Ex Parte Stevens et al

Board of Patent Appeals and Interferences

Jun 30, 2009

11055242 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RANDAL A. STEVENS
and SID C. INSIXIENGMAY
__________

Appeal 2009-001941
Application 11/055,242
Technology Center 1700
___________

Decided:1 June 30, 2009
___________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CHUNG K. PAK, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001941
Application 11/055,242

2
A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 1-16.2 We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.
The subject matter on appeal is directed to a method of dyeing a
hearing aid shell or ear mold comprising the step of placing the hearing aid
shell or ear mold into a dye bath that is biocompatible in uses with human
skin. Claims 6 and 12, reproduced below, are representative of the subject
matter on appeal.
6. A method of dyeing at least one of a hearing aid shell or
ear mold, comprising:

producing at least one of the hearing aid shell or ear mold
using photopolymerization of a light-sensitive synthetic resin;

placing at least one of the hearing aid shell or ear mold
into a dye bath that is biocompatible in uses with human skin;

rinsing at least one of the hearing aid shell or ear mold;
and

drying at least one of the hearing aid shell or ear mold.

12. The method of claim 6, further including post curing at
least one of the hearing aid shell or ear mold.

App. Br. 19, Claims Appendix.3

2 Claims 17-20 are also pending but have been withdrawn from
consideration.
3 Appeal Brief dated March 17, 2008.
Appeal 2009-001941
Application 11/055,242

3
The following Examiner’s rejections are before us on appeal:4
(1) Claims 1, 2, 4-11, 15, and 16 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Gaiser,5 Cowperthwaite,6
Tøpholm,7 and Nishimura.8
(2) Claims 3 and 12-14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gaiser, Cowperthwaite, Tøpholm,
Nishimura, and Ryser.9
B. ISSUES
(1) Have the Appellants shown reversible error in the Examiner’s
conclusion that it would have been obvious to one of ordinary skill in the art
to color a hearing aid shell by first producing the shell and subsequently
placing the shell into a dye bath that is biocompatible with human skin in
view of the combined teachings of Gaiser, Cowperthwaite, Tøpholm, and
Nishimura?
(2) Have the Appellants shown reversible error in the Examiner’s
rejection of claim 12 which recites a post curing step?

4 In the Examiner’s Answer, the rejection of claims 1-16 under 35 U.S.C.
§ 112, first paragraph, based on the written description requirement was
withdrawn. Examiner’s Answer dated June 12, 2008 (“Ans.”), at 7.
5 US 2,674,743 issued to Gaiser on April 13, 1954.
6 US 5,763,503 issued to Cowperthwaite on June 9, 1998.
7 US 6,748,093 B2 issued to Tøpholm on June 8, 2004.
8 Japanese Patent Application 51-148770 disclosed December 21, 1976.
Reference herein is to the English translation of record in the instant
Application.
9 US 6,464,733 B2 issued to Ryser on October 15, 2002.
Appeal 2009-001941
Application 11/055,242

4
C. FINDINGS OF FACT
1. Gaiser
The invention disclosed in Gaiser relates to therapeutic, cosmetic,
and/or corrective devices, such as eye implants and hearing aid devices, that
contact human tissues. Gaiser 1:1-3, 3:55-60.
Gaiser recognizes that it is advantageous to reduce the allergic
conditions and irritations caused by such devices. Gaiser 3:55-60, 2:16-34.
Gaiser discloses that “the device is first cast, molded, pigmented,
colored and/or otherwise treated to give the shape and appearance desired in
the finished article.” Gaiser 4:6-10.
2. Cowperthwaite
The invention disclosed in Cowperthwaite relates to a liquid
composition that is polymerized or cured by wave energy (e.g. light energy
in the ultraviolet or visible portion of the electromagnetic spectrum).
Cowperthwaite 1:13-20.
The composition may be used to form a flesh-colored hollow shell
that houses an in-ear hearing aid. Cowperthwaite 1:24-30.
The composition is a methacrylate-capped urethane monomer/reactive
diluent composition. Cowperthwaite 3:19-24.
The methacrylate-capped urethane monomer, the reactive components
from which it is synthesized, and any reactive diluent are selected for low or
negligible toxicity and allergenicity. Cowperthwaite 3:24-28.
Preferably, the color of the hearing aid shell matches the color of
human flesh. According to Cowperthwaite, “[t]he selection of suitable
pigments for matching flesh tones and for low toxicity and allergenicity is
within the skill of the art.” Cowperthwaite 8:2-9.
Appeal 2009-001941
Application 11/055,242

