Vibes LLC

Patent Trials and Appeals BoardDec 10, 2021

2021003777 (P.T.A.B. Dec. 10, 2021)

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. 15/344,920 11/07/2016 Jackson Robert Mann 0512.000001US01 4440 26813 7590 12/10/2021 MUETING RAASCH GROUP 111 WASHINGTON AVE. S., SUITE 700 MINNEAPOLIS, MN 55401 EXAMINER FISHER, VICTORIA HICKS ART UNIT PAPER NUMBER 3786 NOTIFICATION DATE DELIVERY MODE 12/10/2021 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): ptodocketing@mrgs.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT MANN JACKSON Appeal 2021-003777 Application 15/344,920 Technology Center 3700 Before PHILLIP J. KAUFFMAN, MICHELLE R. OSINSKI, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–12, 14–17, and 19–21. Appeal Br. 22. Claims 13 and 18 are cancelled. See Claims App. 1–6. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies “Vibes LLC” as the real party in interest. Appeal Br. 2. Appeal 2021-003777 Application 15/344,920 2 CLAIMED SUBJECT MATTER The application is titled “Earplug.” Spec. 1. Claims 1, 12, and 20 are independent. Claims App. 1–6. We reproduce the independent claims, below, with emphases added to particular language addressed in this Decision: 1. An earplug extending along an earplug axis from a distal end to a proximal end, wherein the earplug comprises: an outer portion extending between an outer portion first end and an outer portion second end, wherein the outer portion first end corresponds to the distal end of the earplug, and wherein the outer portion comprises: a proximal portion extending from the outer portion second end, a distal portion extending from the outer portion first end, and a slant portion between the proximal portion and the distal portion, wherein the outer portion defines an interior space and an opening at the outer portion second end extending into the interior space, wherein an outer surface of the proximal portion extends parallel to the earplug axis between and terminating at the outer portion second end and the slant portion; and an inner portion extending between an inner portion first end and an inner portion second end, wherein the proximal end of the earplug is closer to the inner portion second end than the inner portion first end, wherein at least a portion of the inner portion is coupled to the outer portion and at least the inner portion first end is located within the interior space of the distal portion of the outer portion, wherein at least the inner portion second end is located outside of the outer portion, wherein the inner portion defines an aperture extending between the inner portion first end and the inner portion second end, wherein a distance between the inner portion second end and the outer portion second end is greater than a length of the Appeal 2021-003777 Application 15/344,920 3 proximal portion of the outer portion measured along the earplug axis. 12. An earplug extending along an earplug axis from a distal end to a proximal end, wherein the earplug comprises: an outer portion extending between an outer portion first end and an outer portion second end, wherein the outer portion defines an interior space and an opening at the outer portion second end extending into the interior space; an inner portion extending between an inner portion first end and an inner portion second end, wherein at least a portion of the inner portion is coupled to the outer portion and the inner portion first end is located within the interior space of the outer portion, wherein the inner portion defines an aperture extending between the inner portion first end and the inner portion second end; a filter portion located in the aperture of the inner portion; an eartip portion removably coupled directly to the inner portion second end and configured to be positioned in an ear canal, wherein the eartip portion extends between an eartip portion first end and an eartip portion second end and defines an interior space, wherein the inner portion second end is within the interior space of the eartip portion, wherein the outer portion second end is within the interior space of the eartip portion, and wherein the outer portion second end is closer to the eartip portion first end than the eartip portion second end, wherein the eartip portion second end corresponds to the proximal end of the earplug, wherein a distance between the inner portion second end and the eartip portion second end is greater than a distance that the outer portion extends within the interior space of the eartip portion. 