Berg, Richard Steenfeldt.

Patent Trials and Appeals Board

Feb 27, 2020

15078796 - (D) (P.T.A.B. Feb. 27, 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.
15/078,796 03/23/2016 Richard Steenfeldt Berg 80893.00110 1009
96276 7590 02/27/2020
Qin Shi, Edgetech Law LLP
2225 East Bayshore Road
Suite 200
Palo Alto, CA 94303
EXAMINER
LE, HUYEN D
ART UNIT PAPER NUMBER
2655
MAIL DATE DELIVERY MODE
02/27/2020 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 RICHARD STEENFELDT BERG1
_____________

Appeal 2017-009541
Application 15/078,796
Technology Center 2600
______________

Before MAHSHID D. SAADAT, ERIC S. FRAHM, and
JOHN A. EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Non-Final Rejection of claims 1 through 5, which constitute all
the claims pending in this application. See Appeal Br. 32–33 (Claims App.).
Oral arguments were heard on December 6, 2019. A corrected transcript of
the hearing was mailed February 24, 2020. We have jurisdiction over the
pending claims 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). The Appeal Brief identifies Freebit as the real party in
interest. Appeal Br. 3.
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Application 15/078,796
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RELATED APPEALS AND TRIALS
Appellant declares the:
the present application is a continuation of U.S. Application
No. 14/633,813 filed on February 27, 2015, which is a
continuation of U.S. Application No. 14/109,565 filed on
December 17, 2013 (now U.S. Patent No. 8,976,995) (“the ’995
patent”), which is a continuation of U.S. Application No.
12/600,795 filed on May 7, 2010 (now U.S. Patent No.
8,630,436) (“the ’436 patent”). The ’995 patent is the subject
of a patent trial styled as Bose Corp. v. Freebit AS, IPR2017-
00130 (PTAB Nov. 8, 2016). The ’436 patent is the subject of
a patent trial styled as Bose Corp. v. Freebit AS, IPR2017-
00129 (PTAB Nov. 8, 2016). At the time of the submission of
this brief, no inter-partes review has been instituted by the
PTAB in either IPR20 l 7-00130 or IPR2017-00129.
Appeal Br. 4.
INVENTION
The invention is directed to “an ear unit for stably fitting in an ear
includes a first surface facing inwardly toward the ear, a second, opposite
surface facing outwardly from the ear and an outer circumferential surface
formed between the first and second surfaces.” Abstract.
Claim 1 is illustrative of the invention and is reproduced below.
1. A positioning and retaining structure for an earphone, the
positioning and retaining structure comprising
an outer edge and an inner edge, each extending from a
base to be coupled to the earphone and meeting at a tip distant
from the base,
wherein the base comprises a cushion structure shaped
to substantially fill the concha of a user when the earphone is
worn in user’s ear,
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the outer edge having differing radii of curvature along
its length, including a first section at the base having a first
radius of curvature and a second section near the tip having a
second radius of curvature greater than the first radius of
curvature, such that the outer edge is more sharply curved near
the base and less sharply curved near the tip.
Appeal Br. 32 (Claims App., emphasis added).
PRIOR ART
Name Reference Date
Dyer et al. “Dyer” US 6,688,421 B2 Feb. 10, 2004
Berg US 6,944,307 B2 Sept. 13, 2005
Smith US 2007/0116309 Al May 24, 2007

REJECTIONS2 AT ISSUE3
1. Claims 1–5 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Non-Final Act. 2–3;
Answer 2–4.
2. Claims 1–5 stand rejected under the judicial doctrine of non-statutory
double patenting. Non-Final Act. 4–7; Answer 4–7.
3. Claims 1–5 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Dyer. Non-Final Act. 7–8; Answer 7–8.
4. Claims 1–5 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Smith. Non-Final Act. 8–9; Answer 8–9.

