Ex Parte Sacha et al

Patent Trial and Appeal BoardJul 21, 2016

12905421 (P.T.A.B. Jul. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/905,421 10/15/2010 140905 7590 07/25/2016 Schwegman Lundberg & Woessner I Starkey P.O. Box 2938 Minneapolis, MN 55402 FIRST NAMED INVENTOR Michael Karl Sacha 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. 899.243US1 7935 EXAMINER FALEY, KATHERINE A ART UNIT PAPER NUMBER 2652 NOTIFICATION DATE DELIVERY MODE 07/25/2016 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): uspto@slwip.com slw@blackhillsip.com docketing@cpaglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL KARL SACHA and ROBERT P. JACOBY Appeal2014-008877 Application 12/905,421 Technology Center 2600 Before DEBRA K. STEPHENS, WILLIAM M. FINK, and JOSEPH P. LENTIVECH, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's Final Rejection of claims 1-20, the only claims pending in the application on appeal. We have jurisdiction over the pending claims under 35 U.S.C. Â§ 6(b). We affirm. 1 According to Appellants, the real party in interest is Starkey Laboratories, Inc. Br. 2. Appeal2014-008877 Application 12/905,421 STATEMENT OF THE CASE Appellants 'Invention Appellants' invention generally relates to an in-the-ear (ITE) hearing aid with a capacitive sensor. Spec. i-f 2. The capacitive sensor serves as a capacitive switch that can be used to support or perform a function. Spec. 27. Claim 1, which is illustrative, reads as follows: 1. An apparatus for a wearer having an ear canal, compnsmg: an in-the-ear housing adapted to fit in the wearer's ear canal, the in-the-ear housing having an outer surface; hearing assistance electronics disposed within the in-the- ear housing; capacitive sensing electronics connected to the hearing assistance electronics; and a first capacitive sensor including a first sensing electrode positioned on or near the outer surface of the in-the- ear housing and conforming to a curvature of the in-the-ear housing, the first sensing electrode connected to the capacitive sensing electronics, the first capacitive sensor including ground traces about the first sensing electrode to decrease an area of a motion sensitive zone of the first capacitive sensor about the in- the-ear housing, wherein the capacitive sensing electronics is adapted to measure a change in capacitance associated with a motion of a finger or hand proximal to the first sensing electrode and to provide a signal to the hearing assistance electronics, the hearing assistance electronics configured to perform at least one operation based on the signal. Rejections Claims 1-3, 6, 8, 12, 13, 16, and 17 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Lowmiller et al. 2 Appeal2014-008877 Application 12/905,421 (US 2009/0316941 A 1; published Dec. 24, 2009), and Zack Albus, PCB- Based Capacitive Touch Sensing with MSP430, Texas Instruments Application Report SLAA363A (2007)(Albus). Final Act. 2--4. Claims 4 and 5 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Lowmiller, Albus, and Sacha et al. (US 2008/0292126 Al; published Nov. 27, 2008). Final Act. 4--5. Claims 7, 9-11, 14, 15, 18, and 19 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Lowmiller, Albus, and Ditlefsen et al. (WO 2009/118221 Al; published Oct. 1, 2009). Final Act. 5-7. Claim 20 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Lowmiller, Albus, and Slater (US 5,774,557; issued June 30, 1998). Final Act. 7. Issues on Appeal Did the Examiner err by finding the combination of Lowmiller and Albus teaches or suggests "a first capacitive sensor including a first sensing electrode positioned on or near the outer surface of the in-the-ear housing and conforming to a curvature of the in-the-ear housing," as recited in claim l? Did the Examiner properly combine the teachings of Lowmiller and Albus? ANALYSIS Appellants direct their arguments to claim 1. Appellants do not substantively argue claims 2-20 separately, but instead rely on the same 3 Appeal2014-008877 Application 12/905,421 arguments presented with respect to claim 1. See Br. 7-9. Accordingly, claims 2-20 stand or fall together with claim 1. 37 C.F.R. Â§ 41.37(c)(l)(iv). We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner has erred. We disagree with Appellants' conclusions. We adopt as our own the findings and reasons set forth by the Examiner in the Final Office Action from which this appeal is taken and the reasons set forth in the Examiner's Answer in response to Appellants' Appeal Brief. See Final Act. 2-7; Ans. 2-8. We highlight and address specific findings and arguments for emphasis as follows. Appellants contend the Examiner erred in rejecting claim 1 because the combination of Lowmiller and Albus fails to teach or suggest "a first capacitive sensor including a first sensing electrode positioned on or near the outer surface of the in-the-ear housing and conforming to a curvature of the in-the-ear housing," as recited in claim 1. Br. 8. The Examiner finds Figure 2 of Lowmiller depicts electrode 39 as conforming to the curvature of housing 31 and, therefore, teaches or suggests the disputed limitation. Ans. 8. Appellants do not substantively address the Examiner's findings regarding this limitation but, instead, merely state "Appellants are unable to find this feature, among others, in the cited references." Br. 8. Consequently, Appellants have not persuaded us that the Examiner erred in finding Lowmiller teaches or suggests the disputed limitation. Appellants also contend the combination of Lowmiller and Albus is improper. Br. 7-8. Appellants contend the combination is improper because "Albus does not relate to hearing assistance devices, so one of skill in the art would not combine [Albus] with Lowmiller." Br. 7. Appellants essentially contend the combination is improper because Albus is non- 4 Appeal2014-008877 Application 12/905,421 analogous art. In an obviousness analysis, "[ t ]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem. Innovention Toys, LLC v. MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). Appellants' Specification discusses using various capacitive sensors for improving the controls of in an ITE hearing aid. Spec. i-f 27. Albus relates to the design of a single-touch capacitive sensor interface and "provides an overview of the technology, details about system careabouts and details for different methodologies of capacitive touch sensing implementations." Albus, Abstract. Albus' discussion regarding "an overview of the technology, details about system careabouts, and details for different methodologies of capacitive touch sensing implementations" would have logically commended itself to a skilled artisan considering the use of capacitive sensors generally and to a skilled artisan considering use of capacitive sensors specifically for improving the controls of an ITE hearing aid. As such, Albus is analogous prior art. Appellants also contend Albus could not be physically combined with 5 Appeal2014-008877 Application 12/905,421 an in-the-ear hearing assistance apparatus, as recited in claim 1. Br. 7. According to Appellants, Albus teaches a sensor pad having a surface area of a human finger when pressed down (about 10 mm in diameter) and, therefore, "the sensor pad of Albus would be too large to use with an in-the- ear hearing assistance apparatus as recited in claim 1." Br. 7-8. We do not find Appellants' contention persuasive. "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference" (In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d at 425)), but rather whether "a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention" (Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). The Examiner has provided articulated reasoning with a rational underpinning as to why one skilled in the art would have found it obvious to combine the teachings of Lowmiller and Albus. Final Act. 3. Modifying Lowmiller' s capacitive sensor to include ground traces as taught by Albus would have predictably used prior art elements according to their established functions- an obvious improvement. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). For the foregoing reasons, we are not persuaded the Examiner erred in rejecting claim 1 and claims 2-20 which fall with claim 1. DECISION We affirm the Examiner's rejection of claims 1-20 under 35 U.S.C. Â§ 103(a). 6 Appeal2014-008877 Application 12/905,421 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7