Ex Parte Bauman

Patent Trial and Appeal Board

Dec 11, 2012

11516388 (P.T.A.B. Dec. 11, 2012)

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.
11/516,388 09/06/2006 Natan Bauman 05-625-2 9415
34704 7590 12/11/2012
BACHMAN & LAPOINTE, P.C.
900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510
EXAMINER
DORNA, CARRIE R
ART UNIT PAPER NUMBER
3735
MAIL DATE DELIVERY MODE
12/11/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte NATAN BAUMAN
__________

Appeal 2012-000407
Application 11/516,388
Technology Center 3700
__________

Before ERIC GRIMES, JEFFREY N. FREDMAN, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a tinnitus
treatment device. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

Appeal 2012-000407
Application 11/516,388

2
Statement of the Case
Background
“The present invention relates to a tinnitus device with an open ear
configuration with a receiver placed in the ear canal, to be used for the
treatment [of] tinnitus” (Spec. 1 ¶ 0002).
The Claims
Claims 1 and 4-52 are on appeal. Claim 1 is representative and reads
as follows:
1. A tinnitus treatment device, comprising:
a housing configured to fit behind a user's ear;
a sound generation device positioned within said
housing;
a sound generator component connector connected to
said sound generation device; and
a receiver unit connected to said sound generation
device by said sound generator component connector, said
receiver unit configured to fit within a user's ear canal, said
receiver unit being positioned in an open-ear configuration
within the ear canal of said user and being dimensioned so
as to reduce insertion loss and occlusion effects,
wherein said device has a real ear insertion response
close to zero throughout a range of frequencies from 200 to
8000 Hz and a real ear occlusion effect close to zero over
said range of frequencies and wherein said device enables
the user to avoid monitoring his/her own voice while sounds
are being generated by the sound generation device.

The issues
A. The Examiner rejected claims 1, 4-33 and 35-51 under 35 U.S.C. §
103(a) as obvious over Bauman „349
1
and Bauman „483
2
(Ans. 4-8).

1
Bauman, N., WO 2004/073349 A2, published Aug. 26, 2004.
Appeal 2012-000407
Application 11/516,388

3
B. The Examiner rejected claim 34 under 35 U.S.C. § 103(a) as obvious
over Bauman „349, Bauman „483, and Fretz
3
(Ans. 8-9).
C. The Examiner rejected claim 52 under 35 U.S.C. § 103(a) as obvious
over Bauman „349, Bauman „483, and Bauman „305
4
(Ans. 9).
A. 35 U.S.C. § 103(a) over Bauman ‘349 and Bauman ‘483
The Examiner finds that:
Bauman [„349] teaches a tinnitus treatment device,
comprising: a housing (Figure 6, housing, 64) configured to
fit behind a user's ear (pg. 7, line 15; see Figure 5); a sound
generation device (Figure 4, sound processing unit, 52)
positioned within said housing (64) (pg 6, lines 29-30); a
sound generator component connector (Figure 4, sound
processing component connector, 22) connected to said
sound generation device (52) (pg. 6, lines 29-30); and a
receiver unit (Figure 4, receiver, 16) connected to said
sound generation device (52) by said sound generator
component connector (22) (pg. 6, lines 29-30; see Figure 4),
said receiver unit (16) configured to fit within a user's ear
canal, said receiver unit (16) being positioned in an open-ear
configuration within the ear canal of a user and being
dimensioned so as to reduce insertion loss and occlusion
effects

(Ans. 4-5). The Examiner finds that “Bauman [„349] teaches that the
receiver unit (Figure 4, receiver, 16) generates no more than about three
decibels of insertion loss over audible frequencies between about 200Hz and
about 5300Hz, which is considered to be „close to zero‟” but “is silent on the
quantitative occlusion effect generated by the device.” (Ans. 5). The

