Cochlear Limited

Patent Trials and Appeals Board

Apr 23, 2021

2020004868 (P.T.A.B. Apr. 23, 2021)

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.
15/189,420 06/22/2016 Richard Bruce Murphy 3065.0256C 5805
110239 7590 04/23/2021
Edell Shapiro & Finnan LLC
9801 Washingtonian Blvd., Suite 750
Gaithersburg, MD 20878
EXAMINER
FLICK, JASON E
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
04/23/2021 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):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD BRUCE MURPHY and
NICHOLAS CHARLES KENDALL PAWSEY
Appeal 2020-004868
Application 15/189,420
Technology Center 3700
Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–6, 8–14, and 182. See Final Act.
1. We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Cochlear Limited.
Appeal Br. 3.
2 The Office Action Summary lists claim 18 as rejected but the claim is not
addressed in any rejection in the body of the action. As such, the status of
claim 18 is unclear and will not be further addressed herein.
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Application 15/189,420

2
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a surgical tool. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A surgical tool comprising:
an intra-cochlear portion configured to be inserted into the
cochlea of a recipient, wherein the intra-cochlear portion
comprises an insertion lumen configured to receive and to guide
a stimulating assembly of an implantable medical device into
position within the cochlea, wherein the intra-cochlear portion of
the surgical tool comprises a plurality of electrodes.
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Kuzma US 6,309,410 B1 Oct. 30, 2001

REJECTION
Claims 1, 2, 4–6, and 8–14 are rejected under 35 U.S.C. § 102(a)(1) as
being anticipated by Kuzma. Final Act. 2.
OPINION
Anticipation
Claims 1 and 11 are the only independent claims before us. The
Examiner relies on Kuzma to anticipate the surgical tool of claim 1 and the
insertion tool of claim 11. The point of contention lies in the limitations:
(claim 1) an insertion lumen configured to receive and to guide
a stimulating assembly of an implantable medical device into
position within the cochlea
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(claim 11) an insertion lumen configured to receive the intra-
cochlear stimulating assembly

The Examiner and Appellant appear to be in agreement that the
“configured to receive and to guide” and “configured to receive” limitations
are functional limitations and that Kuzma need only disclose a lumen
capable of performing the function of receiving (claims 1 and 11) and
guiding (claim 1) a stimulating assembly. The Examiner and Appellant
further appear to be in agreement that the phrase “stimulating assembly”
does not have an explicit definition in the original disclosure and the
broadest reasonable interpretation standard should be used for interpreting
the phrase.
The Examiner states that the term “‘stimulating assembly’ could be
construed as a simple guidewire.” Final Act. 5–6. The Examiner has not
provided any citation to prior art, or any further evidence, to support this
interpretation. A guidewire of the type contemplated by the Examiner does
not appear in either Appellant’s original disclosure or in Kuzma. The
Examiner does not explicitly state that the structure cited as an insertion
lumen in Kuzma, the drug delivery channel 62, is inherently capable of
receiving and guiding “a simple guidewire” but the Examiner’s rejection
appears to rest upon this conclusion.
MPEP § 2114(I) (citing In re Schreiber, 128 F.3d 1473, 1478) states:
“If an examiner concludes that a functional limitation is an inherent
characteristic of the prior art, then to establish a prima [facie] case of
anticipation or obviousness, the examiner should explain that the prior art
structure inherently possesses the functionally defined limitations of the
claimed apparatus.” “In relying upon the theory of inherency, the examiner
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must provide a basis in fact and/or technical reasoning to reasonably support
the determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” MPEP § 2112(IV) (citing Ex
parte Levy, 17 USPQ2d 1461, 1464 (PTAB 1990)); see also MPEP § 2114
(citing In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)) (The examiner must
provide a ”sound basis for believing” that the prior art structure or acts
would be capable of performing the claimed function.).
The Examiner has not provided sufficient rationale supporting the
belief that the functional limitation is met by an inherent characteristic of the
insertion lumen taught by Kuzma. Appellant argues that the structure cited
as an insertion lumen in Kuzma, the drug delivery channel 62, “is much too
small to receive a ‘stimulating assembly’ or even a ‘guidewire’ therein.”
Reply Br. 3. The Examiner does not provide evidence or explanation to
rebut Appellant’s argument in this regard. See generally, Ans. Although the
claims are directed to the surgical tool and insertion tool and not to the
stimulating assembly inserted by the tool, the determination of the capability
of the prior art insertion lumen to receive and guide a prior art stimulating
assembly rests on the size of the insertion lumen relative to the size of a
stimulating assembly. Kuzma does not disclose the size of the drug delivery
channel. Additionally, the Examiner has provided no range or standard for
the size of a “simple guidewire” alleged to be known in the art. Although we
agree with the Examiner that it is not necessary that Kuzma itself teach a
guidewire to anticipate claims 1 and 11, the Examiner fails to provide
sufficient reasoning or evidence, intrinsic or extrinsic to Kuzma, to establish
that Kuzma is capable of receiving and/or guiding a hypothetical guidewire
of the type contemplated by the Examiner. See, e.g., MPEP § 2131.01(III)
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(explaining that evidence outside an allegedly anticipatory reference may be
relied upon to establish the presence of an allegedly inherent characteristic
of subject matter in that reference). Furthermore, the Examiner also fails to
provide sufficient evidence or reasoning to establish that one skilled in the
art would understand a “simple guidewire” to be a “simulating assembly”
within the broadest reasonable meaning of that phrase. See, e.g., MPEP
§ 2131.01(III) (explaining that evidence outside an allegedly anticipatory
reference may be relied upon to demonstrate the scope or meaning of claim
terms or phrases).
In sum, there is a dearth of evidence to support the conclusion that
Kuzma discloses an insertion lumen configured to receive (claims 1 and 11),
and guide (claim 1), an intra-cochlear stimulating assembly. A “configured
to” limitation may require more than merely physical capability. However,
even when the broad standard of “capable of” is applied, and even if “a
simple guidewire” is concluded to be within a reasonable interpretation of
the term “a stimulating assembly,” the Examiner has not provided a sound
basis for believing that Kuzma’s drug delivery channel is inherently capable
of receiving and guiding “a simple guidewire.”
For the foregoing reasons, we do not sustain the Examiner’s
anticipation rejection.

CONCLUSION
The Examiner’s rejection is REVERSED.

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–6, 8–
14
102(a)(1) Kuzma 1, 2, 4–6, 8–
14

REVERSED