Stephen D. Gilder et al.

Patent Trials and Appeals Board

Jul 29, 2019

12784970 - (D) (P.T.A.B. Jul. 29, 2019)

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.
12/784,970 05/21/2010 Stephen D. Gilder H29072_5706-00901 9891
14941 7590 07/29/2019
HONEYWELL/WICK PHILLIPS
Honeywell International Inc
115 Tabor Road
PO Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
NGUYEN, CAMTU TRAN
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
07/29/2019 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):
patentservices-us@honeywell.com
wppatents@wickphillips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEPHEN D. GILDER and DAVID B. MULVEY
____________

Appeal 2017-0117951
Application 12/784,9702
Technology Center 3700
____________

Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and
TARA L. HUTCHINGS, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 2, 4–9, 11, 24, and 25. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Our decision references the Appeal Brief (“Appeal Br.,” filed May 22,
2017), the Reply Brief (“Reply Br.,” filed Sept. 25, 2017), the Examiner’s
Answer (“Ans.,” mailed July 27, 2017), and the Final Office Action (“Final
Act.,” mailed Dec. 13, 2016).
2 According to Appellants, the real party in interest is Honeywell Safety
Products USA, Inc. Appeal Br. 3.
Appeal 2017-011795
Application 12/784,970

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BACKGROUND
The Specification states that “[d]isclosed embodiments relate
generally to hearing protection and/or sound transmission devices, and more
specifically to earplugs and/or ear tips.” Spec. ¶ 4.
CLAIMS
Claims 2, 8, and 11 are the independent claims on appeal. Claim 2 is
illustrative of the appealed claims and recites:
2. An EarTip3 comprising:
a main body portion constructed to enable its reception in
an ear canal, the main body portion being formed of pressure-
molded slow recovery low resilient foam plastic material that
comprises:
slow recovery low resilient polyurethane foam with
cell structures that have a low coefficient of friction
additive distributed throughout each of the cell structures,
and
multiple gas-filled open cells defined by the cell
structures, wherein a plurality of the cell structures form a
skin on an exterior of the EarTip, and
wherein the low coefficient of friction additive
distributed throughout each of the cell structures
comprises PTFE.
Appeal Br. 23.

3 The Specification discloses that an EarTip “refers to either an ear tip for
use on a sound transmission device . . . or to an earplug for protecting the
user’s hearing.” Spec. ¶ 23.
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Application 12/784,970

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REJECTIONS
1. The Examiner rejects claims 2, 5, 6, 8, 9, 11, and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Leight4 in view of Reising.5
2. The Examiner rejects claim 4 under 35 U.S.C. § 103(a) as unpatentable
over Leight in view of Reising and Wood.6
3. The Examiner rejects claims 7 and 25 under 35 U.S.C. § 103(a) as
unpatentable over Leight in view of Reising and Gardner.7
DISCUSSION
Rejection 1
As discussed below, we are persuaded of error in the rejection of each
of the independent claims by Appellants’ argument that the Examiner has
not established that one of ordinary skill in the art would have had a reason
to combine the art of record. See, e.g., Reply Br. 14–15.
Each of the independent claims requires a main body portion that
includes “slow recovery low resilient” material with cell structures having a
“low coefficient of friction additive” distributed throughout the cell
structures. Appeal Br. 23–25. In the rejection, the Examiner finds that
Leight teaches an EarTip, and the Examiner acknowledges that Leight does
not teach cell structures having a low coefficient of friction additive as
claimed. See, e.g., Final Act. 4. The Examiner finds that Reising teaches a
polyurethane foam with a low coefficient of friction additive distributed
throughout, and the Examiner concludes that it would have been obvious “to

4 Leight, US 4,774,938, iss. Oct. 4, 1988.
5 Reising, US 3,574,429, iss. Apr. 13, 1971.
6 Wood, US 4,158,087, iss. June 12, 1979.
7 Gardner, Jr., US 3,811,437, iss. May 21, 1974.
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Application 12/784,970

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construct Leight’s EarTip using the material taught by Reising” to enhance
the strength and lubricity of the EarTip, which would be beneficial to
“Leight’s EarTip during insertion into and receipt by the ear canal thereby
provid[ing] comfort to the wearer’s ear canal.” Id. at 5.
In order to establish a prima facie case of obviousness, the Examiner
must show that each and every limitation of the claim is described or
suggested by the combination of prior art references or would have been
obvious based on the knowledge of those of ordinary skill in the art. In re
Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). The Examiner can satisfy this
burden by showing “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR Int’l Co.
v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Here, we find that the
Examiner’s reasoning for the proposed combination lacks the requisite
rational underpinnings to support the conclusion that it would have been
obvious to one of ordinary skill in the art to combine Leight with Reising to
arrive at the claimed invention.
Reising discloses a “low friction bearing” including a metal ball
member covered by a low friction liner. Reising, Abstract; col. 2, ll. 66–70.
Reising discloses that the liner “comprises a dense layer of open-celled resin
foam impregnated with another resin” and that one of the resins “has
relatively high inherent lubricity” and “the other resin provides high strength
and hence good load-carrying capacity and wear resistance.” Id. at col. 2,
l. 71–col. 3, ll. 7. In contrast, Leight discloses “[a]n earplug of the slow
recovery type . . ., which has open cells for expelling gas to the outside
during compression.” Leight Abstract.
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Application 12/784,970

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Without further explanation from the Examiner and given the stark
differences in uses for the materials disclosed in Reising and Leight, we are
not persuaded that one of ordinary skill in the art would have found it
obvious to use “the material taught by Reising” to construct an EarTip, as
the Examiner proposes. Final Act. 5. Although Reising discloses that the
material forming the bearing liner provides strength, lubricity, and wear
resistance, as the Examiner notes, the Examiner does not explain why one of
ordinary skill in the art would have recognized that these properties in a liner
for a metal ball bearing would provide the same or other benefits in an
earplug, as taught by Leight. We agree with Appellants that given the
different applications of these references, it is not at all clear that one of
ordinary skill in the art would have recognized that the material taught by
Reising may benefit the construction of an ear plug. See Appeal Br. 19–20.
For example, Reising seeks to be provide a liner with “high load carrying
capacity” and strength. See Reising col. 1, ll. 4–9. This suggests that
Reising’s material would not be suitable for an earplug, which must be
easily compressed for insertion into the ear canal.
Finally, we are not persuaded by the Examiner’s indication that
Leight’s earplug is designed to “bear against the wall of the person’s ear
canal” and thus, one of ordinary skill in the art would have sought to use
“Reising’s bearing” to provide “properties of wear resistance and high
lubricity.” Ans. 13. Although an earplug may “bear” against the walls of
the ear canal, we disagree that that would lead a person of ordinary skill in
the art to recognize that Reising’s bearing material may be incorporated into
an earplug. For the reasons discussed above, one of ordinary skill would not
conclude that the materials of an earplug and a bearing are interchangeable
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Application 12/784,970

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simply because an earplug is designed to expand against the walls of an ear
canal.
Based on the foregoing, we are persuaded of reversible error in the
rejection of each of independent claims 2, 8, and 11. Accordingly, we do
not sustain the rejection of those claims. We also do not sustain the rejection
of dependent claims 5, 6, 9, and 24 for the same reasons.
Rejections 2 and 3
The rejections of claims 4, 7, and 25 do not cure the deficiencies in
the rejection of independent claim 2, from which those claims depend.
Thus, we do not sustain the rejections of claims 4, 7, and 25 for the reasons
discussed above.
CONCLUSION
We REVERSE the rejections of claims 2, 4–9, 11, 24, and 25.

REVERSED