Cochlear LimitedDownload PDFPatent Trials and Appeals BoardAug 4, 20212020006372 (P.T.A.B. Aug. 4, 2021) Copy Citation 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. 15/213,786 07/19/2016 Werner MESKENS 5441-101 8192 111614 7590 08/04/2021 Pilloff Passino & Cosenza LLP 2000 Duke Street Suite 300 Alexandria, VA 22314 EXAMINER MOHAMMED, ASSAD ART UNIT PAPER NUMBER 2651 NOTIFICATION DATE DELIVERY MODE 08/04/2021 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): mail@pilloffpassino.com mcosenza@pilloffpassino.com rpilloff@pilloffpassino.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WERNER MESKENS Appeal 2020-006372 Application 15/213,786 Technology Center 2600 Before BRADLEY W. BAUMEISTER, JASON V. MORGAN, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, 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 1–30. We have jurisdiction under 35 U.S.C. § 6(b). Oral arguments were heard on July 20, 2021. A transcript of that hearing will be added to the record in due time. We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Cochlear Limited as the real party in interest. Appeal Brief filed February 24, 2020 (“Appeal Br.”) at 2. Appeal 2020-006372 Application 15/213,786 2 CLAIMED SUBJECT MATTER Summary Appellant’s claimed subject matter relates to a hearing prosthesis “described primarily in terms of a bone conduction device, such as an active transcutaneous bone conduction device.” Spec. ¶ 34.2 In particular, the claimed subject matter relates to “an external headpiece of an implantable hearing prosthesis, such as a button sound processor.” Id. ¶ 72. The external headpiece is “held against the skin of the recipient via [a] magnetic link” with “a magnet that is part of [an] implantable component” of the hearing prosthesis.” Id. ¶ 56. Illustrative Claims Independent claims 1, 9, 16, and 24 illustrate the claimed subject matter and are reproduced below: 1. An external headpiece of a hearing prosthesis, comprising: an RF coil; a sound processing apparatus; a cylindrical battery; and a magnet configured to support the headpiece against skin of the recipient via a transcutaneous magnetic coupling with an implanted magnet implanted in a recipient, wherein a longitudinal axis of the cylindrical battery extends through the magnet. 2 In addition to the above-noted Appeal Brief, throughout this Decision we refer to: (1) Appellant’s Specification filed July 19, 2016 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed August 22, 2019; (3) the Examiner’s Answer (“Ans.”) mailed June 23, 2020; and (4) the Reply Brief filed August 24, 2020 (“Reply Br.”). Appeal 2020-006372 Application 15/213,786 3 9. An external component of a hearing prosthesis, comprising: a battery; an electrically powered component; and a magnet apparatus, wherein the magnet apparatus provides a path for electricity to flow from the battery to the electrically powered component or provides a path to complete the circuit from the electrically powered component to the battery. 16. An external component of a prosthesis, comprising: a battery; and a magnet apparatus, wherein the external component is configured such that a magnetic force generated by the magnet apparatus applies a force onto the battery such that the battery is urged against an electrical contact of a circuit of which the battery is apart. 24. A method, comprising: obtaining a headpiece for a prosthesis, the headpiece including an electronic component of the prosthesis; attaching a magnet to the headpiece, the magnet establishing a magnetic field that extends external to the headpiece; and attaching a battery to the headpiece, wherein the action of attaching the magnet to the headpiece controls a location of the battery. Appeal Br. 128–31 (Claims Appendix). Appeal 2020-006372 Application 15/213,786 4 REFERENCES The Examiner relies on the following prior art references:3 Name Reference Date Brodie US 3,695,938 Oct. 3, 1972 Kasic US 2006/0183965 A1 Aug. 17, 2006 Kimura US 2010/0179782 A1 July 15, 2010 Sato US 2012/0214074 A1 Aug. 23, 2012 Partovi US 2012/0235636 A1 Sept. 20, 2012 Ruppersberg US 2015/0038775 A1 Feb. 5, 2015 Ridler US 2015/0265842 A1 Sept. 24, 2015 REJECTIONS The Examiner rejects the claims as follows under 35 U.S.C. § 103(a): Claims References Final Act. 1 Ruppersberg, Kasic, Brodie 14 9, 16, 24 Ruppersberg, Brodie 16 2, 3, 4, 5, 6, 8 Ruppersberg, Kasic, Brodie 20 7 Ruppersberg, Kasic, Brodie, Partovi 24 10, 14, 15, 17, 18, 19, 20, 21, 25, 26, 27, 28, 29, 30 Ruppersberg, Brodie 26 11, 12 Ruppersberg, Brodie, Sato 35 13 Ruppersberg, Brodie, Partovi 37 22 Ruppersberg, Brodie, Kimura 38 23 Ruppersberg, Brodie, Ridler 39 OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of Appellant’s arguments and evidence. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). 