20. An earplug extending along an earplug axis from a distal end to a proximal end, wherein the earplug comprises: an outer portion extending between an outer portion first end and an outer portion second end, wherein the outer portion defines an opening at the outer portion second end and an interior space, and wherein the outer portion first end corresponds to the distal end of the earplug; Appeal 2021-003777 Application 15/344,920 4 an inner portion extending between an inner portion first end and an inner portion second end, wherein at least a portion of the inner portion is coupled to the outer portion and located within the interior space of the outer portion, wherein the inner portion defines an aperture extending between the inner portion first end and the inner portion second end, wherein a diameter of the inner portion is smaller than a diameter of the opening at the outer portion second end such that the inner portion is spaced away from the outer portion at the outer portion second end to define a void therebetween; a filter portion located in the aperture of the inner portion; an eartip portion removably coupled to the inner portion second end and configured to be positioned in an ear canal, wherein the eartip portion extends between an eartip portion first end and an eartip portion second end and defines an interior space, wherein the inner portion second end is closer to the eartip portion second end than the eartip portion first end, and wherein the eartip portion second end corresponds to the proximal end of the earplug. Claims App. 1–5 (emphases added). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Reynolds US Pat. No. 2,619,960 Dec. 2, 1952 Killion US Pat. No. 5,113,967 May 19, 1992 Chang US Pat. No. 5,631,965 May 20, 1997 Chen US Pub. No. 2013/0294634 A1 Nov. 7, 2013 See Final Act. 3–22. Appeal 2021-003777 Application 15/344,920 5 REJECTIONS The following rejections are before us on appeal: Claims Rejected 35 U.S.C. § Reference(s)/Basis 1–4, 6, 7, 10, 11 102 Killion 12, 14–17, 19–21 102 Chang 1, 5 102 Reynolds 8, 9 103 Reynolds, Chen See Final Act. 3–22. OPINION I. Anticipated by Killion (Claim 1–4, 6, 7, 10 and 11) In rejecting independent claim 1 as anticipated by Killion, the Examiner submits a first and a second annotated version of Killion’s Figure 1 (Final Act. 6), a copy of which we reproduce, below: Appeal 2021-003777 Application 15/344,920 6 Figure 1 “is a cross-sectional view of the earplug assembly constructed in accordance with” Killion’s invention. Killion 5:43–45. The Examiner finds that Killion discloses an earplug comprising, inter alia, inner portion 15 and ~mt• ei'ld Annotated Figure 1 of KIiiion ~lX~ftit~'l ~f~t} . 2~"~1 ~tt~~: i~~siit~- -~~st- (l~t· ~~ ~· §l~~d;m 1~:•t~ ~~ J~i~ Second Annotated Figure 1 of Killion w ~~-G~rtk~J} :~r~d ~i~d ••:r ~t:t~l\~1 '~- # I! ~ m~ Appeal 2021-003777 Application 15/344,920 7 outer portion 14, “wherein at least a portion of inner portion (15) is coupled to the outer portion (14) . . . and at least the inner portion first end is located within the interior space of the distal portion of the outer portion (14).” Final Act. 4–5 (citing Killion, Fig. 2). The Examiner provides annotations to illustrate “wherein a distance (‘a’ . . . [)] between the inner portion second end and the outer portion second end is greater than a length ‘b’ of the proximal portion of the outer portion measured along the earplug axis.” Id. at 5. In explaining how distance “a” is greater than distance “b,” as required by claim 1, the Examiner states, It is noted that the claim defines a proximal portion “extending from the outer portion second end,” but does not define how far the proximal portion extends. Therefore, the proximal portion is chosen to be a portion that has a length that is less than the distance between the