2 The Application is being examined under the pre-AIA first to invent
provisions. Non-Final Act. 2; see Appeal Br. 9.
3 Throughout this Decision, we refer to the Appeal Brief (“Appeal Br.”) filed
January 26, 2017, the Reply Brief (“Reply Br.”) filed June 26, 2017, the
Non-Final Office Action (“Non-Final Act.”) mailed November 16, 2016, the
Examiner’s Answer mailed May 15, 2017, and the Specification (“Spec.”)
filed March 23, 2016.
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5. Claims 3–5 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Berg. Non-Final Act. 9–10; Answer 9–10.
6. Claims 1–5 stand rejected under 35 U.S.C. § 103(a) as obvious over
Dyer. Non-Final Act. 11–12; Answer 11–12.
7. Claims 1–5 stand rejected under 35 U.S.C. § 103(a) as obvious over
Smith. Non-Final Act. 12–13; Answer 12–13.
8. Claims 3–5 stand rejected under 35 U.S.C. § 103(a) as obvious over
Berg. Non-Final Act. 14–15; Answer 14–15.
9. Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as obvious
over Berg and Dyer. Non-Final Act. 15–18; Answer 15–18.
ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s (i) written description rejection of claims 1–5 with respect to (i)
written description, (ii) anticipation, and (iii) obviousness. We are not
persuaded of error with respect to the double patenting rejections.
CLAIMS 1–5: WRITTEN DESCRIPTION.
The Examiner finds, without explanation, the original Specification
fails to disclose an outer edge of a structure including a first section at the
base having a first radius of curvature and a second section near the tip
having a second radius of curvature greater than the first radius of curvature,
such that the outer edge is more-sharply curved near the base and less
sharply curved near the tip as claimed in claims 1 and 3. Non-Final Act. 3.
Appellant initially cites M.P.E.P. § 2163 (A) for the proposition that
“there is a presumption that an adequate written description of the claimed
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invention is present when the application is filed.” Appeal Br. 10. ,
Appellant argues because the Examiner has failed “to set forth any evidence
or reasoning to substantiate a lack of written description,” the rejection
should be reversed. Id.
A cushion structure shaped to substantially fill a concha.
Appellant argues “the subject matter of the claim need not be
described literally (i.e., using the same terms or in haec verba) in order for
the disclosure to satisfy the written description requirement.” Appeal Br.
10–11 (quoting MPEP § 2163.02). Appellant acknowledges the
Specification does not use the phrase “substantially fill the concha,” as
recited in Claim 3, but argues the figures and description provide sufficient
disclosure that one of ordinary skill in the art would have understood the
applicant to be in possession of such a feature. Appeal Br. 11. Appellant
contends the curvature of the embodiment of Figure 5 fits “‘closely against
the ear mussel’ (i.e., concha).” Id. at 11 (quoting Spec., ¶ 21). Appellant
further argues “the outer periphery of the [claimed] ear unit is held in the ear
by the outer parts of the ear such [as] the lower part of the antihelix 13,
antitragus 3 and tragus 4 of the ear.” Id. (quoting Spec., ¶ 22).
Paragraph 22 further notes “parts of the curve [of the claimed
earpiece] [are] positioned inside the antihelix 13 when viewed from the
outside of the ear where said parts therefore are not visible.” Id. Appellant
explains “the ear unit also makes contact with ‘the cavity covered by the
lower node 15 of the antihelix and the flap 2 covering said cavity.’” Appeal
Br. 11–12 (quoting Spec., ¶ 23). Appellant further explains “surface 25,
which faces the skull, is curved ‘in such a way that it follows along the inner
surface of ear mussel or concha 22.’” Id. at 12 (quoting Spec., ¶ 27).
Appellant contends human outer ear anatomy is such that the antihelix 13,
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antitragus 3, tragus 4, lower node 15, and flap 2 lie along the concha at its
periphery. Id. (citing Declaration of Julius Orion Smith, III, Exhibit A).
Appellant contends from the above description, it would be clear to a person
of ordinary skill in the art that the claimed earpiece contacts all of these
surfaces and follows the inner contour of the ear mussel (i.e., the concha).
Id.
The Examiner finds none of paragraphs 21–23 or 27, as argued by
Appellant, teaches a positioning and retaining structure comprising a base
having a cushion structure shaped to substantially fill the concha. Answer
18.
Appellant replies the Examiner merely repeats the conclusory
statements made in the Non-Final Action, but fails to explain why the
detailed arguments of the Appeal Brief are unavailing. Reply Br. 2.
Claim 1, as originally-filed recites, inter alia, “wherein the base
comprises a cushion structure shaped to substantially fill the concha of a
user when the earphone is worn in user’s ear.” Appellant’s Brief cites
Specification disclosure detailing how a portion of the claimed earpiece
contacts each surface of the concha. Appeal Br. 11 (citing Figure 1; ¶ 22).
We find, contrary to the Examiner, that a person of ordinary skill in the art
