterate the arguments of Appellants and positions of the Examiner, we refer to the Appeal Brief (filed Apr. 28, 2014); the Reply Brief (filed Nov. 17, 2014); the Final Office Action (mailed June 18, 2013); and the Examiner's Answer (mailed Sept. 16, 2014) for the respective details. 3 Appeal2015-001853 Application 12/104,220 Issue One In finding Fretz and Carlson teach or suggest "a type indicator indicating type information," the Examiner relies on the disclosure in Fretz of an acoustic system for a hearing aid, including a hearing aid housing with a releasable attachment. (Final Act. 5; Fretz Fig. 1.) The Examiner also relies on the disclosure in Carlson of an accessory identifier in an electronic device that senses the value of a resistor in an attachable accessory to identify the type of attachment. (Final Act. 5, Carlson Fig. 1, i-f 8.) Appellants argue an ordinarily skilled artisan would not have been motivated to combine the references because, in the Fretz system, all acoustic adjustments to the hearing aid are made when the earpiece attachment is first fitted to the housing, and therefore there is no need to provide for subsequent detection of the attachment type. (App. Br. 6.) Appellants further argue that the "type" indication of Carlson "is a more fundamental indication of very different kinds of apparatus that might be connected," and "one of skill in the art, absent the teaching of the present application, would simply have dismissed Carlson as not being relevant to the design of hearing aids." (App. Br. 8.) We are not persuaded by these arguments. As the Examiner finds, Fretz discloses "'a kit of parts for assembling hearing aids includes a plurality of tubes, [and] a plurality of eartips for connection to the ear canal end of the tubes .... "' - thus suggesting the need to accommodate a plurality of attachments. (Ans. 11-12, 14; Fretz i-f 17.) Moreover, we agree with the Examiner's rejection of Appellants' arguments concerning Carlson as not commensurate with the scope of the claims - the "type indication" 4 Appeal2015-001853 Application 12/104,220 disclosed in Carlson is directly analogous to the claimed "type indicator indicating type information." (Ans. 15-16.) In sum, we are not persuaded the Examiner errs in finding: Fretz's teaching of a kit of parts for assembling hearing aids ... corresponds to Carlson's teaching of portable electronic devices ... are generally capable of accepting external accessories ... in that Fretz's plurality of tubes, for example, correspond to Carlson's external accessories such as a camera, a speaker phone, and a battery charger. In other words, both Fretz and Carlson are addressing an accessory, attachment or external element that is being attached to a main device. (Ans. 13.) Appellants do not point to any evidence of record that the resulting arrangements were "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007)). The Examiner's findings are reasonable because the skilled artisan would "be able to fit the teachings of multiple patents together like pieces of a puzzle" because the skilled artisan is "a person of ordinary creativity, not an automaton." KSR, 550 U.S. at 420-21. We are persuaded the claimed subject matter exemplifies the principle, "[ t ]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416. Issue Two Appellants argue the Examiner errs in finding Fretz and Carlson teach or suggest a "type indicator indicat[ing] whether the earplug is of the closed type or not." (App. Br. 10.) Appellants point out the earplugs of Fretz are separate attachments from the sound tubes, so even if the cited art suggests a 5 Appeal2015-001853 Application 12/104,220 type indicator for the tube, there would still be no indication of whether the earplug was open or closed. (Id.) The Examiner properly rejects this argument, relying on the broad teachings of Fretz and Carlson discussed above, including the disclosure in Fretz of the use of different eartips and the disclosure in Carlson of type identifiers. (Final Act. 5---6; Fretz i-f 17; Carlson i-f 8.) Appellants' argument posits that, even if the cited references suggest providing a type indicator for a sound tube, the ear plug would remain unidentified because it is a separate component in Fretz. However, "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference." Keller, 642 F.2d at 425. Instead, the relevant issue is "what the combined teachings of the references would have suggested to those of ordinary skill in the art." Id. "Combining the teachings of references does not involve an ability to combine their specific structures." In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). CONCLUSIONS For the reasons discussed above, we sustain the obviousness rejection of claims 1, 2, and 7 over Fretz and Carlson. We also sustain the obviousness rejections of claims 3 and 10 over Fretz, Carlson, and Willis, of claims 4---6 and 8-9 over Fretz, Carlson, and Feeley, and of claim 11 over Fretz, Carlson, and Goyal, which rejections are not argued separately with particularity. 3 3 We have not considered certain untimely arguments first raised in the reply brief. (Reply Br. 8-9.) See 37 C.F.R. § 41.41(b)(2). 6 Appeal2015-001853 Application 12/104,220 DECISION We affirm the Examiner's rejection of claims 1-11. 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 7 Copy with citationCopy as parenthetical citation