inner portion second end and the outer portion second end[.] Id. (citing Killion, col. 6:14–8:57, Figs. 1–4a). The Examiner further explains that “the proximal portion [is] part of the outer portion (cap 14 . . .) as defined in the Annotated Figure 1 of Killion.” Ans. 6 (citing www.dictionary.com definition of “portion”). Appellant argues that Killion does not disclose wherein “a distance between the inner portion second end and the outer portion second end is greater than a length of the proximal portion of the outer portion measured along the earplug axis as set forth in independent claim 1.” Appeal Br. 11; see also Claim App. 1. We agree with Appellant. The Examiner’s interpretation of the claimed limitation is unreasonably broad. The Examiner arbitrarily selects length “b” to be less Appeal 2021-003777 Application 15/344,920 8 than “a” simply to satisfy the claimed limitation, yet this construction conflicts with the express claim language and is inconsistent with the Specification. In particular, the Examiner erred in concluding that “the claim defines a proximal portion ‘extending from the outer portion second end,’ but does not define how far the proximal portion extends.” Final Act. 5 (emphasis added). Contrary to the Examiner’s determination, the claim explicitly recites “an outer surface of the proximal portion extends parallel to the earplug axis between and terminating at the outer portion second end and the slant portion.” Claims App. 1 (emphasis added). As such, claim 1 requires that the proximal portion extends between the “outer portion second end and the slant portion.” Id. Based on this interpretation, Killion’s “distance between the inner portion second end and the outer portion second end” would not be greater “than a length of the proximal portion of the outer portion measured along the earplug axis,” as required by claim 1. Claims App. 1. To illustrate, we produce our own annotated version of Killion’s Figure 1, below: Appeal 2021-003777 Application 15/344,920 9 As shown with our red annotations, above, if we measure the proximal portion (distance “b”) as “extend[ing] parallel to the earplug axis between and terminating at the outer portion second end and the slant portion,” as required by claim 1, distance “b,” the “length of the proximal portion,” is greater than “a,” which is the “distance between the inner portion second end and the outer portion second end.” Claims App. 1. We further note that the Examiner’s interpretation is inconsistent with the Specification. Although the Examiner must apply the broadest reasonable interpretation to claim terms, and cannot import limitations from the Specification, the interpretation must be consistent with the Specification. See, e.g., In re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here, the Specification describes the length of 34A a > Fig. 1 /10 b 2 , 11 "slant po ion Appeal 2021-003777 Application 15/344,920 10 proximal portion 134 as being greater than the length distance between the inner portion send end and the outer portion second end. See, e.g., Spec. ¶¶32, 33; see also id. at Fig. 3 (depicting length 134 as less than distance 102). Accordingly, we reverse the Examiner’s rejection of claim 1 as anticipated by Killion. Moreover, the Examiner relies on the same unsupportable claim construction in rejecting dependent claims 2–4, 6, 7, 10, and 11. See Final Act. 6–11. As such, these dependent claims inherit the same rejection infirmity as the rejection of independent claim 1. See id. Accordingly, we also reverse the Examiner’s rejection of claims 2–4, 6, 7, 10, and 11 as anticipated by Killion. II. Anticipated by Chang (Claims 12, 14–17 and 19–21) Claims 14–17 and 19 depend from independent claim 12, whereas claim 21 depends from claim 20. We address independent claims 12 and 20, along with their dependent claims, separately, below. a. Claims 12, 14–17, and 19 In rejecting independent claim 12 as anticipated by Chang, the Examiner submits an original (upper) and an annotated (lower) version of Chang’s Figure 5 (Final Act. 14), which we reproduce below: Appeal 2021-003777 Application 15/344,920 11 Figure 5 (upper) “is a schematic section through an in-the-ear hearing protector designed in accordance with” Chang’s invention. Chang 4:56–58. As the Examiner attempts to show in the annotated version of Figure 5 (lower), the Examiner explains that Chang discloses eartip portion 13 and 17 23 22 20 45 ,. ~ d3 • ,. ·• • • ·• • " • ,. l2 : ... . .. . 