Ex Parte Barth et al

Patent Trials and Appeals Board

Apr 30, 2019

13580435 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/580,435 08/22/2012
24131 7590 05/02/2019
LERNER GREENBERG STEMER LLP
PO BOX 2480
HOLLYWOOD, FL 33022-2480
FIRST NAMED INVENTOR
Joachim Roland Barth
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2010P03014 1011
EXAMINER
NGUYEN, DUC MINH
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
boxoa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOACHIM ROLAND BARTH, HOLGER KRAL,
FRANK NAUMANN, ANDREAS RATA Y, and
MARKUS TRAUTNER
Appeal2017-006439
Application 13/580,435 1
Technology Center 2600
Before MICHAEL J. STRAUSS, IRVINE. BRANCH, and
JASON J. CHUNG, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 10-23, which are all of the claims pending in the application. A
hearing was held on April 9, 2019, and a transcript has been made of record.
"Transcript," entered April 24, 2019. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Siemens Medical
Instruments Pte. Ltd. App. Br. 1.
Appeal2017-006439
Application 13/580,435
Technology
The application relates to "a connector for a hearing instrument, in
particular a hearing aid that can be worn on a hearing-aid wearer's head,
especially an RIC-BTE (Receiver-In-Canal; Behind-The-Ear) hearing aid."
Spec. Abstract.
Illustrative Claim
Claim 10 is reproduced below for reference with the limitations at
issue emphasized:
10. A connector for a hearing instrument, the hearing
instrument having a housing, the connector comprising:
an electric connecting component configured for
connecting in mutual engagement with an electric connecting
element inside the housing of the hearing instrument and a
mechanical connecting component configured for placement into
mechanical engagement with a connector receptacle forming a
constituent part of the housing of the hearing instrument;
the connector being disposed on an earpiece sound
tube and the connector being configured for interconnecting the
earpiece sound tube with the housing of the hearing instrument;
the connector being received in the connector
receptacle flush with the housing of the hearing instrument and
the earpiece sound tube being ducted into the connector
receptacle at the housing of the hearing instrument;
wherein the earpiece sound tube connects to the
connector along a longitudinal axis and the connector is formed
for insertion into said connector receptacle at the housing of the
hearing instrument in a direction different from and transversely
to the longitudinal axis.
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Appeal2017-006439
Application 13/580,435
References and Rejection2
Claims 10-23 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Nielsen et al. (US 2008/0253598 Al; published Oct. 16,
2008) ("Nielsen"), van der Zwan et al. (US 2009/0182688 Al; published
July 16, 2009) ("Zwan"), and Zhang et al. (US 2009/0245525 Al; published
October 1, 2009) ("Zhang"). Final Act. 3-7.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. We have considered in this Decision only those arguments
Appellants actually raised. Any other arguments Appellants could have
made but chose not to make are deemed to be waived. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv). We adopt the Examiner's findings and conclusions as our
own, to the extent consistent with our analysis herein.
The Examiner finds claim 10 is disclosed by the combination of
Nielsen, Zwan, and Zhang. Final Act. 3--4. The Examiner concludes that "it
would have been obvious to a person of ordinary skill in the art at the time []
the invention was made to modify the placement of the connector of Nielsen
as described by Zwan and Zhang as a design choice for the purpose of
delivering acoustically tight fit without any leak." Id. at 5 (citing Zhang
,r 20) ("In one embodiment, connector 412 provides an acoustically tight fit
between real ear sound tube 414 and cover 402 using a pliable rubber that is
a friction fit to port 411 to avoid leaks.")).
2 We refer to the above mentioned Appeal Brief filed September 27, 2016
("App. Br."), as well as the following documents for their respective details:
the Final Rejection mailed April 22, 2016 ("Final Act."), the Examiner's
Answer mailed January 25, 2017 ("Ans."), and Appellants' Reply Brief filed
March 10, 2017 ("Reply Br.").
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Application 13/580,435
Appellants argue that "[t]he combination of Nielsen with Zwan fails
to disclose, or fairly suggest, that the connector is connected flush to the
housing as well as failing to teach that the sound tube is ducted into the
receptacle of the housing in a transverse direction ( as defined by the sound
tube longitudinal axis)." App. Br. 7. This argument is unpersuasive of error
because the Examiner cites Zhang for the argued limitations. Final Act. 4;
Ans. 6-8.
Appellants argue, however, that Zhang also does not disclose "the
connector being received in the connector receptacle flush with the housing
of the hearing instrument." App. Br. 7. Appellants contend that Zhang's
cover 402 is not flush because it "projects from the housing." Id.
Appellants also contend "Zhang ... does not disclose that the earpiece
sound tube is ducted into the connector receptacle at the housing of the
hearing instrument" and "[t ]he sound tube 414 of Zhang is not positioned
within an opening or duct of the main housing nor is it positioned [] within a
duct of cover 402." Id. at 7-8.
Appellants' arguments regarding Zhang are not persuasive of error.
The Examiner considers Zhang' s cover 402 to constitute the claimed
"connector" when the connector 412 is integrated with the cover 402. Ans.
6-7. The Examiner thus finds that the integrated connector (i.e., connector