3 All citations to the references use the first-named inventor only. Appeal 2020-006372 Application 15/213,786 5 Rejections of Claims 1–8 The Examiner finds that Ruppersberg teaches most of the limitations of independent claim 1, but finds that “Ruppersberg does not disclose an RF coil,” as recited in claim 1. Final Act. 15. The Examiner relies on Kasic to teach an RF coil, as claimed. Id. (citing Kasic ¶¶ 42, 45, Fig. 2B, 162). The Examiner determines that sufficient motivation existed to combine the teachings of the references because “Kasic discloses an implantable hearing unit which is adapted to be located subcutaneously on a patient’s skull” and It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Ruppersberg to incorporate a RF coil included with the hearing aid. The modification would permit a hearing aid device to provide a RF coil in order to provide energy to the hearing aid. Final Act. 15. The Examiner further finds “Brodie teaches wherein a longitudinal axis of the cylindrical battery extends through the magnet,” as claimed. Id. (citing Brodie 1:56–70, 2:25–28, Figs. 1–4). The Examiner determines “[i]t would have been obvious . . . to modify Ruppersberg and Kasic to incorporate a cylindrical battery extends through a magnet. According to the Examiner, the modification would provide the integration of a battery disposed in a magnetic [sic] in a headpiece for the purpose of reducing the overall headpiece profile.” Final Act. 15–16. Thus, the Examiner determines that sufficient motivation existed to combine the teachings of the references. Id. Appellant traverses the Examiner’s reasoning for modifying Ruppersberg based on the teachings of Kasic. Appellant argues a person of ordinary skill would not have had a reason to modify Ruppersberg to add an Appeal 2020-006372 Application 15/213,786 6 RF coil in view of Kasic, because there is nothing in Ruppersberg’s implanted component that would receive RF signals. Appeal Br. 38–42. According to Appellant, Ruppersberg’s implanted component “is completely passive − it is a piece of metal and a magnet screwed to bone. Nothing more.” Id. at 39. Therefore, Appellant reasons, there is no need to include an RF coil in Ruppersberg’s external component because there is no coil in Ruppersberg’s implanted component that would receive RF signals and no reason to add such a coil. Id. We are persuaded by Appellant’s arguments. Figure 5(a) of Ruppersberg is reproduced below. Figure 5(a) of Ruppersberg shows a magnetic bone conduction hearing device 10 coupled to a patient’s head. Ruppersberg ¶ 21. Plate 20 is implanted under the patient’s skin and is screwed to the patient’s skull using Appeal 2020-006372 Application 15/213,786 7 bone screws 15. Id. ¶ 30. Magnetic members 60a and 60b are affixed to plate 20 and are “configured to couple magnetically to one or more corresponding external magnetic members or magnets 55,” which are mounted on “baseplate 50, which in turn is operably coupled to EM [(‘electromagnetic/bone conduction’)] transducer 25 and metal disc 40.” Id. “DSP 80 is configured to drive EM transducer 25, metal disk 40 and magnetic spacer or baseplate 50 in accordance with external audio signals picked up by microphone 85.” Id. This causes vibrations corresponding to the external audio signals captured by microphone 85 to be transferred to the patient’s skull. Id. Turning back to the rejection, claim 1 recites an “external headpiece . . . comprising: an RF coil” and the Examiner determines it would have been obvious “to modify Ruppersberg to incorporate a RF coil” into the external portion of hearing aid device 10 “to provide energy to the hearing aid.” Final Act. 15. Ruppersberg’s implanted component, however, is simply a metal baseplate with attached magnets. Ruppersberg Fig. 5(a). The Examiner has not demonstrated that the implanted component requires energy for operation. As Appellant argues, the implanted component is completely passive in that it does not require energy for its operation and therefore there is no reason to add such a coil to provide energy to either Ruppersberg’s internal or external component. Appeal Br. 39. Moreover, even if one skilled in the art would have had reason to install a coil in Ruppersberg to provide energy based on Kasic, as set forth by the Examiner, that coil would have been different than the RF coil recited in claim 1. Referring to Figure 3, the Specification explains that the external Appeal 2020-006372 Application 15/213,786 8 headpiece uses a microphone 126 to convert external sounds into electrical signals. Spec. ¶ 47. A “transmitter coil 442 of the external component 440 transmits these signals to implanted receiver coil 456 located in housing 458 of the implantable component 450,” where a “vibrating electromagnetic actuator 452 converts the electrical signals into vibrations.” Id. Thus, according to the Specification, the RF coil in the external headpiece is a transmitter coil used to transmit electrical signals representing external sounds to a receiver coil implanted under the user’s skin. Id. Kasic’s coil external coil 162 provides power to internal coil 118 to charge internal battery 140. Kasic Fig. 2B. Hence, the Examiner determines it would have been obvious to add