11 ! 36 • • d2 ! • • • • l!I • ... 44 38 Figure 5 . . - . .. J> ; • •• L1 34 ~i~f end Appeal 2021-003777 Application 15/344,920 12 the claimed outer portion, finding that “12 is the outer portion which contains inner portion 28 + 30).” Final Act. 12. The Examiner further explains that “the casing 12 of Chang . . . is attached to the ear piece 13.” Ans. 7 (citing Chang 5:3–4). The Examiner quotes Chang’s disclosure that “wall 43 of connector 36 has an internal female screw thread 39, which mates with male screw thread 32 of section 12b of casing 12 to join the connector and ear pie[ce] together.” Id. (quoting Chang, 6:44–46). The Examiner finds that “[a] threadable screw connection is a well-known removable coupling mechanism . . . [and that] the casing 12 of Chang . . . is removable coupled to ear piece 13 via screw threads 32, 39.” Id. Appellant argues that Chang does not disclose “an eartip portion removably coupled directly to the inner portion second end as set forth in independent claim 12.” Appeal Br. 14 (emphasis added). Appellant reiterates that “independent claim 12 recites that the eartip portion is removably coupled directly to the inner portion second end,” and the Examiner cannot treat Chang’s casing 12 as both the “inner portion” and “outer portion,” as they are distinct components. See Reply Br. 4 (emphasis added). We agree with Appellant. Independent claim 12 explicitly requires, inter alia, “an outer portion,” “an inner portion . . . wherein at least a portion of the inner portion is coupled to the outer portion . . . [and] is located within the inter space of the outer portion,” and “an eartip portion removably coupled directly to the inner portion second end.” Claims App. 3. We disagree with the Examiner that Chang discloses the claimed limitations, namely, “an eartip portion Appeal 2021-003777 Application 15/344,920 13 removably coupled directly to the inner portion.” To illustrate, we reproduce our own annotated version of Chang’s Figure 5, below: Our red annotations include the Examiner’s findings as to the claimed “inner portion,” “outer portion,” “eartip,” and the screw threads that “removably couple” the “eartip portion” to the “inner portion.” See Final Act. 11–12; see also Ans. 7–8. Although threads 32, 39 removably couple “outer portion” 12 to “eartip” 13 (see Ans. 7–8), this does not satisfy the claimed limitation of “an eartip portion removably coupled directly to the inner portion.” Claims App. 3 (emphasis added). Indeed, even if we take the Examiner’s position that Chang’s “flexible plastic tube 28” and “rubber boot 30” can reasonably 24 17 screw threads "removably couple" 22 11 "eartip portion 13" with "inner portion" 14a ! "inner portion" 32 42 . . . . . . . . . . 31 - -u . -· ..... · ....... ·. ·. . . . . . . . . . . . . . . . . . . . . . . . . . ' . . . . . . . . ~ . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33 38 "eartip" 34 Appeal 2021-003777 Application 15/344,920 14 be construed as the claimed “inner portion,” we do not find these structures as “removably coupled directly to” Chang’s “eartip portion” 13. See Final Act. 11–12. The Examiner’s findings conflict with Chang’s Figure 5. Accordingly, we reverse the rejection of claim 12 as anticipated by Chang. The rejection of dependent claims 14–17 and 19 inherit the same rejection infirmity as the rejection of independent claim 12. See Final Act. 14–15. As such, we also reverse the rejection of dependent claims 14–17 and 19 as anticipated by Chang. b. Claims 20 and 21 Claim 20 requires that the inner portion of the earplug is “spaced away from the outer portion at the outer portion second end to define a void therebetween.” The precise issue before us is whether Chang’s inner portion is spaced away from the outer portion to form a void therebetween, as required by claim 20. In rejecting independent claim 20 as