Ex Parte Clausen et alDownload PDFPatent Trial and Appeal BoardJan 19, 201712278285 (P.T.A.B. Jan. 19, 2017) Copy Citation 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. 12/278,285 09/25/2009 Tais Clausen 0079124-000013 1144 21839 7590 01/23/2017 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 EXAMINER CHANG, SUNRAY ART UNIT PAPER NUMBER 2121 NOTIFICATION DATE DELIVERY MODE 01/23/2017 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): ADIPDOCl@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex Parte TAIS CLAUSEN, RUNE FISKER, NIKOLAJ DEICHMANN, and DAVID FISCHER Appeal 2015-002487 Application 12/278,285 Technology Center 2100 Before ELENI MANTIS MERCADER, JOHNNY A. KUMAR, and BETH Z. SHAW, Administrative Patent Judges. SHAW, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1—18, which represent all the pending claims. App. Br. 5. Claim 1 is the only independent claim. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was conducted on January 9, 2017. We reverse and enter a NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b). Appeal 2015-002487 Application 12/278,285 INVENTION Appellants’ invention is directed to a method for creating non occluding earpieces with or without a tube bore. See Spec. 1,11. 30-31. Claim 1 is illustrative and is reproduced below: 1. A method for producing a computer-generated non-occluding earpiece model, the method comprising: obtaining a scan of an outer ear and auditory canal or of an impression of the outer ear and auditory canal; creating a three-dimensional occlusive computer model of at least a part of the outer ear and at least a part of the auditory canal from the scan, said three-dimensional occlusive computer model substantially conforming to a shape of the part of the outer ear or the part of the auditory canal or both, said model further including a feature to enable cooperation with electronics located outside of the ear to aid hearing without occluding the outer ear and the auditory canal; selecting an area of interest of the three-dimensional model resulting in an earpiece model having a non-occluding outer ear part and a non-occluding auditory canal part, the area of interest including a portion of the outer ear part and a portion of the auditory canal part of the three-dimensional model, the area of interest of the three-dimensional model being selected so as to create an earpiece model that is substantially open in the outer ear portion and in the auditory canal part to ensure that the earpiece model is non-occlusive; and removing the portion of the three-dimensional occlusive computer model that does not include the area of interest, thereby obtaining an earpiece computer model for a hearing aid having a non-occluding outer ear part, a non-occluding canal area part, and a feature to enable cooperation with electronics located outside of the ear to aid hearing without occluding the outer ear and the auditory canal. 2 Appeal 2015-002487 Application 12/278,285 REJECTION The Examiner rejected claims 1—18 under 35 U.S.C. § 103(a) as being unpatentable over Deichmann (US 2004/0107080 Al; publ. June 3, 2004) and von Dombrowski (US 2006/0159298 Al; publ. July 20, 2006). Final Act. ^U10. ANALYSIS We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejection, and the Examiner’s response to the Appellants’ arguments. Appellants argue that claim 1 recites that the model includes a feature to enable cooperation with electronics located outside of the ear to aid hearing, and the portion of von Dombrowski relied upon is not in the outer ear or the auditory canal, it is behind the ear. App. Br. 1. However, claim 1 recites, in part, “creating a three-dimensional occlusive computer model of at least a part of the outer ear and at least a part of the auditory canal from the scan.” We are not persuaded by Appellants’ arguments that the language “at least a part of the outer ear” excludes a part behind the ear. Although Appellants argue that “the outer ear is the visible portion of the ear that collects and guides vibrations into the ear canal,” and that “this cannot be the external portion that is behind the ear” (Reply Br. 2), we are not persuaded that the claim, as drafted, makes this distinction. Here, Appellants’ argument regarding the “outer ear” is not commensurate with the limitations of the claims, and we decline to read the argued limitation into the claims. Appellants also argue that there is no reason to combine Deichmann and von Dombrowski because there would be no logical reason to make any 3 Appeal 2015-002487 Application 12/278,285 portion of the von Dombrowski device by the generating process of Deichmann. App. Br. 7. Deichmann teaches a method for computer controlled modeling of customized earpieces. Ans. 9 (citing Deichmann Abstract, || 3, 13—15, 213—14, 194). The Examiner points out that von Dombrowski teaches components that are “[cjustom shaped to fit the specific user’s ear geometry.” Ans. 10 (citing von Dombrowski 198). Thus, we understand the Examiner’s position to be that one of skill in