2
Bauman, N., US 2004/0047483 A1, published Mar. 11, 2004.
3
Fretz et al., US 2003/0002700 A1, published Jan. 2, 2003.
4
Bauman et al., US 6,048,305, issued Apr. 11, 2000.
Appeal 2012-000407
Application 11/516,388

4
Examiner finds that “Bauman „483 teaches a tinnitus treatment device that is
suspended within a user‟s ear canal that generates no occlusion effect” (Ans.
6).
The Examiner finds it obvious to “modify the receiver unit of Bauman
such that it generates an occlusion effect of less than about 2 dB over the
range of human audible frequencies as taught by Bauman „483, because
avoiding the occlusion effect increases the user‟s comfort as their own voice
is not intolerably amplified by occlusion of the ear canal” (Ans. 6).
Appellant contends that “the embodiment of Fig. 4 in the „349 patent
publication lacks a sound generator. Unit 52 is described as a sound
processing unit, not as a unit which generates sounds. Thus, the Examiner
misapprehends what is shown in Figure 4 of the reference” (App. Br. 12-13).
Appellant contends that
while the „349 publication discloses a tinnitus device with a
noise generator, it lacks any disclosure how one would
arrive at a tinnitus device which has a real ear insertion
response close to zero throughout a range of frequencies
from 200 to 8000 Hz and a real ear occlusion effect close to
zero over said range of frequencies

(App. Br. 13).
Appellant contends that the „483 patent publication does not disclose
“any tinnitus treatment device which has a real ear insertion response close
to zero throughout a range of frequencies from 200 to 8000 Hz and a real ear
occlusion effect close to zero over said range of frequencies” (App. Br. 13-
14). Appellant contends that the “disclosure in the „483 patent publication
does not enable such a device” (App. Br. 14).
Appeal 2012-000407
Application 11/516,388

5
The issue with respect to this rejection is: Does the evidence of
record support the Examiner‟s conclusion that Bauman „349 and Bauman
„483 render the claims obvious?

Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
1. The Specification teaches an assessment of “REIR (Real Ear
Insertion Response), and [REOE] (Real Ear Occlusion Effect). These were
measured using signal frequencies ranging from 200 to 8000 Hz in steps of
100 Hz” (Spec. 10-11 ¶ 0037).
2. The Specification teaches that
four devices were compared: 1) the new open ear tinnitus
device 10 in accordance with the present invention with the
receiver unit 12 in the ear canal (“V”, FIG. 1); 2) a
previously used open ear device (“G”, FIG. 2); 3) an ITE
Open Ear Acoustics instrument (“O”, FIG. 3); 4) a fully
occluded device (“S”, FIG. 4)

(Spec. 10 ¶ 0036).
3. The Specification teaches “to place a receiver of a tinnitus
device . . . in the ear canal while the remaining components of the device are
placed behind the ear” (Spec. 4 ¶ 0013).
4. The Specification teaches that “the receiver unit may have a
maximum lateral dimension less than twenty percent of the maximum lateral
dimension of a user‟s ear canal. The receiver unit 12 may have a maximum
lateral dimension of less than about 0.15 inches” (Spec. 9 ¶ 0032).
5. Figures 6 and 7 of the Specification are reproduced below:
Appeal 2012-000407
Application 11/516,388

6

“FIG. 6 is a plan view of an exemplary tinnitus device . . . FIG. 7 is a
cutaway view of a user‟s ear with the tinnitus device installed” (Spec. 5 ¶¶
0021-0022).
6. Figures 4 and 5 of Bauman „349 are reproduced below:

“FIGURE 4 is a plan view of an exemplary assembled hearing aid system
including a retaining wire; FIGURE 5 is a cutaway view of a user‟s ear with
the hearing aid system installed” (Bauman „349 4, ll. 4-7).
7. Bauman „349 teaches “a micro-receiver positioned in an open-
ear configuration within the ear canal of a user, and a sound processing unit
Appeal 2012-000407
Application 11/516,388