would have understood from the original disclosure the meaning of the
claimed “a cushion structure shaped to substantially fill the concha of a
user.”
A retaining structure having a base with first and second radii of curvature.
The Examiner finds an outer edge of a structure having a first section
at the base having a first radius of curvature and a second section at the tip
having a second radius of curvature, less sharply curved than said first
section. Non-Final Act. 3.
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Appellant contends the Examiner’s finding is merely conclusory and
thus fails the burden required of a prima facie case. Appeal Br. 12.
Appellant argues the Specification describes the outer part of the claimed ear
unit as a “decremental curve.” Id. (citing Spec., ¶¶ 22, 25, and 27).
Appellant cites its Expert, Dr. Smith, for the proposition that the term
“decremental curve” is “a curve with a decreasing radius of curvature.”
Appeal Br. 13 (citing Exhibit A, Dr. Smith Declaration at 3). Appellant cites
the Specification as describing the tip of the retaining structure, explaining:
the “upper part of the curve projects into the cavity covered by the lower
node 15 of the antihelix and underneath the flap 2 covering the lower part of
said cavity.” Id. (quoting Spec., ¶ 25). Appellant explains the curve then
decrements, or decreases in radius, as it progresses toward the lower part of
the curve near the base. Thus, Appellant argues, the Specification discloses
the retaining structure comprises a decremental curve with a base section of
a first radius of curvature and a tip section having a second radius of
curvature. Id. (citing Spec., ¶ 25).
The Examiner finds the Specification discloses a decremental curve,
but fails to disclose the curve having first and second sections with first and
second radii of curvature, as claimed. Answer 19. The Examiner
acknowledges the Smith Declaration, but finds it insufficient because the
limitations regarding he radii of curvature “in combination with the other
limitations” “and the rejections of the description of the specification do not
place the application in condition for allowance.” Id. We disagree with the
Examiner.
The Expert was not tasked with responding to “the other limitations as
claimed in claims 1, 3, and 4,” as found by the Examiner. Id. Rather, the
Expert had to teach what the term “decremental curve” would have meant to
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a person of ordinary skill. Specifically, would a person of ordinary skill
have understood the term “decremental curve” to mean a curve having at
least two sections of differing radii of curvature? The Examiner does not
address the substance of the Expert Declaration. We find, in view of the
Declaration, the claims have adequate written description support for a curve
having at least two sections of differing radii of curvature.
Tip of the retaining structure that fits under the base of the helix.
The Examiner finds the “original specification does not disclose the
positioning and retaining structure or the ear unit comprising projection at
the tip or the end that fits under the base of the user’s helix as claimed in
claims 2 and 5.” Non-Final Act. 3.
Appellant contends:
The instant specification teaches at paragraph 0025 that “[t]he
upper part of the curve [the tip of the retaining structure]
projects into the cavity covered by the lower node 15 of the
antihelix and underneath the flap 2 covering the lower part of
said cavity.” (Emphasis added). As shown in Figure l of the
instant specification and Fig. 8.105, taken from Gray’s
Anatomy for Students, 2nd Ed. and referenced in Dr. Smith’s
declaration on pages 3 and 4, the flap 2 forms the top portion of
the helix at its base. As such, the specification teaches that the
tip of the retaining structure fits under the base of the user’s
helix.
Appeal Br. 14.
The Examiner’s Answer finds in a conclusory manner: “The original
specification does not disclose the positioning and retaining structure or the
ear unit comprising projection at the tip or the end that fits under the base of
the user’s helix as claimed in claims 2 and 5.” Answer 4.
We find ample written description. In view of the foregoing, we
decline to sustain the rejection of Claims 1–5 as lacking written description.
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CLAIMS 1–5: DOUBLE PATENTING.
Because Appellant presents no arguments directed to these rejections,
they are summarily affirmed. See 37 C.F.R. § 41.31(c) (“An appeal, when
taken, is presumed to be taken from the rejection of all claims under
rejection unless cancelled by an amendment filed by the applicant and
entered by the Office.”); 37 C.F.R. § 41.37(c)(iv) (“[A]ny arguments or
authorities not included in the appeal brief will be refused consideration by
the Board for purposes of the present appeal.”); MPEP § 1205.02 (9th ed.
March 2014) (“[T]he Board may summarily sustain any grounds of
rejections not argued.”).
We note “Appellant is prepared to file a terminal disclaimer under 37
C.F.R §1.321(c) or 1.321(d) as suggested by the Examiner.” Appeal Br. 16.

