Ex Parte Harvey

Patent Trial and Appeal Board

Oct 25, 2017

14043981 (P.T.A.B. Oct. 25, 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.
14/043,981 10/02/2013 Jerry Harvey JH06US1 9234
63893 7590
DOUGLAS J. VISNIUS
18024 Falcon Green Court
ORLANDO, EL 32820-2712
EXAMINER
NGUYEN, SEAN H
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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):
apexmasterworks @ gmail. com
sfnlhafnap @ yahoo, com
dvisnius @ bellsouth. net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERRY HARVEY1
Appeal 2017-003633
Application 14/043,981
Technology Center 2600
Before KRISTEN L. DROESCH, LARRY J. HUME, and JOYCE CRAIG,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—20, which are all claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is the inventor, Jerry
Harvey. App. Br. 1.
Appeal 2017-003633
Application 14/043,981
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed embodiments and claimed invention relate to an
ambient vent canalphone system and method. Spec., Title.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitation):
1. A system comprising:
a canalphone housing;
an ambient vent opening in the canalphone housing
larger than .04 square inches and smaller than .99 square
inches, the ambient vent positioned external to the ear canal;
an acoustic damper adjacent the ambient vent opening;
and
a liquid diverter carried by the canalphone housing that
limits liquid flow into the ambient vent opening.
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
June 14, 2016); Reply Brief ("Reply Br.," filed Jan. 3, 2017); Examiner's
Answer ("Ans.," mailed Nov. 3, 2016); Final Office Action ("Final Act.,"
mailed Nov. 16, 2015); and the original Specification ("Spec.," filed
Oct. 2, 2013).
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Application 14/043,981
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Quaranta et al. ("Quaranta")
Ram et al. ("Ram")
Harvey et al. ("Harvey")
Ko
Miyashita et al. ("Miyashita")
US 5,063,717
US 2007/0003087 Al
US 2007/0036385 Al
US 2007/0036367 Al
US 7,657,039 B2
Nov. 12, 1991
Jan. 4, 2007
Feb. 15,2007
Feb. 15,2007
Feb. 2, 2010
Rejections on Appeal
Rl. Claims 1—4, 6—8, 10-13, and 15 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Harvey and Ram.
Ans. 2; see also Final Act. 2.
R2. Claims 5 and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Harvey, Ram, and Quaranta.
Ans. 9; see also Final Act. 9.
R3. Claims 9 and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Harvey, Ram, and Miyashita.
Ans. 10; see also Final Act. 10.
R4. Claims 17—20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Harvey and Ko. Ans. 11; see also
Final Act. 11.
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Appeal 2017-003633
Application 14/043,981
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 4—7),3 we decide the appeal
of obviousness Rejection R1 of claims 1—4, 6—8, 10-13, and 15 on the basis
of representative claim 1.
Remaining claims 5, 9, 14, and 16—20 in Rejections R2 through R4,
not argued separately or with specificity, stand or fall with the respective
independent claim from which they depend.4
ISSUE
Appellant argues (App. Br. 4—7; Reply Br. 4—13) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Harvey and Ram is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a system that includes, inter alia, the limitation of "an ambient
vent opening in the canalphone housing larger than .04 square inches and
smaller than .99 square inches, the ambient vent positioned external to the
ear canal," as recited in claim 1?
3 We note Appellant's Appeal and Reply Briefs were filed without
pagination. We have provided our own page numbering for ease of reference
in this Decision.
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Application 14/043,981
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
Appellant could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claims 1—20
and, unless otherwise noted, we incorporate by reference herein and adopt as
our own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellant's arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
Appellant contends:
[T]he rejections lack an equivalency determination of how 131,
309, 313, 405, 413, 501, 502, 503, 703, and/or 709 of Harvey
are equivalent to the claimed ambient vent. The concepts of
equivalents as set forth in Graver Tank & Mfg. Co. v. Linde Air
Products, 339 U.S. 605, 85 USPQ 328 (1950) are relevant to
any "equivalents" determination.
App. Br. 4. Appellant continues by citing four (4) factors A through D
which are asserted as being dispositive in determining whether a prior art
element is equivalent to a claimed limitation. App. Br. 4—6. "Because no
proper explanation and rationale as to why the prior art element is an
equivalent to an ambient vent is provided, the prima facie case of
obviousness fails." App. Br. 6.
Our reviewing court guides, "'[a] prima facie case of obviousness is
established when the teachings from the prior art itself would appear to have
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Application 14/043,981
suggested the claimed subject matter to a person of ordinary skill in the art.'"
In re Bell, 991 F.2d 781, 783 (Fed. Cir. 1993) (quoting In re Rinehart, 531
F.2d 1048, 1051 (CCPA 1976)).
The Examiner rejects claim 1 under § 103 over the combination of
Harvey and Ram (Final Act. 2-4) by finding it would have been an obvious
matter of design choice to make the ambient vent opening in the canalphone
larger than 0.04 square inches and smaller than 0.99 square inches. Final
Act. 3; Ans. 3.
With respect to findings of obvious design choice, the predecessor to
our reviewing court concluded that minor differences between the prior art
and a claimed device may be a matter of design choice absent evidence to
the contrary. See In re Rice, 341 F.2d 309, 314 (CCPA 1965) (Appellant
made only general allegation that relationships of size and positions of
baffles in an air cleaner are critical).
In the present Appeal, we note Appellant failed to show the claimed
features of claim 1 "result in a difference in function or give unexpected
results" or are "more than obvious variations consistent with the principles
known in the art." Id.', see also In re Kuhle, 526 F.2d 553, 555 (CCPA
1975) (the use of claimed metallic wrapping "obvious as a matter of design
choice" when it "solves no stated problem" and "presents no novel or
unexpected result" over metallic connections used in the prior art.); see In re
Dailey, 357 F.2d 669, 672(CCPA 1966) (the change of shape of nursing
container was a "mere matter of choice" because the configuration of the
container is nothing more than one of numerous configurations for providing
mating surfaces in the collapsed container of the prior art; Appellant did not
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Application 14/043,981
show shape was "significant" or beyond what is obvious to perform same
function.).
In this Appeal, Appellant does not point to any evidence of record,
including the Specification, that demonstrates any significance or improved
functionality provided by the claimed numerical limits on the area of the
ambient vent opening. Furthermore, we note attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).5
In addition, Appellant only provides attorney argument in asserting,
for example, "a person of ordinary skill in the art would not have recognized
the interchangeability of 309 and/or 313 as ambient vents because what
Harvey discloses is not open to the user's ear." App. Br. 5. There is no
evidence on this record as to how a person of ordinary skill in the art would
have viewed the argued interchangeability of 309 and/or 313 as ambient
vents.
Moreover, we find Appellant's citation to Graver Tank and reliance
upon the Doctrine of Equivalents, relevant to patent litigation infringement
analysis, to be wholly irrelevant to patentability, and to this Appeal.6
5 "Argument in the brief does not take the place of evidence in the record."
In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole, 326 F.2d
769, 773 (CCPA 1964)).
6 Courts do not apply the doctrine of equivalents in every patent
infringement case. Rather, courts must first assess literal infringement, and,
only if there is no literal infringement, may the court proceed to the doctrine
of equivalents. See Graver Tank & Mfg. Co. v. Linde Air Products, 339
U.S. 605 (1950).
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Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 1, and grouped claims 2—4, 6—8, 10-13, and 15, which fall therewith.
See Claim Grouping, supra.
Rejection R2—R4 of Claims 5, 9, 14, and 16—20
In view of the lack of any arguments directed to obviousness
Rejection R2 through R4 of claims 5, 9, 14, and 16—20 under § 103, we
sustain the Examiner's rejection of these claims. Arguments not made are
waived.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 4—13) not in response to a shift in the Examiner's position
in the Answer, we note arguments raised in a Reply Brief that were not
raised in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellant has not shown.
Regarding the additional arguments advanced in the Reply
Brief (4—10), we find these new arguments are not in response to any shift in
the Examiner’s position in the Answer, and are therefore untimely and will
not be considered under our procedural rules. See 37 C.F.R. § 41.41(b)(2).
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We further note, no new or non-admitted affidavit or other evidence
(e.g., see Reply Br. 4—5 (citing two URLs)) may be submitted in a Reply
Brief. See 31 C.F.R. § 41.41.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections R1
through R4 of claims 1—20 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1—20.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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