10212288 (B.P.A.I. Oct. 14, 2009)

Ex Parte Tiemens

Board of Patent Appeals and InterferencesOct 14, 2009

10212288 (B.P.A.I. Oct. 14, 2009)

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. 10/212,288 08/01/2002 Jim Tiemens 01/130 2645 7590 10/15/2009 LEON D. ROSEN FREILICH, HORNBAKER & ROSEN Suite 1220 10960 Wilshire Blvd. Los Angeles, CA 90024 EXAMINER NGUYEN, CAMTU TRAN ART UNIT PAPER NUMBER 3772 MAIL DATE DELIVERY MODE 10/15/2009 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JIM TIEMENS ____________ Appeal 2008-005160 Application 10/212,288 Technology Center 3700 ____________ Decided: October 15, 2009 ____________ Before DONALD E. ADAMS, LORA M. GREEN, and RICHARD M. LEBOVITZ, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 1, 3, 10, 23, 24, and 26. Pending claims 5, 6, 12-14, and 25 have been withdrawn from consideration (Fin. Rej. 1). We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE CASE The claims are directed to an earplug apparatus. Claims 1 and 10 are illustrative: Appeal 2008-5160 Application 10/212,288 2 1. An earplug apparatus comprising: an earplug comprising resilient foam polymer material that has been extruded through an extrusion opening, said earplug having an axis and opposite ends portions, and said earplug having an outer surface; said earplug includes a plurality of uncompressed regions and includes at least a first compressed region centered on said axis and spaced from said end portions where said polymer material has been radially inwardly compressed from at least two largely opposite sides of said axis and where the density of the polymer material has been increased to be higher than at said uncompressed regions. 10. An earplug apparatus, comprising: an earplug of resilient polymer foam material, said earplug having an axis and having locations of a maximum outer diameter; said earplug has at least one radially inwardly deformed cylindrical band of said polymer material where said resilient polymer foam material is of higher density and stiffer than at said locations of maximum outer diameter. The Examiner relies on the following evidence: Westerdal Des. 408,526 Apr. 20, 1999 McLean US 6,364,052 B1 Apr. 2, 2002 Smith et al. US 6,408,981 B1 Jun. 25, 2002 The rejections presented by the Examiner are as follows: 1. Claims 1, 3, 23, and 24 stand rejected under 35 U.S.C § 103(a) as unpatentable over the combination of Smith and McLean. 2. Claims 10 and 26 stand rejected under 35 U.S.C § 103(a) as unpatentable over the combination of Smith and Westerdal. We affirm. Appeal 2008-5160 Application 10/212,288 3 PRINCIPLES OF LAW In proceedings before the Patent and Trademark Office, the Examiner bears the burden of establishing a prima facie case of obviousness based upon the prior art. In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992). On appeal to this Board, Appellants must show that the Examiner has not sustained the required burden. See Ex parte Yamaguchi, 88 USPQ2d 1606, 1608 and 1614 (BPAI 2008) (precedential); Ex parte Fu, 89 USPQ2d 1115, 1118 and 1123 (BPAI 2008) (precedential). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). It is proper to “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. See also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). 35 U.S.C § 103(a) “forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR, 550 U.S. at 405 (quoting 35 U.S.C. § 103(a)). The combination of Smith and McLean: Claim 1: ISSUE Has Appellant established error in the Examiner’s conclusion that “it would have been obvious to one skilled in the art to radially inwardly Appeal 2008-5160 Application 10/212,288 4 compress” Smith’s device to have a reduced diameter at a location spaced from the end of the device? FINDINGS OF FACT FF 1. Smith teaches an extruded monolithic foam earplug (Smith, Title). FF 2. For clarity, we reproduce Smith’s figure 7 below: FIG. 7 is a perspective view of one embodiment of Smith’s earplug having rounded shaped end portions (Smith, col. 3, ll. 3-5). FF 3. There is no dispute that Smith teaches “an extruded foam earplug (10) comprising . . . a cylindrical earplug body (14) and end portions (16["])” (Ans. 4). FF 4. Appellant does not dispute the Examiner’s finding that Smith’s extruded foam is heated while it is radially compressed [and therefore] . . . retains its compressed configuration following cutting, resulting in end portions (. . . 