CLAIMS 1–5: ANTICIPATION BY DYER.
Appellant contends Dyer fails to disclose an ear unit that
“substantially fill[s] the concha.” Appeal Br. 17.
The Examiner does not point to written disclosure to meet this
limitation. Rather, the Examiner finds Figures 1–4 and 8 disclose this
limitation. Non-Final Act. 7; Answer 21.
Appellant contends neither the Dyer Figures, nor Specification
disclose the “substantially fill the concha” element, as claimed. Appeal Br.
17. Appellant argues Dyer discloses the earmold “is kept in place in the ear
by the combination of first protrusion 103 and features found on the second
side of left earmold 101.” Id.
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Figure 1 of Dyer is reproduced below.

Figure 1 of Dyer depicts an embodiment of a left earmold
installed in a human ear.
Dyer discloses left earmold 101 is disposed within concha4 108 of the
ear. Dyer, col. 3, ll. 24–26. Dyer discloses the earmold is held in place in
part by protrusion 103. Id. Figure 1 shows a space between protrusion 103
and the edge of the concha 108. Id. Dyer provides no explicit disclosure as
to the proportion of the concha represented by such space. “In assessing the
prior art, ‘[i]t is well established that patent drawings do not define the
precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue.’”
Instradent USA Inc. v. Nobel Biocare Services AG, IPR2015-01784, Paper
14, slip op. 8 (PTAB Feb. 17, 2016) (quoting Nystrom v. TREX Co., 424

4 Dyer discloses the concha is “the largest cavity in the outer ear.” Dyer,
col. 3, ll. 26–27.
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F.3d 1136, 1149 (Fed. Cir. 2005) (quoting Hockerson-Halberstadt, Inc. v.
Avia Grp. Int’l. Inc., 222 F.3d 951, 956 (Fed. Cir. 2000)). The Examiner
fails to cite written disclosure, but relies of Dyer’s figures to disclose the
proportion of the concha that is filled by the earmold. See MPEP § 2125
(“When the reference does not disclose that the drawings are to scale and is
silent as to dimensions, arguments based on measurement of the drawing
features are of little value.”). We find Dyer fails to teach, at least, the
“substantially fill the concha” element, as claimed.
CLAIMS 1–5: ANTICIPATION BY SMITH.
Substantially fill the concha.
The Examiner finds Smith discloses an earpiece having a base
comprising a cushion structure shaped to substantially-fill the concha of a
user. Non-Final Act. 9 (citing Smith, ¶¶ 45 and 47).
Smith discloses “[e]arpiece 11 is configured to be disposed in the
conchae of the outer ear.” Smith, ¶ 45. Smith further discloses “[e]arpiece
11 is configured to be disposed and held in place within the conchae of a
human ear.” Smith, ¶ 47. Smith further discloses “earpiece 11 is held
firmly in place within the conchae.” Id.
We find no disclosure of a proportion of the concha occupied by
Smith’s earpiece.
CLAIMS 3–5: ANTICIPATION BY BERG.
Independent Claims 3 and 4 (and implicitly dependent Claim 5) each
recite a substantially filling limitation, as discussed above. The Examiner
makes no finding that Berg discloses such limitation. See Non-Final Act. 9–
10.

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CLAIMS 1–5: OBVIOUSNESS OVER DYER.
First the Examiner “interpret[s]” Claims 1–5 “in a different manner,”
but fails to set forth such different interpretation. See Non-Final Act. 11.
“[T]he anticipation inquiry first demands a proper claim construction,”
Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1294 (Fed. Cir.
2002).
Claim construction is an important step in a patentability
determination. Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir.
2003) (“Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” (internal citations omitted)).
Claim interpretation is at the heart of patent examination because before a
claim is properly interpreted, its scope cannot be compared to the prior art.
Id.
As discussed above, Dyer fails to teach the substantially filling
limitation.
CLAIMS 1–5: OBVIOUSNESS OVER SMITH.
First the Examiner “interpret[s]” Claims 1–5 “in a different manner,”
but fails to set forth such different interpretation. See Non-Final Act. 12.
As discussed above, Smith fails to teach the substantially filling
limitation.
CLAIMS 3–5: OBVIOUSNESS OVER BERG.
First the Examiner “interpret[s]” Claims 3–5 “in a different manner,”
but fails to set forth such different interpretation. See Non-Final Act. 14.
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As discussed above, Berg fails to teach the substantially filling
limitation. In view of the foregoing, we decline to sustain the rejection of
Claims 3–5 over Berg.
CLAIMS 1 AND 2: OBVIOUSNESS OVER BERG AND DYER.
As discussed above, we find neither Berg, nor Dyer, teach the
substantially filling limitation. In view of the foregoing, we decline to
sustain the rejection of Claims 1 and 2 over Berg and Dyer.

CONCLUSION

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5 112 Written
Description
1–5
1–5 Non-
Statutory
Double Patenting 1–5
1–5 102 Dyer 1–5
1–5 102 Smith 1–5
3–5 102 Berg 3–5
1–5 103 Dyer 1–5
1–5 103 Smith 1–5
3–5 103 Berg 3–5
1, 2 103 Berg, Dyer 1, 2
Overall
Outcome
1–5

Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision rejecting Claims 1 through 5
is affirmed. See 37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED