David Welner et al.

Patent Trials and Appeals Board

Feb 27, 2020

12101185 - (R) (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.
12/101,185 04/11/2008 David WELNER Q107090 7675
23373 7590 02/27/2020
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
EASON, MATTHEW A
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
02/27/2020 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID WELNER and OLE ERIK TOFT
____________

Appeal 2018-004208
Application 12/101,185
Technology Center 2600
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU,
and SHARON FENICK, Administrative Patent Judges.

FENICK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
This is a decision on Appellant’s1 Request for Rehearing (“Reh’g Req.”) of
our Decision on Appeal issued July 22, 2019 (“Dec.”). In that Decision, we
affirmed the Examiner’s decision rejecting claims 23–25 under 35 U.S.C.
§ 103(a) as unpatentable over Killion, Motegi, and Boucher; reversed the
Examiner’s decision rejecting claim 26 under 35 U.S.C. § 103(a) as
unpatentable over Killion, Motegi, and Boucher; and reversed the
Examiner’s decision rejecting claims 27 and 28 under 35 U.S.C. § 103(a) as
unpatentable over Killion, Motegi, and Dix.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42.
Appeal 2018-004208
Application 12/101,185

2
Appellant requests rehearing of our Decision with respect to claims 23–25.
Requests for rehearing are limited to matters misapprehended or overlooked
by the Board in rendering the original decision. 37 C.F.R. § 41.52(a)(1).
We have reviewed our Decision regarding claims 23–25 in light of
Appellant’s comments in the Request for Rehearing and are not persuaded
that we misapprehended or overlooked any arguments or evidence.
Accordingly, we DENY the request to modify our Decision.
ANALYSIS
Appellant “believes the Panel has failed to appreciate the argument for
patentability of claims 23–25” and “seeks to clarify a point earlier made.”
Reh’g Req. 1. Specifically, Appellant disagrees with the Board’s finding
that Boucher’s teaching of inhibiting an alarm for a warm-up time period
following power-on to avoid false alarms is reasonably pertinent to the
problem faced by the inventors. Id. at 2–4; see Dec. 4. According to
Appellant,
The Board has correctly stated . . . that the problem addressed by
the inventors here is a problem of “a temporary drop in the cell
voltage” triggering the battery alarm too early and “giving the
user a false impression of the remaining time until a hearing aid
will actually stop functioning properly.” But then the Board
seemingly applies a different test, where the problem is simply
inhibiting any false alarms during a warm-up period.
Reh’g Req. 3. Appellant argues that Boucher does not address the same
problem faced by the inventors of “false ‘low battery’ alarms due to supply
voltage instability during a short time after turn-on of the hearing aid.” Id. at
3. Accordingly, Appellant argues that Boucher is not reasonably pertinent to
the problem faced by the inventors, and not analogous art to the claimed
invention. Id. at 2–4.
Appeal 2018-004208
Application 12/101,185

3
We determined that Boucher’s solution for false alarms during turn-on
is reasonably pertinent to Appellant’s problem of false alarms during turn-
on. See Dec. 3, 5. To the extent that Appellant argues that we have
misapprehended whether Boucher must teach the same exact problem faced
by the inventors, i.e., to the degree of particularity stated by Appellant, in
order to be reasonably pertinent to the problem faced by the inventors and,
thus, qualify as analogous art, we disagree that the Decision contains such a
misapprehension. “A reference is reasonably pertinent if, even though it
may be in a different field from that of the inventor’s endeavor, it is one
which, because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his problem.” In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). We are instructed “to construe
the scope of analogous art broadly,” and that “‘familiar items may have
obvious uses beyond their primary purposes, and a person of ordinary skill
often will be able to fit the teachings of multiple patents together like pieces
of a puzzle.’” Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir.
2010) (emphasis omitted) (quoting KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 402 (2007)). Accordingly, Appellant’s argument is directed to a mere
disagreement with our analysis, which is not a proper basis for a rehearing
request, and does not persuade us that we misapprehended or overlooked
any aspects of Boucher or previous arguments made by Appellant.
Appellant further argues that, even if Boucher is analogous art, it
would not have been obvious to a person of ordinary skill in the art to
temporarily inhibit the alarm after turn-on, as taught by Boucher, in the
battery alarm of a hearing aid taught by Killion and Motegi. Reh’g Req. 4–
6. Specifically, Appellant argues that there is “no apparent reason to adopt
the Boucher solution in a hearing aid” because “[n]either Killion nor Motegi
Appeal 2018-004208
Application 12/101,185

4
mention anything about false alarms” and “Boucher presents a solution to a
problem that does not exist in hearing aids, i.e., false gas sensor readings that
happen because a semiconductor gas sensor has not warmed up to its proper
operating temperature.” Id. at 4–5.
We considered this argument in our Decision, noting the Examiner’s
provided motivation of “preventing false alarm[s]” for combining Boucher
with Killion and Motegi, and we determined that the Examiner did not err in
concluding that it would have been obvious to one of ordinary skill in the art
to combine Boucher’s inhibition of alarms during warm-up with Killion and
Motegi’s battery alarm of a hearing aid in order to avoid false alarms. Dec.
4–5 (citing Appeal Br. 7–9; Reply Br. 8; Final Act. 4). While the specific
cause of the false alarms in Boucher differs from that facing the inventors,
“[o]ne of ordinary skill in the art need not see the identical problem
addressed in a prior art reference to be motivated to apply its teachings,” and
Appellant does not persuade us that we misapprehended or overlooked
evidence or arguments relating to the combination. Cross Med. Prods., Inc.
v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005);
Dec. 5.
We have reviewed and considered the arguments in Appellant’s
Request for Rehearing and conclude that Appellant has not demonstrated
that the Board misapprehended or overlooked any matters in the Decision.
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Application 12/101,185

5
CONCLUSION
In view of the foregoing discussion, we DENY Appellant’s Request for
Rehearing.

DECISION SUMMARY
Outcome of Decision on Rehearing:
Claims 35 U.S.C
§
Reference(s)/Basis Denied Granted
23–25 103 Killion, Motegi,
Boucher
23–25

Final Outcome of Appeal after Rehearing:
Claims 35 U.S.C
§
Reference(s)/Basis Affirmed Reversed
23–25 103 Killion, Motegi,
Boucher
23–25
26 103 Killion, Motegi,
Boucher
26
27, 28 103 Killion, Motegi, Dix 27, 28
Overall
Outcome
23–25 26–28

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).

DENIED