Ex Parte BERG

Patent Trials and Appeals Board

Apr 18, 2019

14790744 - (D) (P.T.A.B. Apr. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/790,744 07/02/2015 Richard Steenfeldt BERG
22850 7590 04/22/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
520768US 1874
EXAMINER
LE,HUYEND
ART UNIT PAPER NUMBER
2655
NOTIFICATION DATE DELIVERY MODE
04/22/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD STEENFELDT BERG 1
Appeal2017-007371
Application 14/790,744
Technology Center 2600
Before ROBERT E. NAPPI, ERIC S. FRAHM, and
MICHAEL T. CYGAN, Administrative Patent Judges.
NAPPI, 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 Final Rejection of claims 1 through 10, which constitute all the
claims pending in this application. Oral arguments were heard on April 15,
2019. A transcript of the hearing will be added to the record in due course.
We have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Freebit AS. App. Br.
1.
Appeal2017-007371
Application 14/790,744
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. An ear unit for stably fitting in an ear having an
antihelix, a ems of helix, a tragus and a concha surrounded by
the antihelix, the ear unit comprising a body and an ear
interface, the ear interface extending from the body and
comprising a C-shape member,
wherein the body comprises a housing for a hearing
element and an outlet for said hearing element;
wherein the C-shape member is configured as a
decremental curve corresponding to the inner part of the
antihelix and is partly positioned under the antitragus; said C-
shape member being further provided with a curvature resting
against an inner surface of the concha when the ear unit is
positioned in the ear, preventing the outlet from being pressed
into the ear canal beyond its entrance.
REJECTIONS AT ISSUE2
The Examiner has rejected claims 1 through 10 under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement. 3
Final Act. 3--4, Answer 3-4.
2 Throughout this Decision, we refer to the Appeal Brief ("App. Br.") filed
September 20, 2016, the Reply Brief ("Reply Br.") filed March 17, 2017, the
Final Office Action ("Final Act.") mailed February 19, 2016, and the
Examiner's Answer ("Ans.") mailed January 17, 2017.
3 We note that the rejection under 35 U.S.C. § 112(a), is accompanied by an
objection of the specification under 35 U.S.C. § 132(a) for introducing new
matter. Answer 2-3, Final Act 2-3.
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Application 14/790,744
The Examiner has rejected claims 1, 2, and 9 under 35 U.S.C.
§ I02(b) as being anticipated by Berg (US 6,944,307 B2; Sept. 13, 2005).
Answer 5, Final Act. 7.
The Examiner has rejected claims 1, 2, and 9 under 35 U.S.C.
§ I03(a) as being unpatentable over Berg and Varming (US 2007/0105598
Al; May 10, 2007). Answer 6-7, Final Act. 7-9.
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 not persuaded us of error in the
Examiner's (i) written description rejection of claims 3 through 8 and 10; (ii)
anticipation rejection; or (iii) obviousness rejection. Appellant's arguments
have persuaded us of error in the Examiner's written description rejection of
claims 1, 2, and 9.
Rejection under 35 U.S.C. § 112(a) / Objection under 35 U.S.C.
§ I32(a)
As an initial matter, the board typically does not hear arguments and
render decisions on petitionable issues, however when there is a new matter
objection and a rejection as both the claims and the Specification recite the
new matter, the issue becomes appealable. See Manual of Patent Examining
Procedure (MPEP) § 2163.06 (II). As there are several new matter/written
description issues, we will address them as they relate to the claims.
Claims 1 and 9
With respect to claims 1 and 9, the Examiner rejects the claims as
lacking written description as
[t]he original specification does not disclose that the body
comprises a housing for a hearing element and an outlet for the
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Application 14/790,744
hearing element, wherein the C-shape member is provided with
a curvature resting against an inner surface of the concha when
the ear unit is positioned in the ear, preventing the outlet from
being pressed into the ear canal beyond its entrance.
Answer 4.
The Examiner notes that it appears the application is a Continuation-In-Part
(CIP) of 14/109,565 and 12/600,795 and that the amendments to the
Specification filed with this application on July 2, 2015, are not supported
by the parent applications. Answer 7. Further, the Examiner identifies that
the amendments made to paragraphs 24 and 27, were not entered into the
Specification as they introduce new matter. 4 Answer 8.
Appellant argues the rejection is in error as the "the Specification has
been amended, as in the Amendment filed February 5, 2016, to be in
sufficient detail that one skilled in the art can reasonably conclude that the
inventor had possession of the claimed invention, and that as mentioned
above, such amendments do not introduce new matter." App Br. 10.
Additionally, Appellant argues that the claims of the original filed
application are part of the disclosure and as such provide support for the
claims. App Br. 5---6. Appellant argues that the February 5, 2016
amendment merely amended the specification to incorporate the claimed
subject matter. App. Br. 5---6. Further, Appellant argues that the claims are
"supported by the originally filed Specification of the direct parent
application No. 14/109,965 [sic 14/109565]." App Br. 10. Additionally,
Appellant argues that the claims of the original filed application are part of
the disclosure and as such provide support for the claims. App Br. 5---6.
4 We note that the amendments to paragraphs 24 and 27 of the specification
were submitted on February 5, 2016, after the filing of the current
application.
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Application 14/790,744
With respect to independent claims 1 and 9, Appellant additionally argues
that the Figures 2 through 5 of the originally filed application and the parent
applications demonstrate possession of the claimed invention. App Br. 10-
11. Specifically. Appellant explains how the drawings depict the device
with a body, which includes a C-Shaped ear interface, the body including an
outlet for the hearing element and the C-shaped member has a curvature for
resting against an inner surface of the concha when in the ear for preventing
the outlet from being pressed into the ear canal beyond its entrance. App Br.
11-12. 5
We are persuaded of error in the Examiner's rejection of claims 1 and
9 by these arguments. As argued by Appellant, the claims are part of the
disclosure, and claim 1 is an originally filed claim. We agree with
Appellants that, in view of the originally filed drawings and Specification,
originally filed claim 1 provides written description support for the appealed
claim 1 and claim 9, which are rejected for similar reasons as of the filing of
this application. 6 Similarly, we are persuaded that the inclusion of numerals
to identify existing drawing elements is not new matter, however as
discussed infra, the description of these items beyond what is apparent in the
drawings is. Accordingly, we do not sustain the Examiner's rejection of
claims 1 and 9 as lacking written description.
5 Appellant's arguments cite to elements 40-43 of the figures which were
depicted in the drawings of the originally filed specification and the parent
applications, but not designated with these numbers.
6 We do not reach the issue of whether the claim should be afforded priority
as it is not at issue, the prior art used in the anticipation and obviousness
rejections predate the parent documents.
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Application 14/790,744
Claim 2
The Examiner finds that the originally filed Specification does not
teach "the curvature engages a distal part of the ems of helix from the
entrance to the ear canal thereby preventing the outlet from being pressed
into the ear canal beyond its entrance." Answer 4.
Appellant argues that Figure 2, of the parent application depicts the
curvature on the decremented curve. App Br. 12. Further, Appellant argues
that since the "C-shaped falls along the inner part of the antihelix, it has to
be a distal part of the ems of helix 18 from the entrance to the ear canal for
the curvature 21 to engage." App Br. 12.
We concur with Appellant that the originally filed Specification
demonstrates Appellant possessed the invention recited in claim 2. Claim 2
states "curvature engages a distal part of the ems of helix from the entrance
to the ear canal thereby preventing the outlet from being pressed into the ear
canal beyond its entrance." Appellant's Figure 1 (of both the current
application and the parent applications) depicts an ear and includes a curve,
(item 4, shown in dashed and solid lines), which shows how the device of
Figure 2 sits in the ear, thus, demonstrating the curvature engages the ems of
the helix. While neither the originally filed Specification nor the parent
applications use the term "outlet" we consider that the skilled artisan
viewing the figures would understand that the outlet of the hearing device is
the portion of the body of the ear unit facing the user's ear. Further, the
discussion in paragraph 26 of the originally filed Specification, which is also
in the parent documents, demonstrates the outlet does not extend into the ear
canal ( see paragraph 26 statement "the part of the ear unit 10 comprising the
hearing element is retracted slightly relative to the curve, ensuring that the
hearing element does not abut the auditory canal directly, allowing the
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Application 14/790,744
formation of an opening between the auditory canal and the surroundings.").
Thus, we are persuaded of error, and do not sustain the Examiner's rejection
of claim 2 as lacking written description.
Claims 3 through 7
The Examiner rejects claims 3 through 7 as the original disclosure
does not show the Appellant possessed the limitation directed to
"the body comprises a frusto-geometric structure for the outlet,
being configured so that a smaller end of the frusto-geometric
structure is smaller than the entrance to the ear canal and a
larger end of the frusto-geometric structure is larger than the
entrance to the ear canal, wherein the frusto-geometric structure
is a frusto-conical structure, a frusto-spherical structure, an
extension to the outlet or surrounds the outlet as claimed."
Answer 4, 11.
Appellant argues that regarding this limitation of the frusto-geometric
structure, the term is "used in the normal meaning of the word: a frustum
being provided on the geometry, here typically frusto-conical or frusto-
spherical." Further, Appellant argues that claimed "smaller end is the at
least one hole shown in figure 2 on the right hand side" and that since a
"plurality of holes open up in the direction of the ear canal, it can be
understood that each hole shown must be smaller than the entrance to the ear
canal." App Br. 13. Further, Appellant argues that the frusto-conical
embodiment is seen in Figure 3 where the outer walls of the C-shaped
element rise in a section of a cone and provides the same explanation for the
frusto-spherical and frusto-geometric limitation. App. Br. 13.
Appellant's arguments have not persuaded us of error in the
Examiner's rejection. Initially, we note that Appellant's arguments are
logically flawed, a cone is different from a sphere, and therefore the same
Figure 3 cannot show the same surface as being a shape based upon a cone
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Application 14/790,744
and a sphere. Appellant's Specification does not provide any discussion of
the shape of inner circumferential surface 26 in Figure 3, let alone that it's
based upon a frustum of another shape. Simply put, Figure 3 does not
delineate the perimeter of any outlet that could be considered being frusto-
geometric and having two parallel planes. 7 Further, the term frusto-spherical
and frusto-conical refer to a shape of a frustum of a sphere or cone. A
frustum is commonly defined as "the basal part of a solid cone or pyramid
formed by cutting off the top by a plane parallel to the base." Merriam
Webster online dictionary. Neither Appellant's Specification nor
Appellant's drawings show two surfaces in parallel panes as is the case with
a frustum. To the contrary, surface 21 is shown as not being planar. Further,
with regard to the relative size of the two ends of the frusto-geometric
element, Appellant's Specification does not discuss, the relative size. Also,
"[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." Hockerson-
Halberstadt, Inc. v. Avia Group Int'!., Inc., 222 F.3d 951, 956 (Fed. Cir.
2000). Accordingly, we sustain the Examiner's rejection of claims 3
through 7.
7 Notably, even if one were to consider the amended Specification and
Drawings, showing and describing the outlet as element 42 (see
Replacement Figs. 4 and 5), there is no readily apparent perimeter of
element 42 shown in the Figures, and differentiable from elements 26, 30,
and 25, that has the shape of a frustum of a sphere or cone (and having
parallel planes cutting off the top and bottom of a cone or sphere).
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Application 14/790,744
Claims 8 and 10
The Examiner rejects claims 8 and 10 as the original disclosure does
not show the Appellant possessed the limitation directed to the ear piece
being removable attached to the body. Answer 4.
Appellant arguments have not addressed this finding by the Examiner.
Accordingly, we sustain the Examiner's rejection claims 8 and 10.
Rejection under 35 U.S.C. § 102(b)
Appellant argues that representative claim 1 recites a C-shaped
member with a decremental curve corresponding to the antihelix and a
curvature resting against the inner surface of the concha when the unit is
positioned in the ear, preventing the outlet from being pressed into the ear
canal beyond its entrance. App. Br. 14. Appellant argues that Berg teaches
a C-shaped piece curve, item 9, which contacts the inner surface of the
antihelix, but that Berg does not disclose a further curvature or that the C-
shaped element makes contact with the concha. App. Br. 15. Thus,
Appellant concludes that Berg does not teach both the decremental curve
and the curvature as recited in representative claim 1.
The Examiner responds to Appellant's argument stating:
Berg further teaches the C-shape member being further
provided with a curvature ( the inner surface of the decremental
curve 9 of the earpiece 10) resting against an inner surface of
the concha when the ear unit is positioned in the ear, preventing
the outlet from being pressed into the ear canal beyond its
entrance ( col. 2, lines 21-42 and lines 45-53). Since the
earpiece (10) with the curve (9) of the outer C, the upper part
and lower part (5, 8) and the central portion is supported and
positioned within the inner part of the antihelix and projected
into the cavity covered by the lower node of the antihelix and
underneath the flap covering the lower part of the cavity ( col. 2,
lines 21-33) or at the position underneath the flap covering the
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Application 14/790,744
region in front of the cymba concha of the ear, below its
inferior antihelix crux ( col. 2, lines 45-67 through col 3, lines 1-
5), Berg does teach the ear unit with the C-shape member that is
provided with a curvature ( the inside surface of the earpiece)
resting against an inner surface of the concha when the earpiece
is worn (also see claims 1 and 2 [of Berg]).
Answer 11-12.