the art would have been motivated to make or design von Dombrowski’s ear pieces, which can be custom shaped, using Deichmann’s method for computer controlled modeling of customized earpieces, because von Dombrowski’s ear pieces are custom shaped and because Deichmann provides a computer modeling method for custom shaping ear pieces. Although Appellants argue that the second embodiment of von Dombrowski states that piece does not need an ear mold (App. Br. 7 (citing von Dombrowski | 87)), another embodiment cited by the Examiner describes that a component can be custom shaped. See Ans. 10. We are persuaded, however, with Appellants’ conclusion that the Examiner erred in finding that the combination of cited references teaches “obtaining an earpiece computer model for a hearing aid having a non occluding outer ear part, a non-occluding canal area part,” as recited in claim 1 (emphasis added). Reply Br. 3. The Examiner has not pointed to a portion of the references that teaches “obtaining an earpiece computer model for a hearing aid having a non-occluding outer ear part, a non-occluding canal area part.” The Examiner has not made a finding as to what teaches the canal area part of the earpiece. For these reasons, we do not sustain the 4 Appeal 2015-002487 Application 12/278,285 rejection of independent claim 1. We address additional arguments with respect to dependent claims 17 and 18 below. Dependent Claim 17 The Examiner finds that in Figure 12 of von Dombrowski, “the outer ear part has a body and it is made of [a] ring of material in [the] horizontal direction.” Final Act. 10 (emphasis omitted). Appellants argue that Figure 12 of von Dombrowski does not disclose any ring of material, let alone a ring of material “within the outer ear.” App. Br. 10. We agree with Appellants. Dependent Claim 18 Claim 18 recites the method of claim 1, “wherein the feature enables connection with a behind-the-ear hearing aid.” Appellants argue that the Examiner cannot cite that the device is connected to the same device that the Examiner alleges is the device. We agree with Appellants. CONCEUSION For the foregoing reasons, we do not sustain the rejection of claim 1, or claims 2—18, which depend from claim 1. NEW GROUND OF REJECTION 37 C.F.R. § 41.50(b) We make the following new ground of rejection using our authority under 37 C.F.R. § 41.50(b). Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over Deichmann and von Dombrowski. We adopt as our own the findings set forth by the Examiner in the 5 Appeal 2015-002487 Application 12/278,285 Grounds of Rejection concerning the preamble and the “obtaining,” “creating,” and “selecting” steps of claim 1. Final Act. 4—5. We adopt the Examiner’s findings that Deichmann teaches removing the portion of the three-dimensional occlusive computer model that does not include the area of interest, thereby obtaining an earpiece computer model for a hearing aid. Final Act. 5—6. Deichmann does not explicitly teach thereby “having a non-occluding outer ear part, a non-occluding canal area part, and a feature to enable cooperation with electronics located outside of the ear to aid hearing without occluding the outer ear and the auditory canal.” von Dombrowski teaches a non-occluding outer ear part (Fig. 12, Abstract), a non-occluding canal area part (para. 95 (“the in-the-ear-canal component, which is for example as small as possible in a non-occluding embodiment”), and a feature to enable cooperation with electronics located outside of the ear to aid hearing without occluding the outer ear and the auditory canal (paras. 2 and 211, wireless signal transmission). It would have been obvious to a person of ordinary skill in the art at the time of the invention to combine the teachings of Deichmann’s method for computer controlled modeling of customized earpieces (Deichmann Abstract, || 3, 13—15, 98, 213—14, 194) with von Dombrowski’s ear pieces, which can be custom shaped, using Deichmann’s method for computer controlled modeling of customized earpieces, because von Dombrowski’s ear pieces are custom shaped and because Deichmann provides a computer modeling method for custom shaping ear pieces—an obvious predictable variation. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable 6 Appeal 2015-002487 Application 12/278,285 results.” KSR, 550 U.S. at 416. “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. We leave the patentability determination of the remaining claims to the Examiner. See Manual of Patent Examining Procedure § 1213.02 (9th ed. Rev. 07.2015, Nov. 2015). DECISION We reverse the rejection of claims 1—18. We enter a new ground of rejection of claim 1 pursuant to 37 C.F.R. § 41.50(b) (2010). This section provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” TIME PERIOD 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under §41.52 by the Board upon the same Record. . . . 7 Appeal 2015-002487 Application 12/278,285 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). REVERSED 37 C.F.R. 41.50(b) 8 Copy with citationCopy as parenthetical citation