Ex Parte Barthel et al

Patent Trial and Appeal Board

Jun 21, 2016

12684148 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/684,148 01/08/2010
24131 7590 06/23/2016
LERNER GREENBERG STEMER LLP
PO BOX 2480
HOLLYWOOD, FL 33022-2480
FIRST NAMED INVENTOR
Roland Barthel
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.
2009P01623 4612
EXAMINER
LE, PHAN
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
06/23/2016 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 ROLAND BARTHEL and ANDRE STEINBUSS
Appeal2015-000193
Application 12/684,148
Technology Center 2600
Before HUNG H. BUI, ADAM J. PYONIN, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-000193
Application 12/684,148
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
THE INVENTION
The application is directed to "[a] hearing device and an associated
method for tuning a hearing aid [that] include[s] at least one hearing aid and
at least one external unit." (Abstract.)
Claim 1, reproduced below, is illustrative:
1. A method of tuning a hearing aid, the method which
comprises the following steps:
wearing the hearing aid by a hearing aid user;
while the hearing aid is being worn by the hearing aid user
and the hearing aid is in an operational mode, storing times and
listening situations in the hearing aid for which at least one
predefined signal processing algorithm is activated;
subsequently switching the hearing aid to learning mode;
outputting the stored times and listening situations and the
respective signal processing algorithm that was activated while
the hearing aid was in the operational mode;
inputting an assessment rating representing the hearing aid
wearer's satisfaction with the signal processing algorithm that
was activated while the hearing aid was in the operational mode;
and changing at least one parameter of the algorithm as a
function of the assessment rating.
1 Appellants identify the real party in interest as "Siemens Medical
Instruments PTE of Singapore, Singapore, which is a related company of
Siemens Aktiengesellschaft of Munich, Germany." (App. Br. 1, emphasis
omitted.)
2
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Application 12/684,148
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Weinfurtner et al. US 6,035,050
Waldmann US 2010/0080398 Al
Fischer
Nordahn
US 7,853,028 B2
US 8,059,847 B2
THE REJECTIONS
Mar. 7, 2000
Apr. 1, 2010
Dec. 14, 2010
Nov. 15, 2011
1. Claims 1 and 8 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
(See Final Act. 2.)
2. Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Fischer, Waldmann, and Nordahn. (See Final Act. 3---6.)
3. Claims 8-10 and 12-13 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Fischer and Nordahn. (See Final Act. 6-7.)
4. Claim 11 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Fischer, Nordahn, and Weinfurtner. (See Final Act. 8.)
ANALYSIS
35 u.s.c. § 112
The Examiner finds that the term "operational mode" recited in
Appellants' claims 1 and 8 lacks the written description support required by
35 U.S.C. § 112, first paragraph. Final Act. 2. The Examiner further states
that "' [ o ]perational mode' will be interpreted as the hearing aid is on"
because "'operational mode' ... is not explained in the specification."
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Application 12/684,148
(Final Act. 2.) We, however, agree with Appellants that the term is "fully
supported in the original specification." (App Br. 4.) Although it is true that
"operational mode" does not appear in the Specification, we conclude that
one of skill in the art reading the disclosure2 would understand "operational
mode" to mean that the device is powered on and operating as a hearing aid,
as contrasted with the "learning mode," in which the device is also powered
on, but not aiding the user's hearing. (See, e.g., Spec. i-fi-132-33 ("In a first
step 100, a hearing aid user wears the hearing aid whose parameters are to be
adjusted. In step 101, the hearing aid stores the times and listening
situations where at least one pre-definable hearing aid signal processing
algorithm is activated .... In the subsequent step 102, the hearing aid is
switched over to a learning mode.").)
The Examiner also finds that the claim 8 recitation "the 'hearing aid is
disconnected from said at least one external unit' while storing is not
explicitly disclose[d] in the specification." (Final Act. 2.) We again
conclude that, although that exact language may not have been used in the
Specification, one of ordinary skill in the art would understand the inventors
to have been in possession of the claimed subject matter. The claim 8
limitation at issue is "a memory unit in said hearing aid, said memory unit,
while said hearing aid is disconnected from said at least one external unit,
storing times and listening situations for which at least one pre-definable
signal processing algorithm is activated." The Specification describes how
2 See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) ("[T]he test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.").
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Application 12/684,148
the hearing aid captures the times and listening situations, and is then
switched into learning mode, "in the evening, for example," at which time
the data may be displayed or output on a personal computer, which is an
"external unit." (See, e.g., Spec. i-fi-f 17, 23, 33.) In view of this disclosure, a
skilled artisan would understand that the Applicants contemplated capture of
the data while the hearing aid was disconnected from the computer.
For these reasons, we do not sustain the Section 112 rejections.
35 U.S.C. § 103(a)
The claimed invention stores, in a hearing aid, times and listening
situations when a particular algorithm is active, outputs the times, listening
situations, and algorithms, receives an assessment rating representing the
hearing aid wearer's satisfaction with the algorithm, and changes a
parameter of the algorithm in response to the rating. (See Claims 1 & 8.)
Fischer describes a system for adjusting a hearing aid in which
parameters representing real hearing situations are stored and then
reproduced for the user to perform adjustments, so that the user need not
wait for such a real hearing situation to arise. (See Fischer, Abstract & 2:3-
11.) We find that Fischer does not teach "while the hearing aid is being
worn by the hearing aid user and the hearing aid is in an operational mode,"
the system "stor[ es] times and listening situations in the hearing aid for
which at least one predefined signal processing algorithm is activated." (See
Claim 1.) Even assuming Fischer's storage of parameters could fairly
correspond to the claimed "listening situations," times are not stored. Nor is
it the case that Fischer "output[ s] the stored times and listening situations
and the respective signal processing algorithm that was activated while the
hearing aid was in the operational mode." Instead, the user listens to the test
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Application 12/684,148
data and makes adjustments directly to the hearing aid. (See Fischer 3: 18-
26 ("[T]he hearing aid wearer can adjust the signal processing of his hearing
aid himself by actions on his hearing aid or on a remote control.").)
Nordahn, which describes determining the occlusion associated with
a hearing aid by measuring and comparing sound levels outside the ear and
inside the ear with the hearing aid in place (see Nordahn 7: 17--43), does not
make up for Fischer's shortcomings. Waldmann, which is only cited for "an
assessment rating representing the hearing aid wearer's satisfaction with the
signal processing algorithm that was activated" (Final Act. 4 ), also does not
teach storing times or outputting the data.
For these reasons, we conclude that the Examiner's combinations do
not establish prima face obviousness of independent claims 1 and 8, and we
decline to sustain the Section 103 rejections of these claims and the claims
that depend therefrom.
DECISION
The rejections of claims 1-13 are reversed.
REVERSED
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