16["]) of reduced diameter or tapered configuration as shown in Figure[ ] . . . 7” (Ans. 4-5). FF 5. McLean teaches earplugs with surface ornamentation (McLean, Title). Appeal 2008-5160 Application 10/212,288 5 FF 6. For clarity, we reproduce McLean’s figure 3 below: “FIG. 3 is an isometric view of a[ ] pair of exemplary earplugs 30 according to . . . [McLean’s] invention. Earplugs 30 are shown as including a generally non-cylindrical, arbitrary configuration that corresponds to a bottle” (McLean, col. 2, 37-40). ANALYSIS Based on the foregoing facts the Examiner concludes that “it would have been obvious to one skilled in the art to radially inwardly compress” Smith’s device to have a reduced diameter at a location spaced from the end of the device (Ans. 5). Appellant concedes that McLean’s earplug “has a reduced diameter at a location spaced from the end” (App. Br. 4). Nevertheless, Appellant contends that, while McLean “does not say how his earplugs are formed” they are “likely . . . molded in a closed mold, rather than extruded” (id.). Appellant contends that the reduced diameter locations in McLean’s “molded” earplug “would not have an increased density” (id.). We are not persuaded. There is no evidence on this record supporting Appellant’s contention that McLean’s earplugs are molded rather than shaped from an extruded foam as taught by Smith. Further, there is no dispute on this record that Appeal 2008-5160 Application 10/212,288 6 reducing the diameter of a region of extruded foam increases the density of the foam in that region. Lastly, we are not persuaded by Appellant’s contention that “there is no reason to combine the neck of McLean’s molded cola bottle shape to Smith’s extruded earplug since Smith does not suggest that he seeks increased density, but only tapered ends” (Reply Br. 1 (emphasis removed)). We disagree. McLean teaches shaped earplugs but fails to teach how the earplugs are made. Smith teaches shaped ear plugs produced by an extrusion process. There is no evidence on this record to support a conclusion that Smith’s extruded ear plugs could not be shaped in a manner taught by McLean. CONCLUSION OF LAW Appellant failed to establish error in the Examiner’s conclusion that “it would have been obvious to one skilled in the art to radially inwardly compress” Smith’s device to have a reduced diameter at a location spaced from the end of the device (Ans. 5). The rejection of claim 1 under 35 U.S.C § 103(a) as unpatentable over the combination of Smith and McLean is affirmed. Appeal 2008-5160 Application 10/212,288 7 Claim 3: ISSUE Has Appellant established error in the Examiner’s prima facie case of obviousness? ANALYSIS Appellant concedes that McLean teaches “a first region cross-section no more than 60% of maximum” as required by claim 3 (App. Br. 4). Nevertheless, Appellant contends that McLean fails to teach a “first region of increased density” (id. (emphasis removed)). We are not persuaded. There is no evidence on this record to support the conclusion that by shaping Smith’s extruded foam to the shape of McLean’s earplug would not result in a first region of increased density. CONCLUSION OF LAW Appellant failed to establish error in the Examiner’s prima facie case of obviousness. The rejection of claim 3 under 35 U.S.C § 103(a) as unpatentable over the combination of Smith and McLean is affirmed. Claim 23: ISSUE Has Appellant established error in the Examiner’s prima facie case of obviousness? Appeal 2008-5160 Application 10/212,288 8 ANALYSIS Appellant contends that Smith’s “compressed regions are at the very ends rather than spaced from the ends” and McLean “shows regions of reduced diameter, but does not suggest compressed regions of increased density” (App. Br. 5). We are not persuaded for the reasons set forth with regard to claims 1 and 3. CONCLUSION OF LAW Appellant failed to establish error in the Examiner’s prima facie case of obviousness. The rejection of claim 23 under 35 U.S.C § 103(a) as unpatentable over the combination of Smith and McLean is affirmed. Claim 24: ISSUE Has Appellant established error in the Examiner’s prima facie case of obviousness? ANALYSIS Appellant contends that “[i]n Smith there is only one band (at the extreme end) of possibly increased density, and it lies at an extreme end of his front portion that enters the eary. In McLean there is no suggestion of increased density” (App. Br. 5 (emphasis removed)). We are not persuaded for the reasons set forth with regard to claims 1 and 3. Appeal 2008-5160 Application 10/212,288 9 CONCLUSION OF LAW Appellant failed to establish error in the Examiner’s prima facie case of obviousness. The rejection of claim 24 under 35 U.S.C § 103(a) as unpatentable over the combination of Smith and McLean is affirmed. The combination of Smith and Westeral: Claim 10: ISSUE Has Appellant established error in the Examiner’s conclusion that it would have been obvious to one skilled in the art to construct Smith’s earplug with an area that is radially inwardly deformed as taught by Westerdal? FINDINGS OF FACT FF 7. Smith teaches an extruded monolithic foam earplug (Smith, Title). FF 8. For clarity, we reproduce Smith’s Figure 7 below: FIG. 7 is a perspective view of one embodiment of Smith’s earplug having rounded shaped end portions (Smith, col. 3, ll. 3-5). Appeal 2008-5160 Application 10/212,288 10 FF 9. There is not dispute that Smith teaches “an extruded foam earplug (10) comprising . . . a cylindrical earplug body (14) and end portions (16["])” (Ans. 5). FF 10. The Examiner finds that Smith fails to teach an ear plug comprising “at least one radially inwardly deformed band” (id.). FF 11. Westerdal teaches an “ornamental design for an ear plug” (Westerdal, Claim). FF 12. For clarity, we reproduce Westerdal’s Figure 1 below: “FIG. 1 is a perspective view of an ear plug showing” Westerdal’s design. ANALYSIS Appellant concedes that Westerdal’s earplug design “includes a small diameter cylindrical band” (App. Br. 5). Nevertheless, Appellant contends that Westerdal’s earplug “looks as though [it] . . . is molded in a closed cavity rather than his band being formed by radially inward deformation that increases density and stiffness” (id.; see also Reply Br. 1-2). We are not persuaded. There is no evidence on this record supporting Appellant’s contention that McLean’s earplugs are molded rather than shaped from an extruded foam as taught by Smith. In addition, there is no evidence on this record to Appeal 2008-5160 Application 10/212,288 11 support a conclusion that Smith’s extruded ear plugs could not be shaped in a manner taught by McLean. Further, there is no dispute on this record that reducing the diameter of a region of extruded foam increases the density and stiffness of the foam in that region. CONCLUSION OF LAW Appellant failed to establish error in the Examiner’s conclusion that it would have been obvious to one skilled in the art to construct Smith’s earplug with an area that is radially inwardly deformed as taught by Westeral. The rejection of claim 10 under 35 U.S.C § 103(a) as unpatentable over the combination of Smith and Westerdal is affirmed. Claim 26: ISSUE Has Appellant established error in the Examiner’s prima facie case of obviousness? ANALYSIS Appellant contends that “Smith does not show a compressed band beyond an end” and Westerdal fails to “show or mention increased density” (App. Br. 5 (emphasis removed)). We are not persuaded for the reasons set for with regard to claim 10. Appeal 2008-5160 Application 10/212,288 12 CONCLUSION OF LAW Appellant failed to establish error in the Examiner’s prima facie case of obviousness. The rejection of claim 26 under 35 U.S.C § 103(a) as unpatentable over the combination of Smith and Westerdal is affirmed. TIME PERIOD FOR RESPONSE 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 lp LEON D. ROSEN FREILICH, HORNBAKER & ROSEN SUITE 1220 10960 WILSHIRE BLVD. LOS ANGELES CA 90024