Ex Parte Lowmiller et alDownload PDFPatent Trial and Appeal BoardJun 18, 201512214898 (P.T.A.B. Jun. 18, 2015) Copy Citation 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. 12/214,898 06/23/2008 Donald Allan Lowmiller 7187-A-15 3496 77553 7590 06/18/2015 MARVIN A. GLAZER 2141 E. HIGHLAND AVE SUITE 155 PHOENIX, AZ 85016 EXAMINER BRINEY III, WALTER F ART UNIT PAPER NUMBER 2615 MAIL DATE DELIVERY MODE 06/18/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte DONALD ALLAN LOWMILLER, FAN WU, and SAMUEL L. THOMASSON1 __________ Appeal 2012-010903 Application 12/214,898 Technology Center 2600 __________ Before DONALD E. ADAMS, CHRISTOPHER G. PAULRAJ, and ROBERT A. POLLOCK, Administrative Patent Judges. POLLOCK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1–9. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. STATEMENT OF THE CASE Appellants’ invention relates to a hearing aid includ[ing] at least one capacitive switch for controlling or communicating with the hearing aid by touch. The capacitive switch is an electrode on the inside of the housing coupled to a touch detector. Touching the outside of the hearing aid adjacent the electrode produces a switching operation. The hearing aid includes a programmed 1 Appellants identify the Real Party in Interest as Zounds Hearing, Inc. Br. 1. Appeal 2012-010903 Application 12/214,898 2 microprocessor coupled to the touch detector. The microprocessor is programmed to effect predetermined functions in response to particular touch patterns. Spec. 2:1–9. Claims 2–9 depend from claim 1, which reads as follows: 1. A hearing aid including a housing containing electronics for processing audio signals and other functions characterized in that: the hearing aid further includes at least one capacitive switch coupled to said electronics for operating the hearing aid. The following grounds of rejection are before us for review: I. The Examiner rejects claim 1 under 35 U.S.C. § 102(e) as anticipated by Preves.2 II. The Examiner rejects claim 2 under 35 U.S.C. § 103(a) as unpatentable over the combination of Preves, Heide,3 and Eichelberger.4 III. The Examiner rejects claims 3–7 and 9 under 35 U.S.C. § 103(a) as unpatentable over the combination of Preves and Martin.5 IV. The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as unpatentable over the combination of Preves and Brimhall.6 FACTUAL FINDINGS We have reviewed Appellants’ contentions that the Examiner erred in rejecting claims 1–9 in view of the cited art. Br. 3–8. With respect to the rejections of claims 1–4, 8, and 9, we disagree with Appellants’ conclusions 2 Preves et al., US 2005/0141740 Al, published June 30, 2005. 3 Heide, US 4,679,240, issued July 7, 1987. 4 Eichelberger et al., 4,290,052, issued Sept. 15, 1981. 5 Martin et al., US 5,710,820, issued Jan. 20, 1998. 6 Brimhall, US 6,359,993 B2, issued Mar. 19, 2002. Appeal 2012-010903 Application 12/214,898 3 and adopt as our own the factual findings and analysis set forth in the Examiner’s Answer. We agree with Appellants, however, that the Examiner has not made a prima facie showing of obviousness for claims 5–7, as set forth below. ANALYSIS Claim 1 In rejecting claim 1, the Examiner finds that Preves “expressly disclose[s] the use of a capacitive switch to turn [the] hearing aid . . . on/off.” Ans. 13. Notably, Preves teaches that “higher voltages from the various voltage taps of [the] battery … may be used to turn off and on the hearing aid . . . via non mechanical switch means such as a membrane switch, a capacitive switch, a piezo switch, etc.” Preves ¶ 40 (emphasis added). Appellants contend that the Examiner errs in finding that claim 1 discloses a capacitive switch. Br. 3–6. For the reasons set forth in the Examiner’s Answer, we do not find Appellant’s argument persuasive. See e.g., Ans. 13–15. To the contrary, Preves’ express recitation of “a capacitive switch” in connection with turning on and off hearing aid, clearly “describe[s] the patented subject matter with sufficient clarity and detail to establish that the subject matter existed in the prior art and that such existence would be recognized by persons of ordinary skill in the field of the invention.” See Crown Operations International Ltd. v. Solutia Inc., 289 F.3d 1367, 1375 (Fed. Cir. 2002). Claim 2 Claim 2 further recites “wherein the capacitive switch is an electrode on the inside of the housing and touching the outside of the hearing aid Appeal 2012-010903 Application 12/214,898 4 adjacent the electrode produces a switching function.” Claim 2 stands rejected as obvious in light of Preves, Heide, and Eichelberger. Appellants’ contentions with respect to Preves, discussed above, apply to all rejections at issue. With respect to Heide, Appellants argue that the Examiner errs because the reference “does not disclose or suggest a capacitive switch as claimed.” Br. 7. “But one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). Rather, each reference must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the Examiner does not cite Heide for a description of capacitive switches, but for suggesting how to “orient[] the switch so a user could interact with a touch surface of the switch through an external surface of [Preves’] hearing aid.” Ans. 15, 16; see id at 6. Accordingly, we do not find Appellants’ argument persuasive. Appellants further argue that “[t]he sensor disclosed by the Heide patent requires holes in the housing of the hearing aid,” which “allows moisture, wax, dirt, and oils to work their way into the housing.” Br. 7. According to Appellants, Heide, therefore, teaches away from the present invention because the Specification teaches that an object of the invention is “to provide a hearing aid that is relatively impervious to ambient conditions.” Id. As an initial matter, we note that teaching away requires a reference to criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellants do not, however, Appeal 2012-010903 Application 12/214,898 5 direct us to, nor do we discern, any evidence that Heide requires holes in the housing of the hearing aid, let alone disparage an alternative design. We also agree with the Examiner that Appellants’ argument is not commensurate with the scope of claim 2: “Nowhere does the claim recite a limitation requiring imperviousness to ambient conditions, . . . [therefore] Appellant[s] ha[ve] no basis for asserting that Heide teaches away from the claimed invention.” Ans. 16; see Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 689 (Fed. Cir. 2008) (“When the claim addresses only some of the features disclosed in the specification, it is improper to limit the claim to other, unclaimed features.”) (quoting Ventana Med. Sys., Inc. v. Biogenex Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006)). The Examiner cites Eichelberger as teaching, inter alia, a capacitive touch sensor. See Ans. 6–7. Appellants contend that the Eichelberger cannot be combined with Preves because Eichelberger “relates to a keypad, not a hearing aid.” Br. 6 (referencing “special problems” in hearing aid design, “e.g. space”). We do not find this argument persuasive for the reasons set forth at pages 16 and 17 of the Examiner’s Answer. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981). For the reasons set forth above and in the Examiner’s Answer, we do not disturb the Examiner’s rejection of claim 2. Appeal 2012-010903 Application 12/214,898 6 Claims 3, 4, and 9 Claims 3, 4, and 9 stand rejected in light of Preves and Martin. The Examiner relies on Martin as, inter alia, evidence that it would have been obvious to modify the hearing aid of Preves to include multiple [capacitive] switches. Ans. 8; see id. (“[O]ne of ordinary skill could have readily learned from Martin, that hearing aids can include multiple switches associated with multiple functions”). Appellants argue that Martin discloses “a single pole, triple throw switch. The Examiner does not explain how this is implemented as a capacitive switch. The proposed combination is technically impossible, making the rejection clearly erroneous.” Br. 7. We do not find Appellants’ argument persuasive. First, as the Examiner points out, “Appellant[s] provide no objective evidence or reasoning in support of the premise that implementing a single-pole, triple- throw switch as a capacitive switch would be technically impossible.” Ans. 17. Attorney argument is not evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Mere lawyer’s arguments and conclusory statements, unsupported by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Moreover, Appellant’s [sic] objection is misplaced because obviousness does not require physical[] incorporation of devices described in multiple references. Here, the rejection proposes implementing the function of Martin’s switches with capacitive switches. (Final Rejection at 6-7.) Appellant [sic] has not provided any evidence or reason suggesting that the functions of Martin’s switches could not be implemented with capacitive switches. Ans. 17; see In re Keller, 642 F.2d at 425. Appeal 2012-010903 Application 12/214,898 7 Claims 5–7 Claim 5 and its dependent claims, claims 6 and 7, also stand rejected in light of Preves and Martin, discussed above. Claim 5 recites the limitation “wherein said microprocessor is programmed to effect predetermined functions in response to particular touch patterns.” Appellants contend that the Examiner has not pointed to any disclosure or suggestion of touch patterns in the cited prior art. We agree with Appellants as to these claims. Claim 5 requires functionality that responds to a multiplicity of “touch patterns.” Preves’ disclosure of a hearing aid having a capacitive touch sensor, may render obvious a single touch pattern—where a pattern is broadly construed as “a touch of a capacitive switch.” See Ans. 10. The Examiner does not, however, address where Preves, or any other reference, suggests a multiplicity of touch patterns such that “[a] microprocessor is programmed to effect predetermined functions in response to [those] particular touch patterns.” Accordingly, we do not sustain the rejection of claims 5–7. Claim 8 Claim 8 stand rejected over the combination of Preves and Brimhall. Appellants argue that the Examiner errs because Brimhall fails to disclose or suggest a hearing aid housing that is “impervious to wax, dirt, and oils,” as recited in claim 8. Br. 8. The Examiner, however, finds that Brimhall suggests building a hearing aid housing “as a ridged shell of stainless steel or bio-compatible and moisture resistant material,” such that “[w]ax, dirt and oil would not penetrate the housing because it would be a shell of stainless steel, a closed geometric shape made from a solid material.” Ans. 19 (citing Brimhall 4:47–57); see also, Brimhall 4:55–57 (“Notably, the housing . . . Appeal 2012-010903 Application 12/214,898 8 provides protection of the internal components from moisture, dirt, and oil from cerumen (ear wax).”). Finding no error in the Examiner’s analysis, we do not disturb the rejection of claim 8. SUMMARY I. We affirm the rejection of claim 1 under 35 U.S.C. § 102(e) as unpatentable over Preves. II. We affirm the rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over the combination of Preves, Heide, and Eichelberger. III. We affirm the rejection of claims 3 under 35 U.S.C. § 103(a) as unpatentable over the combination of Preves and Martin. Claims 4 and 9 are not separately argued and fall with claim 3. IV. We reverse the rejection of claims 5–7 under 35 U.S.C. § 103(a) as unpatentable over the combination of Preves and Martin. V. We affirm the rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over the combination of Preves and Brimhall. 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 sl Copy with citationCopy as parenthetical citation