5
The pigment can be formulated as a concentrate, and the urethane
methacrylate, reactive diluent, and pigment concentrate can be mixed in any
order to provide a curable composition. Cowperthwaite 8:23-41.
For a self-supporting shell with good toughness and impact strength, a
plurality of curing steps are used. Cowperthwaite 9:30-32.
3. Tøpholm
Tøpholm discloses a hearing aid housing. Tøpholm 1:5-7.
Preferably, the shell of the housing is produced from a flexible, sweat
resistant material that should not cause allergic reactions. Tøpholm 9:14-16.
The shell may be colored in a coloring substance of a desired color,
e.g., by dipping the shell in the coloring substance. Tøpholm 9:19-21.
4. Nishimura
Nishimura discloses a method for coloring polyurethane-based resin
molded products obtained by the photopolymerization reaction of a resin
composition based on unsaturated polyurethane. Nishimura 2:5-9.
According to the disclosed method, the molded product is immersed
in a dye solution. Nishimura 3:13-19.
The temperature of the dye solution is maintained at a level that
creates a saturated state of an acidic dye solution. Nishimura 4:3-5.
While a strong acidity with a pH level of 1 ~ 3 is desirable from the
viewpoint of the distribution level in the dye bath, the pH level “should be
adjusted depending on the type of the dye, its concentration, as well as the
composition of the colored object, etc.” Nishimura 5:6-10.
Nishimura discloses that any dye can be used for the dye material as
long as the dye possesses affinity to a polyurethane-based resin. Nishimura
3:33-4:2.
Appeal 2009-001941
Application 11/055,242

6
D. PRINCIPLES OF LAW
A claimed invention is not patentable if the subject matter of the
invention would have been obvious to a person having ordinary skill in the
art at the time the invention was made. 35 U.S.C. § 103(a); KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 405 (2007); Graham v. John Deere Co., 383
U.S. 1, 13 (1966).
A person of ordinary skill is not an automaton but is a person of
ordinary creativity. KSR, 550 U.S. at 421. One of ordinary skill in the art is
presumed to have skills apart from what the prior art references expressly
disclose. In re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985).
The test for obviousness “is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” The
test is not that the claimed invention must be expressly suggested in any one
or all of the references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
E. ANALYSIS
1. Issue (1)10
The Examiner found that Gaiser describes hearing aids made of
numerous types of resins “which are first cast, molded, pigmented and
colored” followed by washing, rinsing, and drying. Ans. 4. The Examiner
found that Gaiser does not teach the methods used to color the hearing aids.
Ans. 4.
The Examiner relied on Cowperthwaite to show that low toxicity and
allergenicity pigments were known in the art. The Examiner also relied on

10 We confine our discussion to claim 6, which contains claim limitations
representative of the arguments made by the Appellants in the Appeal Brief
pursuant to 37 C.F.R. § 41.37(c)(1)(vii). See 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
Appeal 2009-001941
Application 11/055,242

7
Cowperthwaite to establish that hearing aid shells were known to be
comprised of radiation curable polymers having a major amount of urethane
methacrylate monomer. Ans. 4. Tøpholm and Nishimura were relied on to
show that it was within the skill in the art at the time of the Appellants’
invention to dip or immerse molded products, including urethane-based resin
molded products, in a dye bath to produce a colored product. Ans. 4.
The Examiner concluded that the claimed subject matter would have
been obvious to one of ordinary skill in the art in view of the combined
teachings of Gaiser, Cowperthwaite, Tøpholm, and Nishimura. Ans. 5.
The Appellants present several arguments in the Appeal Brief. First,
the Appellants argue that “Gaiser does not appear to teach molding followed
by pigmenting the hearing aids.” In other words, the Appellants argue that
Gaiser does not appear to teach that the disclosed steps must be performed in
any particular order to produce a finished product. App. Br. 12.
The Appellants’ argument is not persuasive of reversible error. Gaiser
discloses that “the device is first cast, molded, pigmented, colored and/or
otherwise treated to give the shape and appearance desired in the finished
article.” Gaiser 4:6-10. According to the Examiner, “Gaiser is disclosing
the steps in their order of hearing aid production.” Ans. 7.
Nonetheless, assuming for the sake of argument that Gaiser is merely
disclosing a list of possible treatment steps, the Examiner found that
“[n]othing unobvious is seen in molding the hearing aid followed by
coloring it,” especially in view of Tøpholm which clearly teaches that it was
known in the art to fabricate a hearing aid shell prior to coloring it. Ans. 7-
8.
Appeal 2009-001941
Application 11/055,242

8
In response, the Appellants argue that the processes disclosed in
Tøpholm and Cowperthwaite are different from one another, and the
Examiner has failed to provide any motivation for selecting the Tøpholm
process over the Cowperthwaite process. Reply Br. 6-7.11
This argument is also not persuasive of reversible error. The
Examiner found that the processes of Tøpholm and Cowperthwaite are both
“effective and efficient methods conventionally utilized to produce a colored
hearing aid.” Ans. 8; see also Reply Br. 7 (“both methods color the hearing
aid”). The Examiner explained:
Because both references teach methods for coloring hearing
aids, it would have been obvious to one of ordinary skill in the
art to substitute one method for the other method to achieve the
predictable result of coloring the hearing aid.

Ans. 8. See In re Fout, 675 F.2d 297 (CCPA 1982) (“Express suggestion to
substitute one equivalent for another need not be present to render such
substitution obvious.”).
Next, the Appellants argue that Tøpholm and Nishimura “do not
appear to describe a dye bath that is biocompatible in uses with human
skin.” App. Br. 14.
Significantly, the Appellants’ argument fails to consider the prior art
as a whole. Keller, 642 F.2d at 425. We recognize that neither Tøpholm nor
Nishimura expressly discloses using a dye bath that is biocompatible with
human skin. However, Cowperthwaite discloses that “[t]he selection of
suitable pigments . . . for low toxicity and allergenicity is within the skill of
the art.” Cowperthwaite 8:7-9. Based on this disclosure, we find that it
would have been within the skill of the ordinary artisan to make the dye bath

11 Reply Brief dated August 4, 2008.
Appeal 2009-001941
Application 11/055,242

9
of at least Tøpholm, which is used to color hearing aid shells, biocompatible.
See KSR, 550 U.S. at 416 (“The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.”).
The Appellants argue that it is possible that the pigments disclosed in
Cowperthwaite are not transferable to a dye bath. App. Br. 13. However,
the Appellants have failed to direct us to any evidence supporting this
argument. See In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (“Argument
in the brief does not take the place of evidence in the record.”).
The Appellants have also failed to direct us to any evidence showing
that it would have been outside the skill of the ordinary artisan to select
biocompatible dyes suitable for the baths of Tøpholm and Nishimura. See
KSR, 550 U.S. at 421 (a person of ordinary skill is not an automaton but is a
person of ordinary creativity). To this end, we note that the Appellants do
not purport to have invented the claimed biocompatible dye bath.
Finally, the Appellants argue that Nishimura is nonanalogous art
because Nishimura uses an acidic dye bath to color printing plates. App. Br.
14.
We disagree. The Examiner relied on Nishimura to establish that, at
the time of the Appellants’ invention, it was known to color
photopolymerized polyurethane-based resin molded products by immersing
the products in a dye solution. See Ans. 4; see also Nishimura 3:13-19.
Although Nishimura discloses that strong acidity is desired in the dye bath,
Nishimura discloses that the pH level “should be adjusted depending on the
type of the dye, its concentration, as well as the composition of the colored
object, etc.” Nishimura 5:6-10.
Appeal 2009-001941
Application 11/055,242

