3M Innovative Properties Company

Patent Trials and Appeals Board

Sep 17, 2020

2020001383 (P.T.A.B. Sep. 17, 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.
14/282,252 05/20/2014 Jeffrey L. Hamer 75258US002 2343
32692 7590 09/17/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
LEE, MICHELLE J
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
09/17/2020 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY L. HAMER, KENNETH F. TEETERS, and
RAVI THOMAS
Appeal 2020-001383
Application 14/282,252
Technology Center 3700
Before KEVIN F. TURNER, DANIEL S. SONG, and BRETT C. MARTIN,
Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–11 and 13–22. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). The Appellant identifies the real party in interest as 3M
Innovative Properties Company. Appeal Br. 2.
Appeal 2020-001383
Application 14/282,252
2
CLAIMED SUBJECT MATTER
The claims are directed to an earplug. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An earplug, comprising:
a stem extending from a first end to a second end along a
longitudinal axis, wherein the stem comprises a core made of a
first material and an outer layer made of a second material;
a sound attenuating body attached to the stem, the sound
attenuating body comprising a leading end, a base end, the
longitudinal axis extending between the leading end and the base
end, and a flange extending at least partially over the stem and
comprising an exterior flange surface and an interior flange
surface having a plurality of one or both of protrusions or
recesses, wherein the core of the stem extends from the second
end of the stem to the leading end of the sound attenuating body;
and
a flange cavity comprising a continuous volume around a
perimeter of the stem between the interior flange surface and the
stem;
wherein a distance between the interior and exterior flange
surfaces varies around a perimeter of the flange at a plane
intersecting the flange transverse to the longitudinal axis.
Appeal Br., Claim App. 1.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Heilmann US 5,928,744 July 27, 1999
Tiemens US 6,659,103 B2 Dec. 9, 2003
Seville US 2006/0162992 A1 July 27, 2006
Jenkins US 2007/0221232 A1 Sept. 27, 2007
Falco US 7,314,047 B2 Jan. 1, 2008
Cortez US 2009/0038625 A1 Feb. 12, 2009
Urso US 7,664,282 B2 Feb. 16, 2010
Mulvey US 2013/0161119 A1 June 27, 2013
Appeal 2020-001383
Application 14/282,252
3
REJECTIONS
The Examiner rejects various claims under 35 U.S.C. § 103 as
follows:
1. Claims 1 and 22 unpatentable over Falco in view of Tiemens.
Final Act. 4.
2. Claims 1–4, 6–11, 14, 18, and 21 unpatentable over Cortez in
view of Tiemens and Urso. Final Act. 7.
3. Claims 5, 19, and 20 unpatentable over Cortez in view of
Tiemens, Urso, and Jenkins. Final Act. 19.
4. Claim 13 unpatentable over Cortez in view of Tiemens, Urso,
and Heilmann. Final Act. 24.
5. Claim 15 unpatentable over Cortez in view of Tiemens, Urso,
and Seville. Final Act. 25.
6. Claims 16 and 17 unpatentable over Cortez in view of Tiemens,
Urso, and Mulvey. Final Act. 25.
OPINION
Rejection 1: Claims 1 and 22
The Examiner rejects independent claim 1, and claim 22 depending
therefrom, as unpatentable over Falco in view of Tiemens. Final Act. 4. As
to claim 1, the Examiner finds that Falco discloses the invention
substantially as claimed, except that it “is silent on the core of the stem
extending from the second end of the stem to the leading end of the sound
attenuating body.” Final Act. 4–5. The Examiner relies on Tiemens for
teaching an earplug having a core or stiffener that extends within the stem in
the manner claimed. Final Act. 5. The Examiner concludes that it would
have been obvious to one of ordinary skill in the art:
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Application 14/282,252
4
to have modified the core of the stem of Falco to extend from
the second end of the stem to the leading end of the sound
attenuating body, as taught by Tiemens, “so [that] forward
movement of the stiffener results in it dragging the body front
portion 22 into the ear canal.”
Final Act. 5 (quoting Tiemens, col. 3, ll. 25–27).
The Appellant argues that the proposed modification of the stiffening
cylindrical component 15 of Falco “would render the invention of Falco
unsatisfactory for its intended purpose.” Appeal Br. 9. In particular, the
Appellant argues that the cylindrical component of Falco must not only
extend at least partially in the front portion, but also be bonded to the body
of the earplug as disclosed in Tiemens, in order to support the rationale of
dragging the body front portion into the ear canal as articulated by the
Examiner. Appeal Br. 10–11; see also Appeal Br. 11–12 (arguing that the
Examiner’s reliance on length of the stiffening component and friction,
without bonding, would fail to result in the dragging of the body front
portion); see also Reply Br. 2–4.
According to the Appellant, “Falco describes that the component
received within the stem 12 may comprise various diameters and lengths to
provide the earplug with the effect desired,” and thus, “the intended
purpose of the component 15 of Falco is to provide varying effects to the
earplug (e.g., varying stiffness) depending on the size of the component
received within the cavity 13 of the stem 12.” Appeal Br. 9 (citing Falco,
col. 5, ll. 44–46). Based on this assertion, the Appellant argues that when
Falco is modified so that the core is bonded, Falco would be rendered
unsatisfactory for its intended purpose of allowing cylindrical components of
a variety of different sizes being inserted from the cavity to provide varying
effects. Appeal Br. 11–12.
Appeal 2020-001383
Application 14/282,252
5
The Appellant’s argument is unpersuasive because it is premised on
an erroneous understanding of the disclosure of Falco. The Appellant’s
assertion as to the intended purpose of Falco is derived from Falco’s
statement “[s]imilarly, the component received within stem 12 may
comprise various diameters and lengths to provide the earplug with the
effect desired.” Falco, col. 5, ll. 44–46. This statement is not in reference to
the stiffening component being removed and replaced with another that is of
different diameter and lengths. Rather, Falco is disclosing that in designing
and manufacturing of its disclosed earplugs, stiffening components having
different diameters and lengths can be used to attain the desired effect. In
other words, Falco is teaching that the diameter and the length of the
stiffening component are selectable during manufacturing thereof. The
correctness of this understanding of Falco is established by the fact that the
cited disclosure that begins with “[s]imilarly,” thereby referencing the
preceding disclosure, which states:
It is understood that the diameter of stem 12 is variable and
may assume a range of different sizes depending upon the
particular effect sought and upon the particular component
sought to be received with in stem 12. Further, the various first,
second, and third portions 24, 26, and 28 of stem 12 may be sized,
in diameter and in length, variously with respect to one another.
Falco, col. 5, ll. 37–43.
This disclosure is not teaching that the user can somehow adjust the
diameter and sizes of the stem and the first, second, and third portions (as
would be the case if the Appellant’s interpretation is correct), but instead, is
simply disclosing that these dimensions may be designed and selected to
manufacture earplugs to attain the desired effect, i.e., comfort, attenuation
and ease of use. See also Falco, col. 6, ll. 14–22. In that regard, Falco does
Appeal 2020-001383
Application 14/282,252
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not disclose the user somehow altering the sizes of the stem or the three
portions, or removing and replacing a cylindrical component with a different
one.
Therefore, whether the stiffening component of the modified Falco is
bonded or not is not dispositive because even if the stiffening component of
Falco must be bonded as the Appellant asserts, such bonding of the
stiffening component does not destroy the intended purpose of Falco’s
earplug as asserted by the Appellant. Accordingly, the premise of the
Appellant’s argument that the suggested modification to Falco’s earplug
would render it unsuitable for its intended purpose is based on an incorrect
understanding of Falco, and as such, we are not persuaded of Examiner
error.
Thus, in view of the above considerations, we affirm the Examiner’s
rejection of claims 1 and 22.

Rejection 2: Claims 1–4, 6–11, 14, 18, and 21
The Examiner rejects claims 1–4, 6–11, 14, 18, and 21 as
unpatentable over Cortez in view of Tiemens and Urso. Final Act. 7. As to
independent claim 1, the Examiner finds that Cortez discloses in the
invention substantially as claimed, but “is silent on the core of the stem
extending from the second end of the stem to the leading end of the sound
attenuating body.” Final Act. 7–8. The Examiner again relies on Tiemens
to conclude that it would have been obvious to one of ordinary skill in the art
to have modified the core or insert 60 of the stem of Cortez to extend in the
manner claimed. Final Act. 8. The Examiner also concludes that, in view of
Urso’s disclosure, it would have been further obvious to one of ordinary skill
to provide protrusions and/or recesses as claimed. Final Act. 9.
Appeal 2020-001383
Application 14/282,252
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The Appellant argues that the proposed modification of the insert 60
of Cortez “would render the invention of Cortez et al. unsatisfactory for its
intended purpose.” Appeal Br. 16. In particular, the Appellant argues that
the insert of Cortez must be bonded as disclosed in Tiemens, in order to
support the rationale of dragging the body front portion into the ear canal as
articulated by the Examiner. Appeal Br. 15–16; see also Reply Br. 5–7.
The Appellant argues that because Cortez “describes that the insert 60
expands the stem at a first location such that the stem outside surface 76
contacts the first flange 46,” which is important in blocking sound, “the
intended purpose of the insert 60 of Cortez is to expand the stem such
that the stem contacts the first flange 46 and the contact between the
stem and the first flange 46 blocks sound.” Appeal Br. 15, citing Cortez
¶¶ 2, 15. Accordingly to the Appellant, when Cortez is modified so that its
insert is bonded, itis rendered unsatisfactory for its intended purpose because
such bonding of the insert “would prevent the insert 60 from expanding
the stem such that the stem contacts the first flange to block sound from
entering the ear canal, which, as described herein, is an express, intended
purpose of the insert 60 of Cortez.” Appeal Br. 17.
We are not persuaded by the Appellant’s argument. Cortez does
disclose the importance of the shell internal flange and the stem contacting
each other in blocking sound, this contact being attained by the insert that
“expands location on the stem into contact with a flange or into a close
sliding fit of the stem.” Cortez ¶ 2. However, such expansion is attained
upon inserting the insert into the stem as the earplug is made. See generally
Cortez ¶ 2. Indeed, Figure 2 of Cortez shows the complete earplug with the
insert inserted into the stem of the earplug so as to expand the stem, and
Figure 3 shows this completed earplug inserted into the user’s ear canal.
Appeal 2020-001383
Application 14/282,252
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Cortez, Figs. 2, 3. Cortez also discloses that “[t]he insert [60] is of stiffer
material than that of the stem, and helps stiffen the stem to prevent stem
column collapse during earplug insertion,” thereby clearly disclosing that
the insert is present when the earplug is used by the end user. Cortez ¶ 11
(emphasis added).
Accordingly, it is not apparent how bonding of the insert of Cortez
after the insert is inserted into the stem of the earplug would “prevent the
insert 60 from expanding the stem” as asserted by the Appellant considering
that the stem would already be expanded by virtue of the insert having been
inserted into the stem. Indeed, one cannot bond the insert within the stem
unless the insert is first received within the stem. Thus, bonding of the insert
of Cortez does not have any bearing as to the expansion of the stem because
the stem has already been expanded by virtue of its receipt of the insert.
Therefore, whether the insert of the modified Cortez is bonded or not
is not dispositive because even if the insert of Cortez must be bonded as the
Appellant asserts, such bonding of the insert does not destroy the intended
purpose of Cortez’s earplug as asserted by the Appellant.
The Appellant also argues that “the insert 60 is clearly adapted to
move relative to the stem passage 60.” Appeal Br. 18 (emphasis added).
However, we find no basis for this assertion as Cortez does not disclose the
insert 60 being removed or inserted by the end user of the earplug. Aside
from the initial insertion of the insert into the stem when the earplug is
made, Cortez does not disclose any movement of the insert relative to the
stem. See generally Cortez ¶ 13 (“The insert 60 cannot be readily grasped,
so a person does not grasp it to pull out the earplug.”).
Therefore, we are not persuaded of error in the Examiner’s rejection
of claim 1. The Appellant does not submit any arguments directed to claims
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Application 14/282,252
9
2–4, 6–11, 14, and 21, and instead, merely relies on ultimate dependency on
claim 1 for patentability. Appeal Br. 18–19. Accordingly, these claims fall
with claim 1 as well.