7
provided remote from the micro-receiver. The described hearing aid
advantageously reduces the insertion and occlusion effects” (Bauman „349
2, ll. 1-4).
8. Bauman „349 teaches that “the receiver has a dimension  that
is less than ten percent of the maximum lateral dimension or diameter of the
user‟s ear canal. In another embodiment, the receiver has a dimension  that
is less than five percent of the maximum lateral dimension or diameter of the
user‟s ear canal” (Bauman „349 2, ll. 12-15).
9. Bauman „349 teaches that the “receiver 16, intermediate
connecting portion 20 and sound processing unit 52 are illustrated in
assembled form. Sound processing component connector 22 is illustrated as
joined with the sound processing unit 52. As illustrated, an exemplary
retaining wire 54 extends from the receiver 16” (Bauman „349 6, l. 29 to 7, l.
1).
10. Bauman „349 teaches that “the behind the ear unit may
comprise, or may additionally include, a noise generator, which may be used
to generate one or more sounds. The sounds may be generated in specific
frequency ranges useful to treat tinnitus” (Bauman „349 8, ll. 6-9).
11. Bauman „349 teaches that “it has been found that the Vivatone
Device exhibits less than three decibels of insertion loss across the audible
spectrum. Also, with exception of the Oticon Device in the 500Hz to
1300Hz range, the Vivatone device exhibits lower Occlusion Effect across
the range of frequencies as compared with the comparison devices”
(Bauman „349 9, ll. 13-17).
Appeal 2012-000407
Application 11/516,388

8
12. The Examiner finds that “[s]ince the „Vivatone Device‟ was
configured in accordance with the embodiment(s) described by Bauman, it
necessarily generates the same occlusion effect” (Ans. 5).
13. Bauman „483 teaches “it is an object of the present invention to
provide a receiver, receiver placement, and a receiver casing which avoids
the occlusion effect” (Bauman „483 1 ¶ 0005).
14. Bauman „483 teaches that the “arms 30 are quite advantageous
because they allow the receiver 18 to be positioned or suspended in such a
way that the receiver 18 does not occlude the ear canal” (Bauman „483 ¶
0027).
15. Figures 2 and 3 of Bauman „483 are reproduced below:

“FIG. 2 is a front view of a suspended receiver . . . FIG. 3 is a side view of
the receiver of FIG. 2 positioned within a user‟s ear canal” (Bauman „483 1
¶¶ 0015-0016).
16. Bauman „483 teaches:
a noise generator 90 may be positioned behind the wearer‟s
ear in lieu of the microphone or amplifier and attached to a
receiver 18 positioned within the user‟s ear canal. The noise
generator 90 generates sounds to be transmitted to the
tympanic membrane for the treatment of
tinnitus/hyperacusis. The receiver 18 may have a disc 50
surrounding it or a plurality of arms 30 radiating from it in
Appeal 2012-000407
Application 11/516,388

9
order to position it within the ear canal. The disc 50 and the
arms 30 may have the structure described hereinbefore.

(Bauman „483 2 ¶ 0033).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. As noted by the Court in KSR, “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.” 550
U.S. at 421.
Analysis
Claim 1
Bauman „349 teaches “a noise generator, which may be used to
generate one or more sounds. The sounds may be generated in specific
frequency ranges useful to treat tinnitus” (Bauman „349 8, ll. 6-9; FF 10).
Bauman „349 teaches that the generator is placed in a housing configured to
fit behind a user‟s ear (FF 10). Bauman „349 teaches “a micro-receiver
positioned in an open-ear configuration within the ear canal of a user, and a
sound processing unit provided remote from the micro-receiver. The
described hearing aid advantageously reduces the insertion and occlusion
effects” (Bauman „349 2, ll. 1-4; FF 7).
Bauman „349 teaches that “it has been found that the Vivatone Device
exhibits less than three decibels of insertion loss across the audible
spectrum” (Bauman „349 9, ll. 13-17; FF 11). Bauman „483 teaches that the
Appeal 2012-000407
Application 11/516,388