10
Based on these teachings, we find that Nishimura is particularly
relevant to the problem confronting the inventor, i.e., coloring
photopolymerized synthetic resins using a dye bath. See In re Wood, 599
F.2d 1032, 1036 (CCPA 1979) (discussing “nonanalogous art”); see also
Ans. 9.
2. Issue (2)
The Appellants argue that “Ryser, does not . . . appear to teach that the
microwave radiation is used to post cure the lens, as provided in claim 12.”
App. Br. 15-16.
Claim 12 does not recite that microwave radiation is used to post cure
the hearing aid shell or ear mold. See claim 12 (“The method of claim 6,
further including post curing at least one of the hearing aid shell or ear
mold.”).12 Thus, the Appellants’ argument is not commensurate in scope
with the claimed subject matter.
3. Arguments in the Reply Brief
a. Grouping of claims
In the Reply Brief, for the first time on appeal, the Appellants
separately argue the limitations of claims 2, 8, and 9. See Reply Brief 8-9.
According to 37 C.F.R. § 41.37(c)(1)(vii), in the Appeal Brief:
For each ground of rejection applying to two or more claims,
the claims may be argued separately or as a group. . . .
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)(1)(vii) (2007).

12 Claim 12 does not limit when post curing occurs.
Appeal 2009-001941
Application 11/055,242

11
In the Appeal Brief, the Appellants argued claims 1, 2, 4-11, 15, and
16 as a group and did not present any separate arguments as to claims 2, 8,
and 9. Thus, the Appellants’ arguments in the Reply Brief with respect to
the separate patentability of claims 2, 8, and 9 are untimely and will not be
considered on appeal.
b. New arguments
For the first time on appeal, the Appellants also present several new
arguments on page 7, line 18 to page 9, line 6 of the Reply Brief against the
§103 rejections on appeal.
The Appeal Brief, not the Reply Brief, shall initially set forth the
contentions of the Appellant. In particular, 37 C.F.R. § 41.37(c)(1)(vii)
provides that the Appeal Brief shall contain:
The contentions of appellant with respect to each ground of
rejection presented for review in paragraph (c)(1)(vi) of this
section, and the basis therefor, with citations of the statutes,
regulations, authorities, and parts of the record relied on. . . .

37 C.F.R. § 41.37(c)(1)(vii) (2007).
In certain cases, new arguments may be permitted in a Reply Brief.
For example, an Appellant may present new arguments in response to a new
ground of rejection. See 37 C.F.R. § 41.39(b)(2) (2007) (permitting a reply
brief in response to a new ground of rejection).
However, in this case, the new arguments presented in the Reply Brief
were not made in response to a new ground of rejection, nor were they
necessitated by additional fact findings or new contentions presented by the
Appeal 2009-001941
Application 11/055,242

12
Examiner in the Examiner’s Answer.13 The new arguments are merely
arguments that could have been made in the Appeal Brief, but were not.
Thus, they are untimely and will not be considered on appeal. See Optivus
Technology, Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir.
2006) (argument raised for the first time in the reply brief that could have
been raised in the opening brief is waived); accord Ex parte Scholl, No.
2007-3653, slip op. at 18 n.13 (BPAI March 13, 2008) (designated as
“Informative Opinion”),
http://www.uspto.gov/web/offices/dcom/bpai/its/fd073653.pdf (last visited
June 19, 2009).
F. CONCLUSIONS OF LAW
The Appellants have not shown reversible error in the Examiner’s
conclusion that it would have been obvious to one of ordinary skill in the art
to color a hearing aid shell by first producing the shell and subsequently
placing the shell into a dye bath that is biocompatible with human skin in
view of the combined teachings of Gaiser, Cowperthwaite, Tøpholm, and
Nishimura.
The Appellants have not shown reversible error in the Examiner’s
rejection of claim 12 which recites a post curing step.
G. DECISION
The decision of the Examiner is affirmed.

13 The Examiner’s statement of the rejections under §103 is substantially the
same as the statement contained in the Final Office Action. See Final Office
Action dated October 16, 2007; see also Office Action dated June 14, 2007.
Appeal 2009-001941
Application 11/055,242

13
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

PL Initial:
sld

BROOK, CAMERON & HUEBSCH, PLLC
1221 NICOLLET AVENUE, SUITE 500
MINNEAPOLIS, MN 55403