Kasic’s coil into the external portion of Ruppersberg’s hearing aid device 10 to provide energy to the implanted portion of the hearing aid. Final Act. 15. In view of the Specification’s description of the claimed coil as an RF coil for transmitting sounds as electrical signals, we find additional error in the Examiner’s reasoning that it would have been obvious to modify Ruppersberg’s external member to add Kasic’s coil for the purpose of providing energy to the implanted portion of the hearing aid. “[A] rejection cannot be predicated on the mere identification . . . of individual components of claimed limitations. Rather, particular findings must be made as to the reason the skilled artisan, with no knowledge of the claimed invention, would have selected these components for combination in the manner claimed.” Ecolochem, Inc. v. Southern Calif. Edison Co., 227 F.3d 1361, 1375 (Fed. Cir. 2000). Here, the Examiner has failed to establish why a skilled artisan would have selected Kasic’s coil for installation into Ruppersberg’s external member. Thus, it appears that the obviousness Appeal 2020-006372 Application 15/213,786 9 rejection was a product of impermissible hindsight reasoning, based upon knowledge gleaned only from Appellant’s disclosure. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). We agree with Appellant, then, that the Examiner has not set forth a sufficient factual basis to support the conclusion that one of ordinary skill, having considered the three cited references, would have been motivated or had a reasonable suggestion to combine the teachings in the manner claimed. The Examiner’s asserted rationale of “provid[ing] a RF coil in order to provide energy to the hearing aid” is merely a legal conclusion unsupported by any reasonable factual basis. Final Act. 15. Accordingly, we reverse the Examiner’s obviousness rejection of independent claim 1, as well as claims 2–8, which depend from claim 1. Rejections of Claims 9–15 The Examiner finds that Ruppersberg teaches most of the limitations of independent claim 9, but finds that “Ruppersberg does not teach wherein the magnet apparatus provides a path for electricity to flow from the battery to the electrically powered component or provides a path to complete the circuit from the electrically powered component to the battery.” Final Act. 16. The Examiner finds Brodie teaches this limitation, as claimed. Id. (citing Brodie 1:56–2:17, Fig. 4). The Examiner determines it would have been obvious “to modify Ruppersberg to incorporate a battery housed in a magnetic [sic] in order to provide power to an electronic component. The modification would provide a way to provide power from a battery that is housed in a magnetic [sic] to provide power to a component.” Final Act. 17. Appellant traverses the Examiner’s reasoning for modifying Ruppersberg based on the teachings of Brodie, arguing a person of ordinary Appeal 2020-006372 Application 15/213,786 10 skill would not have had a reason to move Ruppersberg’s battery according to the teachings of Brodie. Appeal Br. 53–60. In particular, Appellant argues the Examiner’s rationale to “move the battery to a new location so that the battery can provide power from the new location” is insufficient because “Ruppersberg already provides power to an electronic component.” Appeal Br. 54. According to Appellant, one skilled in the art would have had no reason to move the battery because the battery should be installed “in the housing because that is where [it] can be accessed” and easily replaced. Id. at 58. Referring to Ruppersberg’s Figure 5a, Appellant adds that Ruppersberg’s unmodified battery location is advantageous because it “is proximate where the power consuming portions are – in the housing.” Id. We are persuaded by Appellant’s arguments. Figure 10 of Appellant’s Specification is reproduced below with annotations added. Appeal 2020-006372 Application 15/213,786 11 Figure 10 of the Specification shows battery 566 and a stack of disk “magnets 564 which are housed in subcomponent 550.” Spec. ¶¶ 52, 53. Electrical lead 522 electrically connects the magnet stack 564 to circuit board 554. Id. ¶ 71. Magnet stack 564 is electrically connected to battery 566, thereby providing “a path for electricity to flow from the battery to the electrically powered component,” e.g., sound processor 556 on circuit board 554. Referring to Ruppersberg’s Figure 5(a) (shown above), battery 95 is installed within housing 107 while magnets 55a and 55b are disposed external to the housing 107. Electrically powered components DSP 80 and microphone 85 are also installed within housing 107 and DSP 80 is illustrated as electrically connected to battery 95. The Examiner’s rejection rationale proposes to modify Ruppersberg based on Brodie, in which battery 5 and magnet 3 are physically and electrically connected. Brodie Fig. 4. The reason for the proposed modification is to “provide power to a component.” Final Act. 17. As Appellant argues, however, Ruppersberg’s battery 95 