Ex Parte Falco

Patent Trial and Appeal Board

Sep 21, 2017

13795790 (P.T.A.B. Sep. 21, 2017)

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.
13/795,790 03/12/2013 Robert N. Falco 64520US013 1565
32692 7590 09/25/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
PATEL, TARLA R
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT N. FALCO
Appeal 2016-006225
Application 13/795,790
Technology Center 3700
Before STEVEN D.A. McCARTHY, LYNNE H. BROWNE, and
THOMAS F. SMEGAL, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge SMEGAL.
Opinion Dissenting filed by Administrative Patent Judge McCARTHY.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert N. Falco (Appellant)1 seeks our review under 35 U.S.C. § 134
of the Examiner’s rejections2 under 35 U.S.C. § 102(b) of claims 1—4 and 7
as anticipated by Falco (US 5,809,574, iss. Sept. 22, 1998); and claims 1—3,
5, 6, 8, and 9 as anticipated by Bright (US 5,781,272, iss. July 14, 1998). We
have jurisdiction under 35 U.S.C. § 6(b).
1 According to Appellant, the real party in interest is 3M Company. Appeal
Br. 2.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated August 11, 2015 (“Final Act.”).
Appeal 2016-006225
Application 13/795,790
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
1. A hearing protector, comprising:
a sound attenuating element; and
a stem extending from the sound attenuating element;
wherein the stem comprises multiple curved segments.
ANALYSIS
Anticipation of Claims 1—4 and 7 by Falco.
Appellant argues claims 1—4 and 7 together in contesting the rejection
of these claims as anticipated by Falco. Appeal Br. 3; Reply Br. 2-4. We
select claim 1 as the representative claim for this group, and the remaining
claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Falco anticipates the claims by disclosing “a
hearing protector (see figures 12-13C), comprising a sound attenuating
element (100) and a stem (104, 20’ and 50) extending from the sound
attenuating element (see figures 12-13C), wherein the stem comprises
multiple curved segments (54, 52).” Final Act. 2. The Examiner also
explains that “as described above in [the] rejection[,] stem refer[s] to an
element that is extending from [the] earplug and meets the broadest claim
limitations of stem [] having multiple curved segments,” reasoning that
because Appellant “is not claiming [a] specific structural] limitation for
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Application 13/795,790
[the] stem and [the stem] is not defined as a specific structure in [the]
specification either,” that Falco meets the claim limitation. Id. at 4.
In taking issue with the analysis and conclusions presented in the
Final Office Action, Appellant contends that Falco discloses a hearing
protection device 10 that includes ‘various hearing protectors’ 101—103,”
which “can include a component such as foam portion 106” that... is
‘coupled to a stem 104.’” Appeal Br. 3 (citing Falco, col. 4,11. 29—30).
Appellant also contends that “various additional headbands, arms, ball-and-
socket pivots and the like are not ‘stems’ within the meaning of the present
invention,” while “the stem that is disclosed in Falco [] does not include
even a single curved segment it cannot anticipate the claimed invention.” Id.
Appellant also argue that even though “the band portion 52 and reverse
curve portion 54 extend from the reverse curve end 20' that receives the stem
104,” that “elements 52, 54 are not [on] the stem 104.” Reply Br. 2 (citing
Falco, col. 5,11. 46-49).
We determine the scope of the claims in a patent application by giving
claims “their broadest reasonable interpretation consistent with the
[Specification” and “in light of the specification as it would be interpreted
by one of ordinary skill in the art.” In re Am. Acad. ofSci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). Appellant “maps” the
claims to figure 24 which illustrates stem 252 as having multiple curved
segments. Figure 24, described at paragraph 53 of the Specification, further
describes stem 252 as including attachment portion 14 and curvilinear
handle 254. Appeal Br. 2.
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Application 13/795,790
Thus, Appellant’s contention is not persuasive as it does not point to a
lexicographic definition of “stem” in the Specification or other disclosure
that is inconsistent with the Examiner’s finding that the stem of Falco
comprises components 20 and 50, as well as element 104. Final Act. 2.
For the foregoing reasons, we discern no error in the Examiner’s
findings and agree that Falco anticipates claims 1—4 and 7.
Anticipation of Claims 1—3, 5, 6, 8, and 9 by Bright
Appellant argues claims 1—3, 5, 6, 8, and 9 together in contesting the
rejection of these claims as anticipated by Bright. Appeal Br. 3—4; Reply Br.
