Rune Fisker et al.

Patent Trials and Appeals Board

Apr 10, 2020

13502296 - (D) (P.T.A.B. Apr. 10, 2020)

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.
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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
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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
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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
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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”
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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.
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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