provides power to electrical components as is, without any apparent need for modification. Moreover, the Examiner’s proposed modification to Ruppersberg based on Brodie would require that either: (1) Ruppersberg’s battery 95 is moved to be co-located and physically connected to magnets 55a and 55b outside of housing 107; or (2) that electrical leads be added to connect the two components. With respect to proposed modification number (1), the Examiner has not shown why one skilled in the art would have found it beneficial to move battery 95 from inside housing 107 to outside housing 107 to physically Appeal 2020-006372 Application 15/213,786 12 connect the battery to magnets 55a and 55b. Nor has the Examiner shown that moving the battery from inside to outside of housing 107 would have been practically achievable. With respect to proposed modification number (2), the Examiner has not sufficiently explained the benefit of running electrical leads from battery 95 inside housing 107 to outside of housing 107 to connect with magnets 55a and 55b and then back again to connect the magnets with DPS 90. As Appellant argues, “[o]ne would not want to run wires all the way from the skin interface portion of the implant to the digital signal processor and then, from the DSP to the electromagnetic transducer. Indeed, this would unnecessarily complicate things, as compared to the original design, which has the battery closest” to the DSP 80. Appeal Br. 58. Moreover, we note that the Examiner simply repeats the rationale originally provided in the Final Office Action in response to Appellant’s arguments in the Appeal Brief. Ans. 35–36. We agree with Appellant that the Examiner has not sufficiently explained why a person of ordinary skill in the art would have had reason to modify Ruppersberg with Brodie’s teaching of a physically connected magnet and battery. Accordingly, on the record before us, we do not sustain the Examiner’s rejection of independent claim 9, as well as claims 10–15, which depend from claim 9. Rejections of Claims 16–23 The Examiner finds that Ruppersberg teaches most of the limitations of independent claim 16, but finds that “Ruppersberg does not teach wherein the external component is configured such that a magnetic force generated by the magnet apparatus applies a force onto the battery such that the battery Appeal 2020-006372 Application 15/213,786 13 is urged against an electrical contact of a circuit of which the battery is apart.” Final Act. 17. The Examiner finds “Brodie teaches wherein the external component is configured such that a magnetic force generated by the magnet apparatus applies a force onto the battery such that the battery is urged against an electrical contact of a circuit of which the battery is apart,” as claimed. Id. (citing Brodie 1:56–2:5, Figs. 1–4). The Examiner determines it would have been obvious “to modify Ruppersberg to incorporate a battery housed in a magnetic [sic] which provides force on the battery to be directed inward” and the “modification would provide the battery to stay electrically connected by the magnetic force being applied on the battery.” Final Act. 18. Appellant traverses the Examiner’s reasoning for modifying Ruppersberg based on the teachings of Brodie, arguing a person of ordinary skill would not have had a reason to modify Ruppersberg’s according to the teachings of Brodie. Appeal Br. 61–69. In particular, Appellant argues the Examiner’s rationale to move the battery to a new location so that the battery can stay electrically connected by a magnetic force is insufficient because “Ruppersberg already has an arrangement where the battery stays electrically connected. If not, it would not work. Electrical connection is a necessary feature for something that is powered by a battery.” Appeal Br. 62. According to Appellant, one skilled in the art would have had no reason to move the battery because the battery should be installed “in the housing because that is where [it] can be accessed” and easily replaced. Id. at 67. Referring to Ruppersberg’s Figure 5a, Appellant adds that Ruppersberg’s unmodified battery location is advantageous because it “is proximate where the power consuming portions are –in the housing.” Id. Appeal 2020-006372 Application 15/213,786 14 We are persuaded by Appellant’s arguments. Referring to Ruppersberg’s Figure 5(a) (shown above), battery 95 is installed within housing 107 while magnets 55a and 55b are disposed external to the housing 107. Electrically powered components DSP 80 and microphone 85 are also installed within housing 107 and DSP 80 is illustrated as electrically connected to battery 95. The Examiner’s rejection rationale proposes to modify Ruppersberg based on Brodie, in which battery 5 and magnet 3 are physically and electrically connected. Brodie Fig. 4. The reason for the proposed modification is to “provide the battery to stay electrically connected by the magnetic force being applied on the battery.” Final Act. 18. As Appellant argues, however, Ruppersberg’s