4—5. We select claim 1 as the representative claim for this group, and the
remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Bright anticipates the claims by disclosing “a
hearing protector, comprising a sound attenuating element (38, 40) and a
stem (43, 98, 88 and 66) extending from the sound attenuating element,
wherein the stem comprises multiple curved segments.” Final Act. 3 (citing
Bright, Fig. 1). The Examiner also explains that “as described above in [the]
rejection[,] stem refer[s] to an element that is extending from [the] earplug
and meets the broadest claim limitations of stem [] having multiple curved
segments,” reasoning that because Appellant “is not claiming [a] specific
structural] limitation for [the] stem and [the stem] is not defined as a
specific structure in [the] specification either,” that Bright meets the claim
limitation. Id. at 4.
In taking issue with the analysis and conclusions presented in the
Final Office Action, Appellant contends that while disclosing eyewear
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Application 13/795,790
having earplugs 38 and 40 each including “an ‘attachment stem’ 43 that
attaches the earplug to the eyewear,” Bright “doesn’t include even a single
curved segment, much less two curved segments as required by claim 1.”
Appeal Br. 3^4.
In response, the Examiner refers to annotated reproductions of
Bright’s drawing figure 1 and Appellant’s drawing figure 24 and again
points out that Bright discloses “element[s] 43, 98, 88 and 66 [that extend]
from earplug 38 [and have] two curves,” thus disclosing “a stem having
multiple curved segments.” Ans. 6.
Appellant contends “that equating all of the elements 43, 98, 88,
and 66 to the claimed stem is an unreasonable interpretation because
Bright [] does not describe each as being a stem,” pointing out that “only
element 43 is described as a stem,” and that only cord 148 is described as
“attached at a distal portion of the stem 43.” Reply Br. 4—5 (citing Bright,
Fig. 6).
As pointed out supra, we determine the scope of the claims in a patent
application by giving claims “their broadest reasonable interpretation
consistent with the [Specification” and “in light of the specification as it
would be interpreted by one of ordinary skill in the art.” In re Am. Acad.,
367 F.3d at 1364. As previously explained, while Appellant maps the claims
to figure 24, illustrating stem 252 as having multiple curved segments,
paragraph 53 of the Specification also describes stem 252 as including
attachment portion 14 and curvilinear handle 254.
Thus, Appellant’s contention is not persuasive as it does not point to a
lexicographic definition of “stem” in the Specification or other disclosure
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that is inconsistent with the Examiner’s finding that the stem of Bright
comprises elements 98, 88, and 66, as well as element 104. Final Act. 3.
For the foregoing reasons, we discern no error in the Examiner’s
findings and agree that Bright anticipates claims 1—3, 5, 6, 8, and 9.
DECISION
We AFFIRM the Examiner’s rejections.
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)(l)(iv).
AFFIRMED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT N. FALCO
Appeal 2016-006225
Application 13/795,790
Technology Center 3700
Before: STEVEN D.A. McCARTHY, LYNN H. BROWNE and
THOMAS F. SMEGAL, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge, concurring.
Claim 1 is the sole independent claim on appeal:
1. A hearing protector, comprising:
a sound attenuating element; and
a stem extending from the sound attenuating element;
wherein the stem comprises multiple curved segments.
The Examiner rejects claims 1—4 and 7 under pre-AIA 35 U.S.C.
§ 102(b) as being anticipated by Falco (US 5,809,574, issued Sept. 22,
1998). The Examiner also rejects claims 1—3, 5, 6, 8 and 9 under § 102(b) as
being anticipated by Bright (US 5,781,272, issued July 4, 1998). In support
of these rejections, the Examiner interprets the term “stem” as sufficiently
broad to encompass “an element that is extending from earplug and meets
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the broadest claim limitations of stem and having multiple curved
segments.” (Final Office Action, mailed August 8, 2011 (“Final Act.”), at
4). I disagree with the reasonableness of interpretation; and with the
Examiner’s finding that the term “stem” reads on structure disclosed by
Falco and Bright (see Final Act. 2 & 3; Examiner’s Answer, mailed March
28, 2016 (“Answer” or “Ans.”), at 4—7). For this reason, I disagree with my
colleagues’ decision to affirm the rejections of claims 1—9.