We concur with the Examiner. Initially, we note that while the figures
of Berg do not depict the side of 10 which faces the ear canal. In the
prosecution of parent case 12/600,795 (U.S. Patent 8,630,436), Appellant
admitted that Berg's C-shaped member includes a surface that rests on the
concha. See page 10 of the reply dated July 15, 2013, see also page 23 of
the Final Written Decision of IPR 2017-00129 mailed April 18, 208, (U.S.
Patent 8,630,436). Thus, it is settled that the C-Shaped member of Berg
element makes contact with the concha. Further, we agree with the
Examiner's reasoning that the skilled artisan would recognize that if the C-
shaped member rests in the antihelix, with the upper part and lower part (5,
8) projected into the cavity covered by the lower node of the antihelix, the
surface resting on the concha will have a curve. Further, with respect to the
limitation directed to the outlet not being pressed into the ear canal beyond
its entrance, we concur with the Examiner that this is taught. Answer 11
(citing Berg col. 2, 11. 21--42, 45-53). Specifically it is taught by Berg's
statement "the part of the ear piece 10 containing the hearing element is
retracted slightly relative to the C-shaped part, ensuring that the hearing
element does not abut the auditory canal directly, allowing the formation of
the an opening between the auditory canal and the surroundings" Col. 2, 11.
37--42. Accordingly, Appellant's arguments have not persuaded us of error
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Application 14/790,744
in the Examiner's rejection of claim 1 and we sustain the Examiner's
anticipation rejection of claims 1, 2, and 9 under 35 U.S.C. § 102(b).
Rejection under 35 U.S.C. § 103(a)
Appellant argues the Examiner's rejection is in error as Berg does not
teach, preventing the outlet from being pressed into the ear canal beyond its
entrance. App Br. 16-17. Further, Appellant contests the Examiner's
finding that Vanning teaches in Figures 3a and 3b, that the headset prevents
the outlet from being pressed into the ear canal beyond its entrance or that
the headset has the claimed C-shaped member. App. Br. 17. Further,
Appellant argues that Varming teaches away from using a C-shaped member
as claimed. App. Br. 17-18.
The Examiner identifies that the rejection under 35 U.S.C. § 103 is
based upon an alternative interpretation of Berg and relies upon Varming to
teach the audio headset resting on the surface of the concha and preventing
the outlet from being pressed into the ear. Answer 12 (citing Vanning
Figures 3a, 3b and para. 35).
We concur with the Examiner and are not persuaded of error by
Appellant's arguments. Initially, as discussed above, we concur with the
Examiner's findings that Berg teaches preventing the outlet from being
pressed into the ear canal beyond its entrance. In that respect, we consider
the citation of Varming to merely be cumulative of a teaching already
present in Berg. We find that Varming teaches problems with devices which
enter the ear canal and proposes a different arrangement which allows air
and surrounding sounds to enter (Varming paras. 0004, 0005, and 0019).
Vanning recognizes that there are devices with a C-shaped structure ( similar
to Berg's) which does not have the problem of entering the ear canal but are
not ideal as they may not stay fixed to the ear. Paras. 0006-0007. Thus, we
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Application 14/790,744
concur with the Examiner that V arming teaches a hearing device that does
not enter the ear canal, and we note actually identifies that devices such as
Berg's do not enter the ear canal. While, V arming does teach an
improvement to the C-shaped structure such as Bergs, we do not find that
Vanning discourages applying the teaching of the device not entering the ear
canal to the C-shaped structure of Berg.
[A] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be lead in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend upon the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference's disclosure is unlikely to be
productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551,553, (Fed. Cir. 1994) (citing United States v.
Adams, 383 U.S. 39, 52, (1966)) .. Here we find that Varming does not
discourage the use of the C-Shaped structure to keep the hearing device from
entering the ear canal. Rather it teaches the desirability of keeping the
hearing device from entering the ear canal and use of a different structure to
achieve this result. Accordingly, Appellant's arguments have not persuaded
us of error in the Examiner's obviousness rejection of claims 1, 2, and 9.
DECISION
We affirm the Examiner's to rejection of claims 3 through 8 and 10
under 35 U.S.C. § 112(a), and the rejection of claims 1, 2, and 9 under
35 U.S.C. § 102(b) and 35 U.S.C. § 103(a).
We reverse the Examiner's rejection of claims 1, 2, and 9 under 35
U.S.C. § 112(a).
Because we affirm at least one ground of rejection with respect to
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each claim on appeal, the Examiner's decision rejecting claims 1 through 10
is affirmed. See 37 C.F.R. § 41.50(a)(l ).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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