Rejection 3: Claims 5, 19, and 20
The Examiner rejects claims 5, 19, and 20 as unpatentable over Cortez
in view of Tiemens, Urso, and Jenkins. Final Act. 19. The Appellant’s
arguments in support of patentability are same as those submitted with
respect to Rejection 2, and are directed to the combination of Cortez and
Tiemens. Appeal Br. 21–23; see also Reply Br. 8–10. Accordingly, having
been unpersuaded of any deficiency in the Examiner’s combination of
Cortez and Tiemens, we affirm this rejection as well.

Rejections 4–6: Claim 13 and 15–17
The Appellant does not submit any arguments directed to claims 13
and 15–17 that are subject of Rejections 4–6, and instead, the Appellant
merely relies on their ultimate dependency on independent claim 1 for
patentability. Appeal Br. 25–26. Thus, these rejections of claims 13 and
15–17 are also affirmed.
CONCLUSION
The Examiner’s rejections are affirmed.

Appeal 2020-001383
Application 14/282,252
10
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 22 103 Falco, Tiemens 1, 22
1–4, 6–11,
14, 18, 21
103 Cortez, Tiemens,
Urso
1–4, 6–11,
14, 18, 21

5, 19, 20 103 Cortez, Tiemens,
Urso, Jenkins
5, 19, 20
13 103 Cortez, Tiemens,
Urso, Heilmann
13
15 103 Cortez, Tiemens,
Urso, Seville
15
16, 17 103 Cortez, Tiemens,
Urso, Mulvey
16, 17
Overall
Outcome
1–11, 13–22
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED