Rune Fisker et al.Download PDFPatent Trials and Appeals BoardApr 10, 202013502296 - (D) (P.T.A.B. Apr. 10, 2020) 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. 13/502,296 05/22/2012 Rune Fisker 0079124-000041 5890 21839 7590 04/10/2020 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 EXAMINER PIERRE LOUIS, ANDRE ART UNIT PAPER NUMBER 2127 NOTIFICATION DATE DELIVERY MODE 04/10/2020 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): ADIPDOC1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RUNE FISKER and IAIN MCLEOD Appeal 2018-008721 Application 13/502,296 Technology Center 2100 Before ALLEN R. MacDONALD, MICHAEL J. ENGLE, and IFTIKHAR AHMED, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 37–51, 53–59, 62, and 63, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicants” as defined in 37 C.F.R. § 1.42(a). Appellant identifies 3Shape A/S as the real party in interest. Appeal Br. 2. Appeal 2018-008721 Application 13/502,296 2 TECHNOLOGY The application relates to “creating a customized CAD model of a casting mold.” Spec. Abstract. ILLUSTRATIVE CLAIM Claim 37 is illustrative and reproduced below with certain limitations at issue emphasized: 37. A computer-implemented method for creating a customized casting mold, where the casting mold is used for casting an at least partly soft personalized device, said method comprising: acquiring a 3D customized casting mold CAD data file representing a negative geometry of the soft personalized device, wherein the 3D customized casting mold CAD data file has been customized so that at least one identification element is positioned on an inside surface of the casting mold such that the identification element is present on an outside surface of the soft personalized device; and manufacturing the customized casting mold using the 3D customized casting mold CAD data file. REJECTION Claims 37–51, 53–59, 62, and 63 stand rejected under 35 U.S.C. § 103 as being obvious over Martin (US 2006/0239481 A1; Oct. 26, 2006) and Deichmann (US 2004/0107080 A1; June 3, 2004). Non-Final Act. 4. ANALYSIS Martin discloses “making use of CAD data” to create “a cast (mold) for production of . . . a hearing device component,” such as an earpiece or shell for a hearing aid. Martin ¶¶ 2, 10, Abstract. Deichmann relates to creating “customized earpieces” for hearing devices by performing “operations that alter the geometry of the original 3D Appeal 2018-008721 Application 13/502,296 3 model” in “a traditional CAD system” to “change the outer and inner geometry of the earpiece.” Deichmann Abstract, ¶¶ 194–95. Deichmann discloses that one such operation is the “placement of a unique identifier” on the 3D model. Id. ¶ 55. The Examiner determines that it would have been obvious to add Deichmann’s identifier to Martin’s cast. Non-Final Act. 5. Appellant makes five arguments against the Examiner’s combination. First, Appellant argues that Martin and Deichmann are not in the same field of endeavor as each other. Appeal Br. 4–5. According to Appellant, “Martin relates to making a casting mold from which components are cast” whereas “[n]o molds or castings are involved with Deichmann.” Id. at 5. We are not persuaded by Appellant’s argument. For analogous art, the test is whether the prior art references are in the same field of endeavor as the present application, not each other: “This test for analogous art requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (emphasis added). Here, Appellant compares Deichmann’s field of endeavor only to that of Martin, not the present application. Appeal Br. 5 (“In contrast to Deichmann, Martin relates to”), 4 (“Martin and Deichmann are NOT directed to the same field of endeavor” (emphasis omitted)). We also agree with the Examiner that Appellant reads the fields of endeavor of Martin and Deichmann too narrowly. Ans. 4, 5. “The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a Appeal 2018-008721 Application 13/502,296 4 given field.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016). Here, the present application, Martin, and Deichmann all relate to CAD modeling for producing a hearing device and therefore fall within the same field of endeavor. E.g., Spec. 1, 4, Abstract; Martin ¶¶ 2, 10, Abstract; Deichmann Abstract, ¶¶ 194–95. Further, we note Deichmann discloses the “rapid prototyping machine may be any rapid prototyping machine capable of being controlled by a computer” and provides an example of “direct shell production casting.” Deichmann ¶ 82 (emphasis added); see also id. ¶ 384. Thus, contrary to Appellant’s argument, Deichmann’s technique can involve casting. Second, Appellant argues that “Martin teaches away from the Deichmann process” because Martin discloses that the “plastics suitable for the stereo-lithographic production methods [of the prior art] are normally very hard, such that the hearing devices or ear fitting pieces produced with this plastic would noticeably disturb the hearing device user, for example upon chewing.” Appeal Br. 6; Martin ¶ 6. This is not persuasive because Deichmann is not limited to stereo-lithographic production, as noted above. Deichmann ¶¶ 82, 384. Moreover, the Examiner is not using Deichmann for its stereo-lithographic production or its plastics, but rather only for the addition of an identifier to the CAD model. Non-Final Act. 5. Third, Appellant argues “the Office Action has failed to provide an adequate articulated reasoning for combining the two references” because “there is no explanation as to how Deichmann teaches optimization of cost and quality – at least in an area relevant to the present application.” Appeal Br. 7. The Examiner points to paragraphs 25, 55, 214, and 215 of Deichmann, and, in addition to cost and quality, notes “optimizing the visual Appeal 2018-008721 Application 13/502,296 5 appearance of the final [product]” in “look[ing] to Deichmann[’s] placement of the identification element on the device.” Ans. 4. Paragraph 215 of Deichmann discloses: “In the case of hearing aids, . . . the goal is usually to optimise the size, the visual appearance, the acoustic properties and the placement of the components inside the earpiece. A perfect fit to the users ear is always wished for.” And paragraph 25 of Deichmann explains that “the possibility of optimising the placement of the at least one component and the connecting surface gives the possibility of optimising the visual appearance of the piece in the [ear].” We further note that in a section titled “Placement of Unique Identification,” Deichmann discloses: A large number of earpieces may be produced together[.] In order to distinguish the individual earpieces a unique feature for identification, such as serial number[,] barcode[,] or colour code, need[s] to be placed on the earpiece. An example of placing identification is shown in FIG. 39. Preferably the identification should either be placed inside the shell 3901 or on an extra piece of material 3902, which can easily be removed. In general the identification should be placed such that it easily can be read automatically, e.g. by a barcode reader or computer vision system. Deichmann ¶¶ 363–64. Given these teachings, we agree with the Examiner that a person of ordinary skill in the art would have been motivated to optimize the visual appearance of Martin’s hearing device by adding an identification, such as a serial number. Fourth, Appellant argues that the recitation in claim 37 of “such that the identification element is present on an outside surface of the soft personalized device” is “not merely an intended use” and therefore should be given patentable weight. Appeal Br. 8. We agree with Appellant at least in so far as the location of the claimed element must be “on an outside surface” Appeal 2018-008721 Application 13/502,296 6 of the device.2 We note that the preamble further recites “the casting mold is used for casting an at least partly soft personalized device,” which is consistent with the recitation that the element “is present” on an outside surface of the device. Fifth, claim 37 recites “at least one identification element is positioned on an inside surface of the casting mold such that the identification element is present on an outside surface of the soft personalized device.” Appellant argues that “the unique identifier referred to in paragraph [0055] of Deichmann is on the inner portion of the hearing aid shell, i.e., the final product.” Appeal Br. 8. We are not persuaded by Appellant’s argument. “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 (CCPA 1981). Here, we agree with the Examiner that a person of ordinary skill in the art would have had reason to put Deichmann’s identifier, such as a serial number to identify the specific patient, on Martin’s cast for a hearing device. Ans. 6. As recognized by both Appellant and the Examiner, “[a]nything included on the inside surface of the casting mold will end up on the outside surface of the personalized device that is 2 For purposes of this appeal, we need not decide whether “identification” be given patentable weight or whether it is, for example, non-functional descriptive material. Appeal 2018-008721 Application 13/502,296 7 cast from the mold since the inside surface of the casting mold is effectively a negative of the component.” Appeal Br. 8; see also Ans. 6. As discussed above, Deichmann discloses that its technique can be applied to “any rapid prototyping machine,” including “direct shell production casting.” Deichmann ¶ 82 (emphasis added); see also id. ¶ 384. Moreover, we note that Deichmann discloses that its identifier is not limited to being on the inside of the shell. For example, Deichmann also teaches placing an identifier “on an extra piece of material 3902, which can easily be removed” from the outside of the device, as shown in the lower half of Figure 39. Id. ¶ 364. And both the inside surface and removable extra piece are described as only preferred examples. Id. Thus, we are not persuaded by Appellant’s argument that Deichmann in combination with Martin is limited to an identifier on the inside surface of the hearing device. Accordingly, we sustain the Examiner’s rejection of claim 37, and claims 38–51, 53–59, 62, and 63, which Appellant argues are patentable for similar reasons or does not argue separately. See Appeal Br. 9; 37 C.F.R. § 41.37(c)(1)(iv). DECISION The following table summarizes the outcome of each rejection: Claims Rejected Statute References Affirmed Rev’d 37–51, 53–59, 62, 63 § 103 Martin, Deichmann 37–51, 53–59, 62, 63 No time for taking subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.36(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation