Ex Parte Westermann et al

Patent Trial and Appeal BoardOct 31, 2016

12104220 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/104,220 04/16/2008 23373 7590 11/02/2016 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 11/02/2016 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 REQUEST FOR REHEARING STATEMENT OF THE CASE On October 17, 2016, Appellants filed a Request for Rehearing (hereinafter "Req. Reh'g")under 37 C.F.R. Â§ 41.52 from the Decision on Appeal (Decision) of the Patent Trial and Appeal Board (Board), mailed August 15, 2016. 1 In the Decision, we affirmed the Examiner's Final Rejection of claims 1-11. We deny the Request for Rehearing. 1 "The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board." 37 C.F.R. Â§ 41.52(a)(l). Appeal2015-001853 Application 12/104,220 In their request, Appellants repeat the arguments made in their previous briefs, and assert that the Board unreasonably broadened the teachings of the cited references, did not properly consider the obviousness of the proposed combination, and did not explain the modifications of the combination that would be required to render obvious the subject matter of the claims. (Req. Reh'g 2.) The arguments raised by Appellants have already been considered and found unpersuasive in our Decision. In particular, we are not persuaded by Appellants' contention that the combination of Carlson with Fretz is not obvious because the "types" of devices considered by Carlson are purportedly different in kind from the types of hearing aid components that the claimed invention accommodates. (Req. Reh'g 3--4.) To the contrary, we agree with the Examiner that one of ordinary skill would adapt the pertinent teachings of Carlson to the hearing aid apparatus of Fretz and not be dissuaded by the fact that Fretz specifically deals with accommodating variations in non-hearing aid devices. (Decision 4--5.) Thus, for example, Appellants' argument that the Carlson arrangement is not capable of indicating whether the earplug is closed or open unduly narrows the combined teachings and suggestions of Carlson and Fretz. (Req. Reh' g 4.) To one of ordinary skill in the art, the combination would not be limited to merely detecting the type of sound tube, but not the type of earplug, any more than would be the case for the preferred embodiment disclosed in the Specification. In summary, having fully considered the arguments in the Request for Rehearing, on this record, we are not persuaded that we have misapprehended or overlooked any points raised by Appellants. We find 2 Appeal2015-001853 Application 12/104,220 none of Appellants' arguments are persuasive that our Decision was in error. We have reconsidered our Decision, but decline to grant the relief requested. 3 Appeal2015-001853 Application 12/104,220 DECISION In view of the foregoing discussion, we have granted Appellants' Request to the extent that we have reconsidered the original Decision but have denied it with respect to making any changes to the Decision. 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). REHEARING DENIED 4