A claim under examination is given its broadest reasonable
interpretation consistent with the underlying specification. In re Am. Acad.
ofSci. Tech. Ctrs., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “Broadest
reasonable interpretation” means looking “to the specification to see if it
provides a definition for claim terms, but otherwise applying] a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). Applying “a broad interpretation” does not mean
disregarding either intrinsic evidence, or reliable and consistent extrinsic
evidence, when interpreting the language of a claim. Instead, one must
apply to that language “broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
Prior art within the applicant’s field of endeavor may provide
guidance as to the ordinary usage of words as they would have been
understood by one of ordinary skill in the art. Nevertheless, “[ajbsent an
express definition in the specification, the fact that appellants can point to
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definitions or usages that conform to their interpretation does not make the
PTO’s definition unreasonable when the PTO can point to other sources that
support its interpretation.” Id. at 1056.
The Appellant’s Specification does not formally or lexicographically
define the term “stem.” The Specification describes a stem as follows:
The stem provides a degree of rigidity to the earplug which
enables the earplug to be easily inserted and pushed into the ear
canal of a user. Further, where the stem extends from the sound
attenuating element, it may serve as a handle of the earplug to
facilitate insertion and removal of the earplug.
(Spec., para. 4). Figure 24 of the underlying application depicts an earplug
250 including a stem 252.
The Specification describes this earplug 50 as including:
a stem 252 which includes the attachment portion 14 (not shown)
affixed to the sound attenuating element 52 and which further
includes a curvilinear handle 254 extending therefrom. The
handle 254 includes curved sections such that the handle 254 is
offset from and non-collinear with the axis A—A of the sound
attenuating element 52. The handle 254 traces a substantially
serpentine pattern, i.e., an approximately S-shaped pattern. In a
general sense the stems 202 [depicted in Figure 23] and 252
include respective handles 204 [Figure 23] and 254 which
include curvilinear features which result in a non-collinear
relationship between the handles and the axis A—A. The stem
handles 204,254 may of course further include additional curved
segments and/or linear segments as desired.
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(Spec., para. 53). In addition, the “handles 204, 254 . . . can additionally
and/or alternatively comprise the handling area 20 and the aperture 22 for
receipt and retention of a cord.” (Spec., para. 55). Such an “aperture 22 and
resulting cavity ... are configured to receive and retain a cord 51 as shown
in FIG. 21. The cord 51 allows the resulting earplug 50 to be attached to
another earplug 50 to form a connected pair of earplugs 50.” (Spec., para.
44). The Specification does not describe any other structure included in the
stem 252.
Falco describes a hearing protection device including a frame 10
having a band 12 connecting a pair of legs 14 (see Falco, col. 3,11. 1 & 2);
and a pair of hearing protectors or ear plugs 100, each attached to one of the
legs 14 (see Falco, col. 3,11. 24—26). Two hearing protectors 100 are
depicted in side sectional view in Figures 11A and 1 IB of Falco:
FIG. I IB
According to Falco, each “hearing protector 100 comprises a foam portion
106 coupled to a stem 104.” (Falco, col. 4,11. 29 & 30). The coupling
between the stem 104 and the foam portion 106 is rigid. (Cf. Falco, col. 4,
11. 30-36 (describing either an adhesive bond or a permanent mechanical
bond between the stem 104 and the foam portion 106)). As indicated by a
comparison of Figures 8—1 IB with Figures 15A—15C, the foam portion is
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designed to be placed in a user’s ear canal, indicating that the foam portion
serves as a sound attenuating element.
One function of the “stem” 104 is to detachably engage holes 34
through the ends 20 of the legs 14 of the frame 10 to attach the hearing
protectors 100 to the frame 10. (See Falco, col. 3,11. 24—26; col. 4,11. 11—13
& 46-49; & Figs. 8—10). The “stem” also serves as a handle to permit a user
in removing the hearing protector 100 from the user’s ear. (Cf. Falco, col. 4,
1. 66 — col. 5,1. 2 (describing the stems as “aid[s] to removal of the hearing
protector 100 if necessary”)). Falco’s description of the “stem” as a means
for connecting the hearing protectors 100 to the legs 14 of the frame 10
implies that Falco uses the term “stem” to indicate structure separate from
the frame.
Bright describes a combined eyesight and hearing safety apparatus 20.
The apparatus 20 includes a front guard portion 22 with a transparent panel
28 for protecting a user’s eyesight. (See Bright, col. 2,11. 46—53 & Fig. 1).
The apparatus 20 also includes a pair of earplugs 38, 40 for protecting the
user’s hearing (see Bright, col. 3,11. 7—12); and a suspending means 148
including a tiepiece or cord 150 for retaining the apparatus on a user’s head
and neck (see id., col. 8,11. 9—13). Earplugs 38, 40, and suspending means
148, are depicted in Figure 6 of Bright:
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150
As depicted in Figure 6, each earplug 38, 40 includes multiple curved
elements 42 tapering toward the end of the earplug to snugly engage the
user’s ear canal. (See Bright, col. 3,11. 12—17). In this manner, the multiple
curved elements 42 act as sound attenuating elements. Each earplug 38, 40
also includes “an attachment stem 43 for attaching the earplugs 38, 40 to the
eyesight and hearing safety apparatus 20.” (Bright, col. 3,11. 17—20). The
“attachment stem” 43 terminates at an end opposite the multiple curved
elements 42 in a ball 143 defining a reception cavity accessible through an
aperture 144. (See Bright, col. 8,11. 4—8).
The eyesight and hearing safety apparatus 20 includes adjustable
temple members 44, 52 for connecting the earplugs 38,40 to the front guard
portion 22. (See generally Bright, col. 4,11. 22 46). Each temple member
44, 52 is hinged at one end to the front guard portion 22 to form, in effect, a
safety glasses frame as depicted in Figure E (See id.) Each temple member
44, 52 defines an aperture 60, 62 at its opposite end for detachable receipt of
the attachment stem 43 of a corresponding one of the earplugs 38, 40, in
order to couple the earplugs 38, 40 to the frame. (See generally Bright, col.
4,1. 35 — col. 5,1. 18). Retaining elements 154,156 received in apertures
144 in the ends of the attachment stems 43 attach the tiepiece or cord 150 of
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the suspending member 148 to the earplugs 38, 40. (See Bright, col. 8,11.
19—30). Bright’s description of the “ attachment stems” as means for
connecting the earplugs 38, 40 to the temple member 44, 52 of the frame,
and to the retaining elements 154,156 of the suspending member 148,
implies that Bright uses the term “stem” to indicate structure separate from
the frame and the suspending member.
The Specification and the prior art of record consistently use the term
“stem” to indicate structure susceptible of use as a handle to permit a user in
removing an earplug or hearing protector from the user’s ear; for detachable
receipt in a hole or aperture in a frame to attach an earplug or hearing
protector to the frame; or for receipt of an end of a cord to connect a cord to
the earplug or hearing protector. The latter two functions imply that the
ordinary usage of “stem” as it would have been understood by one of
ordinary skill in the art would have excluded frames or cords to which the
earplugs or hearing protectors might have been attached. This consistent
usage cannot be characterized as anecdotal because the Examiner fails to
point to other sources that support a broader interpretation of the term. On
the basis of the evidence of record in the application, I conclude that the
Examiner’s interpretation of the term “stem” is unreasonably broad to the
extent that the term is deemed to encompass parts of a frame or cord to
which an earplug or hearing protector might be attached.
Independent claim 1 recites “wherein the stem comprises multiple
curved segments.” The Examiner finds that Falco describes a hearing
protector including a “stem” including multiply curved portions 52, 54 of a
frame 50 (see Falco, col. 5,11. 31—34 & Figs. 12 & 13A—13C); and that the
multiply curved portions define the multiple curved segments recited in the
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claim. (See Final Act. 2). The Examiner also finds that Bright describes a
hearing protector including a “stem” including a horizontal adjustment
means 66 and a deformable vertical adjustment means 98 of a rear temple
portion 88 of a frame connecting the earplugs 38, 40 with the front guard
portion 22 (see Bright, col. 5,11. 19—22 & 50-53; col. 6,11. 5—18; & Figs. 1
& 5); and that the curvature of the deformable vertical adjustment means
define the multiple curved segments recited in the claim. (See Final Act. 3).
The Appellant correctly responds that neither the multiply curved
portions 52, 54 of a frame 50, as described in Falco; nor the rear temple
portion 88 of a frame connecting the earplugs 38, 40 with the front guard
portion 22, as described in Bright, are part of a “stem,” as that term is used
in claim 1. In particular, the Appellant correctly points out that these
features are not components of “stems,” as that term is used in Falco and
Bright. (See generally “Brief on Appeal,” dated November 25, 2015, at 3 &
4; “Reply Brief,” dated May 31, 2016, at 2—6). I agree with the Appellant,
based on my interpretation of the term “stem” as excluding a frame.
Therefore, I would reverse the rejection of claims 1^4 and 7 under § 102(b)
as being anticipated by Falco; and the rejection of claims 1—3, 5, 6, 8 and 9
under § 102(b) as being anticipated by Bright. For these reasons, I dissent.
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