anticipated by Chang, the Examiner cites to Chang’s Figure 5, which we reproduce, below: Appeal 2021-003777 Application 15/344,920 15 Figure 5 is a schematic section through earplug 11. Chang 4:56–58, 5:3. The Examiner finds that Chang’s Figure 5 discloses earplug 11 with an outer portion (casing 12) and an inner portion (plastic tube 28, rubber boot 30). Final Act. 15–16. The Examiner explains that there must be a void between the outer portion (casing 12) and the inner portion (plastic tube 28, rubber boot 30) because solvent 29 is positioned therebetween. Id. at 16; Ans. 8–9. Appellant argues that Chang’s inner portion cannot be spaced away from the outer portion to define a void as claimed because solvent 29 is therebetween. Appeal Br. 16. The unstated premise of Appellant’s argument is that claim 20 precludes anything (e.g., solvent 29) being between the inner and outer portions. Appellant’s arguments do not cite a definition of “void” and do not cite to any portion of the Specification. Indeed, the Specification does not use the term “void.” In the summary of claimed subject matter, 24 17 23 25 18 22 14a 20 45 15 11 i 32 42 3 44 31'- 2a21 /nFn~~-~~~~-~-~-~-~~-i. i. i. 1 35 \ "--12 36 38 34 Figure 5 Appeal 2021-003777 Application 15/344,920 16 with regard to the limitation as issue, Appellant cites to Figure 3 and paragraph 32 of the Specification. Appeal Br. 8. We reproduce an annotated version of Appellant’s Figure 3, below: FIG. 3 100 ~ l"i ner portion" 102 "ea ·p portion· "second end" o SE CTIO A-A ' I ... 155~ "" 101 180 134 136 138 Appeal 2021-003777 Application 15/344,920 17 Figure 3 is a cross sectional view of an earplug, and our version reproduced above includes our red annotations. See Spec. ¶ 18. In particular, Figure 3 depicts, as shown by our annotations, an “inner portion,” an “outer portion,” and an “eartip portion.” See Fig. 4; see also id. ¶¶ 29, 30, 35 (defining second end region 122 of outer portion 120, inner portion 140, and eartip portion 160). As shown in our annotated Figure 3, a part of the “eartip portion” resides in the “void” between the “outer portion second end” and the “inner portion.” Accordingly, Appellant’s own construction of “void” conflicts with the very figure cited by Appellant as providing subject matter support for the claimed limitation. See Appeal Br. 8.2 Having reviewed the claim limitation in light of the Specification, we agree with the Examiner that Chang discloses “the inner portion is spaced away from the outer portion at the outer portion second end to define a void therebetween,” even if Chang’s solvent 29 is present within that “void.” See Ans. 8–9. Accordingly, we affirm the rejection of independent claim 20 as anticipated by Chang. Furthermore, Appellant does not present separate arguments contesting the rejection of dependent claim 21. See Appeal Br. 17. As such, we also affirm the rejection of claim 21 as anticipated by Chang. 2 If we accept Appellant’s interpretation of the claimed limitation, in that the term “void” precludes the presence of a solvent, we are skeptical whether the Specification provides the requisite written description support under 35 U.S.C. § 112(a). Appeal 2021-003777 Application 15/344,920 18 III. Anticipated by Reynolds (Claims 1 and 5) In rejecting independent claim 1 as anticipated by Reynolds, the Examiner submits two annotated versions of Reynolds’s Figure 2 (Final Act. 20), which we reproduce, below: Appeal 2021-003777 Application 15/344,920 19 /3 I 2 L .~nn~~t ix~rt..~·m Zr~iJ -$'.r~~t ~~fti~~ ;?n~i fMK~ •· 2 48 inner p,mtion ~,,. ,., '"1,P.L&---J>/C' ~t'QA,....-J'(J '8 (HJ~\~f 3"AA''"'ti""t~ r~ ...... ~~ .... ~\.s, ,. $-.~rt~t~ ~~t ~fit! ~f~t,~f i)~)ft~)~~ ~;~-t ~~){j· . ~J~Jte:r ~:~~tt~~r.~ 1i1 ~f}1 Appeal 2021-003777 Application 15/344,920 20 Figure 2 is a longitudinal section view of Reynolds “improved ear plug.” See Reynolds 1:47–49. The Examiner finds that [The] outer surface (bottom surface of the proximal portion defined in the Annotated Fig. 2 of Reynolds, which is positioned outward away from the center longitudinal axis of the device) of the proximal portion (see Annotated Fig. 2 of Reynolds) extends parallel (as shown in Figure 2) to the earplug axis (a horizontal axis extending through the earplug as it is seen in Fig. 2) between and terminating at (as shown in Annotated Fig. 2 of Reynolds) the outer portion second end (see Annotated Fig. 2 of Reynolds). Final Act. 18 (emphases added). The Examiner explains that “it is clear from the Annotated Fig. 2 of Reynolds . . . that the defined proximal portion includes a bottom-most, outer edge that is horizontal.” Ans. 10 (emphasis replaced). Appellant disputes the Examiner’s finding, arguing that “Reynolds does not describe that an outer surface of the proximal portion extends parallel to the earplug axis between and terminating at the outer portion second end and the slant portion as set forth in independent claim 1.” Appeal Br. 18–19 (emphasis added). We agree with Appellant. Claim 1 requires an “outer surface of the proximal portion extends parallel to the earplug axis between and terminating at the outer portion second end and the slant portion.” Id. (emphases added). The Examiner’s finding that Reynolds discloses this structure is not supportable for at least two reasons. First, Reynolds’s Figure 2 does not appear to have a “proximal portion . . . [that] terminat[es] at the outer portion second end and the slant portion.” Appeal 2021-003777 Application 15/344,920 21 In particular, Reynolds’s “slant portion” terminates at the “second end,” precluding the presence of a “proximal portion” between the two. Second, the Examiner appears to ignore the term “outer” when addressing the limitation. See, e.g., Ans. 10 (“the examiner notes that claim 1 broadly recites a proximal portion with no further limitation as to the size or shape of the proximal portion and therefore, the examiner can reasonably interpret the claimed proximal portion to correspond to the structure defined in the Annotated Figure 2 of Reynolds”) (emphasis added). To illustrate our point, we produce our own annotated version of the Examiner’s annotated Figure 2, below: The above figure is a longitudinal section view of Reynolds earplug that includes our red annotations and the Examiner’s annotations. See Final Act. :;at1on1t.;ontroI Numoer: 1 o/J44,~~u nit: 3786 outer surface of ' 2 inner surface of "outer portion" Appeal 2021-003777 Application 15/344,920 22 20. Even if we give the Examiner the benefit of the doubt and construe Reynolds’s “slant portion” to be part of the “proximal portion,” the Examiner appears to rely on an inner surface of Reynolds’s “proximal portion” to satisfy the claimed “outer surface of the proximal portion.” See Ans. 10. Although the identified inner surface appears to “extend[] parallel to the earplug axis,” it is unreasonable for the Examiner to consider this structure as satisfying the claimed “outer surface of the proximal portion.” See id. at 10–11 (emphasis added). We agree with Appellant that “the outer surface of the cap 12 of Reynolds (e.g., at the location of the alleged proximal portion) is angled relative to the earplug axis.” Reply Br. 6 (emphasis added). Accordingly, we reverse the Examiner’s rejection of independent claim 1 as anticipated by Reynolds. We also reverse the rejection of dependent claim 5, which inherits the same rejection infirmity. See Final Act. 20–21. IV. Unpatentable Over Reynolds and Chen (Claims 8 and 9) Claims 8 and 9 depend from claim 1 and the rejection of these claims inherit the same rejection infirmities as the rejection of claim 1 as anticipated by Reynolds. See Final Act. 22–23. For the same reasons that we reverse the rejection of independent claim 1 as anticipated by Reynolds, we also reverse the rejection of claims 8 and 9 as unpatentable over Reynolds in view of Chen. Appeal 2021-003777 Application 15/344,920 23 CONCLUSION We reverse the rejection of claims 1–12, 14–17, and 19. We affirm, however, the rejection of claims 20 and 21 as anticipated by Chang. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6, 7, 10, 11 102 Killion 1–4, 6, 7, 10, 11 12, 14–17, 19–21 102 Chang 20, 21 12, 14–17, 19 1, 5 102 Reynolds 1, 5 8, 9 103 Reynolds, Chen 8, 9 Overall Outcome 20, 21 1–12, 14–17, 19 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED IN PART