Ex Parte Clausen et al

Patent Trial and Appeal Board

Jan 19, 2017

12278285 (P.T.A.B. Jan. 19, 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.
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.
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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
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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
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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
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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
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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. . . .
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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)
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