412 plus the cover 402) is "received in the connector receptacle flush with
the housing of the hearing instrument." Id. (citing Zhang Fig. 4).
In the oral hearing conducted on April 9, 2019, Appellants' counsel
conceded that what the Examiner considers the connector (i.e., Zhang's
connector 412 when integrated with the cover 402) is "received in the
connector receptacle flush with the housing of the hearing instrument" as
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Application 13/580,435
shown in Zhang' s Figure 4, but argued instead that there would be no
motivation to make such a modification to Nielsen. Transcript 12 ("It's
flush on the housing ... [ w ]e can say that[, but w ]hy would there be
any motivation to grab this flush connector ... and combine it with
Nielsen."). Accordingly, we are persuaded that Zhang discloses the argued
limitation.
We also are persuaded that Zhang, in Fig. 4, discloses that "the
earpiece sound tube being ducted into the connector receptacle at the
housing of the hearing instrument" and that "the earpiece sound tube
connects to the connector along a longitudinal axis and the connector is
formed for insertion into said connector receptacle at the housing of the
hearing instrument in a direction different from and transversely to the
longitudinal axis." Ans. 5---6. Zhang's earpiece sound tube 410 travels
through the connector 412, through the cover 402, and turns transverse to the
longitudinal axis for insertion into the housing of the hearing instrument
400. Zhang, Fig. 4.
As to Appellants' argument that there is no motivation to combine the
teachings of the references in the manner proposed by the Examiner, we are
not persuaded of error. See Transcript 12; see also App. Br. 5 ("the
modification ... would frustrate the purpose of Nielsen's endeavor," "would
render the prior art invention being modified unsatisfactory for its intended
purpose," "would change the principle of operation of the reference," and
"would make no sense."). Appellants do not present sufficient persuasive
argument or evidence to persuade us that the Examiner's proposed
combination does not constitute "some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." KSR
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Application 13/580,435
Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn, 441
F.3d 977,988 (Fed. Cir. 2006)). The Examiner's articulated reasoning-"it
would have been obvious to a person of ordinary skill in the art at the time[]
the invention was made to modify the placement of the connector of Nielsen
as described by Zwan and Zhang as a design choice for the purpose of
delivering acoustically tight fit without any leak" (Final Act. 5}-is
supported by evidence of record (Zhang ,r 20 ("In one embodiment,
connector 412 provides an acoustically tight fit between real ear sound tube
414 and cover 402 using a pliable rubber that is a friction fit to port 411 to
avoid leaks")), contrary to Appellants' assertion (Reply Br. 2-3 ("The
Examiner has not reasonably pointed to any motivation as to why the person
of skill in the art would have been led to the alleged modifications"; the
Examiner's reasoning is "entirely conclusory" not "based on any motivation
that flows from the prior art teachings, or from the art as a whole"; and
"[t]he rejection is entirely based on hindsight considerations.")). We also
are not persuaded because Appellants do not offer evidence to contradict the
Examiner's findings, and "arguments of counsel cannot take the place of
evidence lacking in the record." See Estee Lauder Inc. v. L 'Orea! 129 F.3d
588, 595 (Fed. Cir. 1997).
Moreover, we note that "[t]he test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference. . . . Rather, the test is what the combined
teachings of [those] references would have suggested to those of ordinary
skill in the art." In re Keller, 642 F.2d 413,425 (CCPA 1981). See also In
re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that
the inventions of the references be physically combinable to render obvious
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the invention under review"); and In re Nievelt, 482 F .2d 965, 968 (CCP A
1973) ("Combining the teachings of references does not involve an ability to
combine their specific structures"). Here, in addition to failing to overcome
the evidence supporting the Examiner's proposed reasons for combining the
teachings of the references to arrive at Appellants' claimed invention (Final
Act. 5; Ans. 8 ( citing Zhang ,r 20)), Appellants arguments are improperly
based on bodily incorporation of the various elements cited by the Examiner
into each other, rather than what the combined teachings of the references
would have taught or suggested to one of ordinary skill in the art. The
skilled artisan would "be able to fit the teachings of multiple patents together
like pieces of a puzzle" because the skilled artisan is "a person of ordinary
creativity, not an automaton." KSR, 550 U.S. at 420-21. Here, Appellants
have not demonstrated the Examiner's proffered combination in support of
the conclusion of obviousness would have been "uniquely challenging or
difficult for one of ordinary skill in the art." Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 420).
Accordingly, we sustain the Examiner's rejection of claim 10, and
claims 11-23, which Appellants do not argue separately with particularity.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 10-23 under 35 U.S.C. § 103(a).
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.
§ 4I.50(f).
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Appeal2017-006439
Application 13/580,435
AFFIRMED
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