Ex Parte Boesen

Patent Trials and Appeals Board

Jun 27, 2019

14815644 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/815,644 07/31/2015
133690 7590 07/01/2019
Goodhue, Coleman & Owens, P.C.
12951 University Ave
Suite 201
Clive, IA 50325
FIRST NAMED INVENTOR
Peter V. Boesen
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.
BRAGI GmbH-P0030Cl 5790
EXAMINER
ARMSTRONG, ANGELA A
ART UNIT PAPER NUMBER
2659
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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):
docketing@goodhue.com
eofficeaction@appcoll.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER V. BOESEN
Appeal2018-004851
Application 14/815,644
Technology Center 2600
Before JOSEPH L. DIXON, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to an earpiece to be worn by a user and a
method for providing such an earpiece including "an earpiece housing, at
least one microphone within the earpiece housing, a speaker within the
earpiece housing ... a pulse oximeter associated with the earpiece housing,"
1 Appellant indicates that the inventor is the real party in interest. (App. Br.
4.)
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Application 14/815,644
and "an intelligent control operatively connected to the pulse oximeter."
Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An earpiece adapted for being worn by a user, the
earpiece compnsmg:
an earpiece housing;
at least one microphone within the earpiece housing;
a speaker within the earpiece housing;
a pulse oximeter associated with the earpiece housing
and positioned at an outer surface of the earpiece housing;
a short range transceiver disposed within the earpiece
housing;
wherein the earpiece is configured to receive audio
through the transceiver and transduce the audio at the speaker.
(App. Br. 31 (Claims Appendix).)
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Aceti et al.
("Aceti")
Tillgren et al.
("Tillgren")
Rueda
US 6,283,915 Bl
US 6,339,706 Bl
us 6,157,727
2
Sept. 4, 2001
Jan. 15,2002
Dec. 5, 2000
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Application 14/815,644
REJECTIONS
The Examiner made the following rejections:
Claims 1-20 stand rejected on the ground of non-statutory double
patenting as being unpatentable over claims 1-17 of U.S. Patent No.
9,438,294 B2 in view of Tillgren.
Claims 1-5, 7, and 9-16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Aceti in view of Tillgren. 2
Claims 6, 8, and 17-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Aceti in view of Tillgren, and further in view of
Rueda.
ANALYSIS
Non-Statutory Double Patenting Rejection of Claims 1-20
Appellant's arguments, in the Briefs, do not address the Examiner's
rejection of claims 1-20 based upon non-statutory double patenting.
Additionally, the Examiner does not expressly state that the non-statutory
2 Although the Examiner combines two references (Aceti and Tillgren)
under an obviousness rationale to reject claims 1-5, 7, and 9-16 (see Final
Act. 5-6 ("Aceti fails to specifically teach the transceiver within the housing
is configured to receive audio through the transceiver and transduce audio at
the speaker" but "Tillgren teaches a short range wireless data and
communication link .... It would have been obvious to modify the system
of Aceti to implement a short range transceiver in the hearing aid device")),
the Examiner's statement of the rejection states "[ c ]laim(s) 1-5, 7, and 9-16
are rejected under pre-AIA 35 U.S. C. 102(e) as being anticipated by Aceti
... in view of Tillgren" (see Final Act. 5 ( emphasis added).) We find this
oversight on the Examiner's part is harmless error and interpret the rejection
of claims 1-5, 7, and 9-16 to be rejected under 35 U.S.C. § 103(a) over
Aceti and Tillgren, not under 35 U.S.C. § 102(e).
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Application 14/815,644
double patenting rejection is withdrawn in the Examiner's Answer. As a
result, this rejection is still before us and Appellant has not identified an
error in the Examiner's rejection for us to review nor has Appellant
attempted to file a terminal disclaimer to obviate the rejection. Accordingly,
we, proforma, sustain the Examiner's rejection of claims 1-20 based upon
non-statutory double patenting.
35 U.S.C. § 103(a) Rejections of Claims 1--4, 7-13, and 15-20
With respect to claim 1, Appellant contends "Aceti does not teach or
suggest a pulse oximeter positioned at an outer surface of an earpiece
housing" as claimed. (App. Br. 12.) Appellant acknowledges Aceti's
monitoring assembly measures blood oxygenation, but argues the
"monitoring assembly (102) ... is placed into a shell before being placed
into an earmold" and "[b ]eing placed into a shell, which does not interface
or otherwise touch a part of the ear, before being placed into an earmold is
not conducive to an element being placed at an outer surface of an earpiece
housing" as required by claim 1. (App. Br. 12-13; Reply Br. 14.)
Appellant also argues "placing [ Aceti' s] ... pulse oximeter at an outer
surface would require substantial modification of the process of constructing
the disposable in-the-ear monitoring instrument as taught in Aceti." (App.
Br. 15-16.) Additionally, Appellant argues the claimed pulse oximeter at an
outer surface of the earpiece housing "is in direct contrast to Aceti" which
"states specifically and strongly to put the monitoring device within the shell
to protect the monitoring device." (Reply Br. 14--15, 19 (citing Aceti 3: 19-
21).) Appellant further argues the Examiner's combination of Aceti and
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Application 14/815,644
Tillgren lacks articulated reasoning and a reasonable expectation of success.
(App. Br. 14--15, 17; Reply Br. 16.) We do not agree.
We agree with and adopt the Examiner's findings as our own. (Final
Act. 5-6; Ans. 2---6.) Particularly, we agree with the Examiner that Aceti's
monitoring assembly ( element 102, shown in Figure 7) teaches the claimed
"pulse oximeter associated with the earpiece housing," and that "placing the
oximeter [ of Aceti] at an optimum location on a[ n] outer surface [ of the
earpiece housing] so as to ensure accurate measurements is an obvious step
requiring only routine skill in the art[]." (Final Act. 5 (citing Aceti 5:20-23,
5:46-48, 7:18-20); Ans. 2--4 (citing Aceti 7:12-16, Fig. 7).)
Aceti' s Figure 7 is reproduced below with additional markings for
illustration.
/
FIG. 7
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Aceti's Figure 7 shows a cross-sectional view of a disposable in-the-ear
monitoring instrument 100 including a shell 14 ( a flexible hollow cylindrical
element) with ribs 15 and ribs 17, an earmold 16, and a monitoring assembly
102. Aceti 5:3-5, 5:19-23, 6:63---67, 7:1-2.
Aceti's Figure 7 shows a pulse oximeter (monitoring assembly 102) is
associated with the earpiece housing (shell 14), as required by claim 1. (See
Aceti 5: 12-22 ("monitoring assembly 102 are conventional components
used for measuring such vital health signs as pulse ... or blood
oxygenation"); Ans. 2-3.)
As further recognized by the Examiner, "monitoring assembly 102 is
shown at an opening [110] of the hollow shell/ear mold assembly" where the
"hole or space [110] extending longitudinally through the monitoring ear
instrument 100 ... provides venting when the device is in the user's ear and
provides for outside sounds to enter the ear." (Ans. 2-3 (citing Aceti 5: 16-
24, 7: 12-16, Figs. 6-7).) Thus, the "venting or flow of air and/or sounds [in
Aceti' s earpiece 100 shown in Figure 7] suggests an opening or exposure to
an outer surface within the device," and "[t]he placement of the monitoring
assembly [102] at the outward opening of the device within the venting
space of 110, exposes the monitoring assembly [102] to the opening of the
device or outer surface of the earpiece." (Ans. 3.) Particularly, placing
Aceti's monitoring assembly 102 (pulse oximeter) at the outward opening of
venting space 110 of earpiece 100 would position the pulse oximeter at an
outer surface of the earpiece housing ( e.g., at an outward end of housing 14
or at the housing's ribs 15 and 17 positioned at outward openings of the
earpiece, as shown in Aceti's Figure 7).
As the Examiner observes, a skilled artisan would have had good
reason to place Aceti's monitoring assembly 102 (pulse oximeter) at the
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outward opening of venting space 110 of earpiece 100--the reason being to
increase the "[monitoring assembly's] level of exposure to the user's
signals" and "to ensure the monitoring assembly is exposed [to light signals
from the user's blood vessels in the ear] so as to accurately monitor health
vital signals." (Ans. 3--4; see Aceti 5:31-37 (the monitoring assembly 102
includes "one or more light sources ... and one or more photo-active
devices ( e.g. photocells, phototransistors) ... to determine blood
oxygenation by monitoring the color of light that is reflected from the blood
vessels in the eardrum"), 5 :45--4 7 ("the light source and photocell may be
used to measure both pulse rate and blood oxygenation"), 6:3-5 ("color
signals returned by the photocell or photocells in the monitoring instrument
[ are analyzed] to determine blood oxygenation").)
Thus, we concur with the Examiner that Figure 7 of Aceti evidences
the obviousness of positioning a pulse oximeter at an outer surface of an
earpiece housing. (Ans. 2-5.) We also agree with the Examiner that
positioning Aceti' s pulse oximeter "at an outer surface of the earpiece
housing" as recited in claim 1 ( or "at an outer portion of the earpiece
housing" as recited in claim 19) "so as to accurately measure vital signs is an
obvious step requiring only routine skill in the art" and routine
experimentation by the skilled artisan. (Ans. 3--4.)
We are also unpersuaded by Appellant's argument that "placing
[ Aceti' s] ... pulse oximeter at an outer surface would require substantial
modification of the process of constructing the disposable in-the-ear
monitoring instrument as taught in Aceti" and would require "plac[ing] the
monitoring assembly at an outer surface of the earmold." (App. Br. 15-16
( emphasis added).) Neither the Examiner's rejection, nor claim 1 requires
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placing an oximeter at an outer surface of an earmold. (See Ans. 2--4.)
Rather, placing Aceti' s pulse oximeter at the outward opening of venting
space 110 of earpiece 100 is sufficient for positioning the oximeter at an
outer surface of the earpiece housing (items 14, 15, 17 in Aceti's Figure 7).
Appellant also has provided insufficient argument and evidence that (i)
placing Aceti' s pulse oximeter at the outward opening of venting space 110
would require substantial modification of Aceti' s manufacturing process, or
that (ii) placing Aceti' s pulse oximeter at the outward opening of venting
space 110 of earpiece 100 would not protect the oximeter. (See App. Br. 15-
16; Reply Br. 14--15, 19.)
As to Appellant's argument that "the Examiner failed to establish that
there would be a reasonable expectation of success in combining the
teachings ofTillgren with Aceti to arrive at claim 1" (App. Br. 14) and
"failed to provide a suitable rationale for establishing a prima facie
conclusion of obviousness with respect to claim 1," (App. Br. 17) we find
the Examiner has provided an articulated reasoning to include, in Aceti' s
earpiece, a transceiver for receiving audio and transduce the audio at the
speaker as taught by Tillgren. (Final Act. 5---6; Ans. 5---6.) Moreover, the
Examiner has articulated reasons to combine the prior art teachings from the
references and provided a rational underpinning to support the legal
conclusion of obviousness, i.e., "to implement a short range transceiver in
the hearing aid device for the purpose of facilitating the transmission of
voice signals, so as to improve the functionality and earpiece device [ of
Aceti]" and to "facilitat[e] telephone communications, as suggested by
Tillgren, in the system of Aceti, for the purpose of providing enhanced
communication to the user by allowing the user access to making phone
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calls on telephones or mobile phones." (Final Act. 5---6; Ans. 6.) We find
the Examiner has provided reasoned explanations in response to Appellant's
arguments. (Ans. 5-6.) The Examiner has also provided a reasoned
explanation regarding the feasibility of the combination. (Ans. 5---6.)
Appellant generally disagrees without specifically addressing the
Examiner's rationale to combine the teachings of the two references.
Merely alleging that the references fail to support an obviousness rejection is
insufficient to persuade us of Examiner error. Attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and Ex
parte Belinne, No. 2009-004693, 2009 WL 2477843, at *3--4 (BPAI Aug.
10, 2009) (informative), available at
https ://www. uspto. gov/ sites/ default/files/ip/boards/bpai/ decisions/inform/f dO
9004693.pdf.
As Appellant's Briefs have not shown error in the Examiner's
proffered prima facie case of obviousness under§ 103(a), we sustain the
Examiner's decision in rejecting independent claim 1, dependent claim 19,
and dependent 2--4, 7, and 8, not separately argued, under
35 U.S.C. § 103(a).
We also sustain the Examiner's§ 103(a) rejection of independent
claim 18 and dependent claim 20, for which Appellant submitted no specific
arguments for patentability.
With respect to independent claim 9, Appellant submits arguments
similar to claim 1, asserting that "Aceti does not teach or suggest a pulse
oximeter that can be positioned at a surface of an ear" as claimed. (See App.
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Br. 19-23; Reply Br. 22-30.) Appellant also argues the Examiner did not
provide any analysis as to how "modifying the method of creating the
disposable in-the-ear monitoring instrument to place the monitoring
assembly at an outer surface of an earmold in order to interface with a
surface of an ear would have been obvious to one of ordinary skill in the art
to arrive at claim 9." (App. Br. 23.)
We are not persuaded by Appellant's arguments. First, we note that
method claim 9 does not require the pulse oximeter to be positioned in a
particular location on an outer surface of an earmold (as Appellant argues).
Instead, claim 9 merely requires "obtaining measurements with the pulse
oximeter, the pulse oximeter positioned at a surface of an ear." Thus, claim
9 merely requires the pulse oximeter to contact the ear, which is an obvious
and likely occurrence when Aceti' s earpiece is inserted into the ear canal.
For example, with a pulse oximeter placed at the outward opening of venting
space 110 of Aceti' s earpiece 100 ( as discussed supra with respect to claim
1 ), when the earpiece is introduced into the external auditory canal, the
oximeter would contact the wall of the auditory canal (i.e., the surface of the
outer or middle ear), when, for example, the user's auditory canal is
particularly narrow or twisted. (See Ans. 2-5.)
Thus, Appellant's arguments have not persuaded us of error in the
Examiner's rejection of claim 9. We, therefore, sustain the Examiner's
decision in rejecting independent claim 9, and dependent claims 10-13 and
15-17, not separately argued, under 35 U.S.C. § 103(a).
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35 U.S.C. § 103(a) Rejection of Claims 5 and 14
Claim 5 depends from claim 1, and further recites "the microphone
comprises a bone conduction sensor." Appellant contends Aceti "is a
hearing aid" and "does not teach a bone conduction sensor," and "one skilled
in the art would not have even modified Aceti to include a bone conduction
sensor." (App. Br. 18; Reply Br. 21.)
Appellant's arguments are not persuasive because, as the Examiner
finds, Aceti' s conventional hearing aid-incorporated in the monitoring
instrument, and further including miniaturized microphones receiving and
separating composite acoustical signals-"suggest[ s] a teaching of a bone
conduction sensor" as claimed. (Ans. 6 (citing Aceti 5:25-29 and 5:48-52);
Final Act. 6 (citing Aceti 3: 1--4, 4: 1---6, 7: 18-20).) Particularly, Aceti's
"conventional hearing aid [that] can ... be incorporated in the disposable in-
the-ear monitoring instrument" suggests the inclusion therein of a bone
conduction sensor, because a bone conduction sensor was conventional
technology known to one skilled in the art of hearing aids at the time of
Appellant's invention. 3 (See Aceti 7: 18-20; Ans. 6.)
3 For example, Boesen (US 6,094,492, issued July 25, 2000, cited in
Appellant's application in an Information Disclosure Statement filed on
November 2, 2015) shows that bone conduction sensors for hearing aids
were known to the skilled artisan at the time of Appellant's invention. (See
Boesen 4: 18-26 ("The bone conduction sensor 14 is of standard construction
and may be obtained from various hearing aid manufactures, including
ReSound, Oticon and others. . . the bone conduction sensor 14 may be of
the acceleration type and utilize a piezoelectric pick-up" but "[o]ther pick-
ups that can be used with the present invention, include, but are not limited
to, those of the magnetic type, electret condenser type, IC type, and semi-
conductor type. All are well-known in the art.") (emphasis omitted), Fig. 2;
see also https://en.wikipedia.org/wiki/Bone_conduction (last accessed June
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Accordingly, Appellant's arguments have not persuaded us of error in
the Examiner's rejection of claim 5. Therefore, we sustain the Examiner's
obviousness rejection of claim 5, and claim 14 reciting similar limitations
and argued for the same reasons. (App. Br. 14.)
35 U.S.C. § 103(a) Rejection of Claim 6
Claim 6 depends from claim 2, and further recites "the intelligent
control [in the earpiece] is configured to perform foreign language
translation of voice input from the at least one microphone to produce a
translation at the speaker."
Appellant contends "Rueda is directed to two separate devices" which
"is contrary to claim 6, which recites that the intelligent control, which is
part of the earpiece, performs the foreign language translation of a voice
input." (App. Br. 27 (emphasis added).) Appellant argues "Rueda does not
teach an earpiece comprising of an intelligent control ... configured to
perform foreign translation," but rather uses "a bidirectional data
transmission connection between the hearing aid and the translation system
where the already translated audio is delivered to the hearing aid"; thus,
Rueda does not teach "a hearing aid configured to perform the translation for
speech production at the hearing [aid]." (Reply Br. 34--35.)
We are not persuaded by Appellant's arguments, and agree with the
Examiner that "Rueda' s system teaches performing the translation for
speech production at the hearing aid," and combining "the translation
capabilities of Rueda in the hearing aid assembly of Aceti and Tillgren
24, 2019) ( discussing "[t ]he first description, in 1923, of a bone conduction
hearing aid")).
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provides an intelligent control configured to perform foreign language
translation of voice input from the at least one microphone to produce a
translation at the speaker" as claimed. (Ans. 8; Final Act. 8-9.)
For additional emphasis, we note Appellant's claimed "earpiece" of
claim 6 does not preclude two separate devices from being part of the
earpiece. Thus, Appellant's argument that "Rueda is directed to two
separate devices .. .. [which] is contrary to claim 6" is not supported by
corresponding language in claim 6 (and its base claims 1 and 2). (See App.
Br. 27 (emphasis added).) Appellant's claim 6 (and base claims 1 and 2)
also does not require "a hearing aid configured to perform the translation
... at the hearing [aid]" as Appellant asserts. (See Reply Br. 35 ( emphasis
added).) Rather, Appellant's claim 6 requires an earpiece whose intelligent
control is configured to perform the translation. We, therefore, agree with
the Examiner that Rueda's disclosure of a hearing aid and a translation
system teaches and suggests Appellant's claimed earpiece (Rueda's hearing
aid and translation system) comprising an intelligent control (Rueda's
translation system) configured to perform translations, as recited in claim 6.
(Final Act. 8 (citing Rueda 2:39--45, 4:24--29); Ans. 7-8; see also Rueda
2 :21-26 ("If, in the production of the communication system, miniaturizable
electronic components are available which are adequate particularly for the
construction of the translation system" then "the hearing aid and the
translation system can be combined into a portable unit which can be worn
on the head ... of the user").)
Thus, Rueda's earpiece (hearing aid and translation system combined
into a portable unit worn on the head of the user) comprises an intelligent
control (Rueda's translation system) configured to perform foreign language
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translation, as required by claim 6. (See Rueda 4:24--29; Ans. 7-8.)
Accordingly, Appellant's arguments have not persuaded us of error in the
Examiner's rejection of claim 6. Therefore, we sustain the Examiner's
obviousness rejection of claim 6.
CONCLUSIONS
The Examiner did not err in rejecting (1) claims 1-20 based upon
non-statutory double patenting, and (2) claims 1-20 based upon
obviousness.
DECISION
For the above reasons, we AFFIRM the Examiner's non-statutory
double patenting rejection of claims 1-20, and the Examiner's obviousness
rejections of claims 1-20 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv) (2016).
AFFIRMED
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