10
“arms 30 are quite advantageous because they allow the receiver 18 to be
positioned or suspended in such a way that the receiver 18 does not occlude
the ear canal” (Bauman „483 ¶ 0027; FF 14).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that the person of ordinary creativity would have reasonably
improved the Bauman „349 tinnitus treatment device by incorporating the
receiver arms from the Bauman „483 tinnitus treatment device since Bauman
„483 teaches that the “arms 30 are quite advantageous because they allow
the receiver 18 to be positioned or suspended in such a way that the receiver
18 does not occlude the ear canal” (Bauman „483 ¶ 0027; FF 14). Both
Bauman „349 and Bauman „483 teach the desire to reduce occlusion of the
ear canal (FF 7, 13). Such a combination is merely a “predictable use of
prior art elements according to their established functions.” KSR, 550 U.S. at
417.
Appellant contends that the “„349 patent publication relates to a
hearing aid system and not a tinnitus treatment device. As noted above,
hearing aids such as that shown in the „349 patent publication do not contain
sound generators. In fact, the embodiment of Fig. 4 in the „349 patent
publication lacks a sound generator” (App. Br. 12).
We are not persuaded. Bauman „349 expressly teaches that “the
behind the ear unit may comprise, or may additionally include, a noise
generator, which may be used to generate one or more sounds. The sounds
may be generated in specific frequency ranges useful to treat tinnitus”
(Bauman „349 8, ll. 6-9; FF 10). This is an express suggestion to incorporate
a sound generation device into the device of Bauman „349.
Appeal 2012-000407
Application 11/516,388

11
Appellant contends that Bauman „349 “lacks any disclosure how one
would arrive at a tinnitus device which has a real ear insertion response close
to zero throughout a range of frequencies from 200 to 8000 Hz . . . three
decibels is not close to zero” (App. Br. 13).
We are not persuaded. The issue here is one of claim interpretation,
specifically, whether the limitation in claim 1 to a “real ear insertion
response close to zero throughout a range of frequencies from 200 to 8000
Hz” encompasses the reduction in insertion loss in Bauman „349 to less than
three decibels (FF 11). That is, does a teaching of “less than three decibels”
satisfy the “close to zero” limitation?
During prosecution, claim terms are given their broadest reasonable
interpretation as they would be understood by persons of ordinary skill in the
art in the light of the Specification. Therefore, we first turn to the
Specification to determine the meaning of the phrase “close to zero”. The
Specification states that the “„V‟ REIR is close to zero through the entire
frequency range” (Spec. 11 ¶ 0039). The Specification never further defines
“close to zero”. However, dependent claims limit the insertion loss
generated by the receiver unit to “no more than about eight decibels . . . over
audible frequencies between about 2200 Hz and about 5300 Hz” (see, e.g.,
claim 13).
Thus, when claim 1 uses the term “close to zero”, the broadest
reasonable interpretation of this phrase encompasses “no more than about
eight decibels,” as recited in claim 13.
The Examiner‟s reliance on the teaching in Bauman „349 of “less than
three decibels” as satisfying the “close to zero” limitation is reasonable,
Appeal 2012-000407
Application 11/516,388

12
since “less than three decibels” is certainly below eight decibels. “[D]uring
patent prosecution when claims can be amended, ambiguities should be
recognized, scope and breadth of language explored, and clarification
imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
Appellant also argues that Bauman „483 does not teach a device
having “a real ear occlusion effect close to zero over said range of
frequencies and which enables the user to avoid monitoring his/her own
voice while sounds are being generated by the sound generation device”
(Appeal Br. 14).
However, the teaching in Bauman „483 that the receiver “does not
occlude the ear canal” (Bauman „483 ¶ 0027; FF 14) supports the
Examiner‟s finding that Bauman „483 discloses a device having an occlusion
effect of “close to zero” since the teaching of a complete absence of
occlusion would reasonably suggest zero decibels of an occlusion effect.
Appellant has provided no persuasive basis to support concluding that the
device of Bauman „483 has an occlusion effect outside the range required by
claim 1.
Appellant contends that the “disclosure in the „483 patent publication
does not enable such a device. For example, while the „483 patent
publication talks about no occlusion effect, there is no discussion of over
what range of frequencies the occlusion effect occurs” (App. Br. 14).
We are not persuaded. First, Appellant has not identified any
structural difference between the claimed device and the device rendered
obvious by Bauman „349 and Bauman „483, where the structural difference
would result in an improvement which avoids occlusion effect. Without
Appeal 2012-000407
Application 11/516,388

13
such a structural difference, the Examiner has reasonably found that the
combination of the Bauman „349 and Bauman „483 devices inherently
satisfy this requirement (FF 12). Here, where “the claimed and prior art
products are identical or substantially identical . . . the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.” In re Best, 562 F.2d
1252, 1255 (CCPA 1977). Appellant has provided no evidence to satisfy
this burden.
Second, Appellant has provided no evidence that Bauman „483 is not
enabled. Antor explains that “[e]nablement of prior art requires that the
reference teach a skilled artisan to make or carry out what it discloses in
relation to the claimed invention.” In re Antor Media Corp., 689 F.3d 1282,
1289, 1290 (Fed. Cir. 2012). Antor further teaches that the Appellant must
show “that undue experimentation would be required to perform the claimed
invention based on the teaching” in the prior art. Id. at 1289. Appellant has
made no clear or specific evidentiary showing as to undue experimentation.
In particular, Appellant has provided no specific evidence that undue
experimentation would have been required to make and use a tinnitus device
having an occlusion effect close to zero based on the teachings disclosed in
Bauman „483.
Appellant contends that “[c]learly, at the time the two patent
documents were written, Appellant himself did not [know] how to arrive at
the claimed invention. To say that one of ordinary skill in the art would have
known better how to combine the references to arrive at the claimed
invention defies logic” (App. Br. 14).
Appeal 2012-000407
Application 11/516,388

14
We are not persuaded. First, the argument that Appellant did not
know how to arrive at the claimed invention is simply an assertion by the
attorney, not evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (“Attorney‟s argument in a brief cannot take the place of evidence.”).
Second, while we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are also mindful that the Supreme Court has clearly stated that “if
a technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR, 550 U.S. at 417. In this case, we conclude that
the person of ordinary skill would have recognized that the prior art was
aware that occlusion was an issue for tinnitus devices (FF 7, 13) and would
have recognized the obviousness of the combination of the arms in Bauman
„483 in the tinnitus device of Bauman „349 to minimize any occlusive effect,
independent of any teaching by the instant Specification
Claim 9
Appellant contends that “neither [reference] discloses positioning the
receiver unit of a tinnitus device at least partially within the cartilaginous
region of the ear canal” (App. Br. 14-15).
The Examiner “does not find this argument to be persuasive, and
points to Figure 5 of Bauman „349. This figure clearly depicts that the
receiver unit 16 is placed within the cartilaginous region of the ear canal”
(Ans. 12).
Appeal 2012-000407
Application 11/516,388

15
We find that the Examiner has the better position. Figure 5 of
Bauman „349 shows positioning of the receiver unit into the exact same
location as Figure 7 of the Specification, which is reasonably identified as a
cartilaginous region of the ear canal (FF 5-6).

B. 35 U.S.C. § 103(a) over Bauman ‘349, Bauman ‘483, and Fretz
Appellant contends that “Fretz does not disclose and does not render
obvious the subject matter of claim 34. There is nothing which teaches that
the receiver unit should have a maximum lateral dimension of less than
about 0.15 inches” (App. Br. 16).
The Examiner finds that “Fretz et al. clearly teaches in paragraph
[0078] that the eartip 14d and 14e of Figures 20 and 21 may have a length
of 14.0 mm and a diameter at a widest part of about 5.6 mm” (Ans. 12).
We find that the Examiner has the better position. The discovery of
an optimum value of a results-effective variable in a known process is
normally obvious. In re Antonie, 559 F.2d 618, 620 (CCPA 1977); In re
Aller, 220 F.2d 454, 456 (CCPA 1955). In this case, Fretz teaches that the
“eartips according to one embodiment may have an overall length of about
14.0 mm and a diameter at a widest part of about 5.6 mm. However, the
dimensions which have been described are merely examples of the eartip
dimensions which may be used” (Fretz 5 ¶ 0078). Thus, while Fretz only
exemplifies a diameter of “about 5.6 mm” which is 0.22 inches, larger than
“less than about 0.15 inches” limitation in claim 34, Fretz also recognizes
that the dimensions are optimizable variables. In this case, the skilled
worker optimizing receiver size in a tinnitus treatment device would
Appeal 2012-000407
Application 11/516,388

16
reasonably recognize that the size must properly relate to the dimensions of
the patient‟s ear being treated, as Bauman „349 recognized that preferably
“the receiver has a dimension  that is less than five percent of the maximum
lateral dimension or diameter of the user‟s ear canal” (Bauman „349 2, ll. 12-
15; FF 8). Consequently, when used in a patient with a smaller ear, the
ordinary artisan would have reasonably optimized the size of the tinnitus
receiver as appropriate.
C. 35 U.S.C. § 103(a) over Bauman ‘349, Bauman ‘483, and Bauman
‘305
Appellant reiterates the argument that “neither figure 6 or figure 4
shows a sound generation device. Both figures show a sound processing
unit” (App. Br. 16).
We are not persuaded. Both Bauman „349 and Bauman „483 teach
sound generation devices. Bauman „349 teaches that “the behind the ear unit
may comprise, or may additionally include, a noise generator, which may be
used to generate one or more sounds. The sounds may be generated in
specific frequency ranges useful to treat tinnitus” (Bauman „349 8, ll. 6-9;
FF 10). Bauman „483 teaches:
a noise generator 90 may be positioned behind the wearer‟s
ear in lieu of the microphone or amplifier and attached to a
receiver 18 positioned within the user‟s ear canal. The noise
generator 90 generates sounds to be transmitted to the
tympanic membrane for the treatment of
tinnitus/hyperacusis. The receiver 18 may have a disc 50
surrounding it or a plurality of arms 30 radiating from it in
order to position it within the ear canal. The disc 50 and the
arms 30 may have the structure described hereinbefore.

Appeal 2012-000407
Application 11/516,388

17
(Bauman „483 2 ¶ 0033; FF 16). We agree with the Examiner that it would
have been obvious to incorporate the sound generation device for tinnitus
into the behind the ear unit as taught by Bauman „349 and Bauman „483 (FF
10, 16) and to further include a volume control as taught by Bauman „305,
which teaches that the “level of transmitted noise is adjusted by the volume
control” (Bauman „305, col. 6, l. 52) since a volume control would permit
individual adjustment of the noise level to suit the individual patient.
SUMMARY
In summary, we affirm the rejection of claims 1 and 9 under 35
U.S.C. § 103(a) as obvious over Bauman „349 and Bauman „483. Pursuant
to 37 C.F.R. § 41.37(c)(1)(vii), we also affirm the rejection of claims 4-8,
10-33 and 35-51, as these claims were not argued separately.
We affirm the rejection of claim 34 under 35 U.S.C. § 103(a) as
obvious over Bauman „349, Bauman „483, and Fretz.
We affirm the rejection of claim 52 under 35 U.S.C. § 103(a) as
obvious over Bauman „349, Bauman „483, and Bauman „305.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

alw