battery 95 stays electrically connected as is, without any apparent need for modification. Appeal Br. 62. Appellant further argues the Examiner’s proposed modification to Ruppersberg based on Brodie would require moving Ruppersberg’s battery 95 to be proximate to magnets 55a and 55b to allow the magnets to apply a magnetic force to the battery. Id. at 67. We agree with Appellant that the Examiner has not shown why one skilled in the art would have found it beneficial to move Ruppersberg’s battery 95 from inside housing 107 to outside housing 107 to allow the battery to be proximate to magnets 55a and 55b. Nor has the Examiner shown that moving the battery from inside to outside of housing 107 would have been practically achievable. Moving the battery would unnecessarily complicate the original Ruppersberg’s design, which places the battery within the housing 107 and closest to DSP 80 and other important components. Appeal 2020-006372 Application 15/213,786 15 Moreover, we note that the Examiner simply repeats the rationale originally provided in the Final Office Action in response to Appellant’s arguments in the Appeal Brief. Ans. 36–38. We agree with Appellant that the Examiner has not sufficiently explained why a person of ordinary skill in the art would have had reason to modify Ruppersberg with Brodie’s teaching of a physically co-located magnet and battery. Accordingly, on the record before us, we do not sustain the Examiner’s rejection of independent claim 16, as well as claims 17–23, which depend from claim 16. Rejections of Claims 24–30 The rejection of independent claim 24 is unclear. The Examiner appears to find that Ruppersberg teaches all of the limitations of claim 24 including attaching a magnet to the headpiece “wherein the action of attaching the magnet to the headpiece controls a location of the battery.” Final Act. 18–19. The Examiner however cites Brodie, noting that “Brodie discloses a battery (5) that extends through the magnet (3).” Id. at 19 (citing Brodie 1:56–70, 2:25–28, Figs. 1–4). The Examiner, however, does not sufficiently explain why Brodie is cited when Ruppersberg teaches all of the limitations of claim 24. The Examiner determines it would have been obvious “to modify Ruppersberg to incorporate a cylindrical battery [that] extends through a magnet. The modification would provide the integration of a battery disposed in a magnetic [sic] in a headpiece for the purpose of reducing the overall headpiece profile.” Final Act. 19. Appellant argues that Ruppersberg fails to teach attaching a magnet to the headpiece “wherein the action of attaching the magnet to the headpiece controls a location of the battery,” as recited in claim 24. Appeal Br. 71–72. Appeal 2020-006372 Application 15/213,786 16 In particular, Appellant argues the Examiner has not shown how attaching Ruppersberg’s magnets 55 controls the location of battery 95. Id. Appellant’s argument is persuasive. Referring to Ruppersberg’s Figure 5(a) (shown above), battery 95 is installed within housing 107 while magnets 55a and 55b are disposed external to the housing 107. In addition, Ruppersberg does not show battery 95 and magnets 55a and 55b as being physically co-located. Furthermore, Ruppersberg does not indicate that battery 95 has anything other than a fixed location. Ruppersberg ¶¶ 30, 32, Fig. 5(a). Accordingly, we agree with Appellant that the Examiner has not shown how attaching Ruppersberg’s magnets 55 controls the location of battery 95. Appeal Br. 71–72. Next, Appellant traverses the Examiner’s reasoning for modifying Ruppersberg based on the teachings of Brodie, arguing a person of ordinary skill would not have had a reason to modify Ruppersberg’s according to the teachings of Brodie. Appeal Br. 80. In particular, Appellant argues the Examiner’s rationale to incorporate the magnet and cylindrical battery of Brodie would require moving Ruppersberg’s battery to a new location. Appeal Br. 80–81. And, according to Appellant, one skilled in the art would have had no reason to move the battery because the battery should be installed “in the housing because that is where [it] can be accessed,” easily replaced, and is “closest to the digital signal processor.” Id. at 80. And, according to Appellant, there is “ample room in the housing for the battery” and the Examiner has not adequately explained how modifying Ruppersberg’s battery to extend through the magnet would result in a lower profile of the device. Id. at 81. Appeal 2020-006372 Application 15/213,786 17 We agree with Appellant that the Examiner has not shown why one skilled in the art would have modified Ruppersberg to incorporate a cylindrical battery that extends through a magnet or how the modification would have reduced the overall headpiece profile. The Examiner has not explained whether the proposed modification of Ruppersberg based on Brodie’s would involve moving the magnets into Ruppersberg’s housing or moving the battery outside the housing with magnets disposed on the skin interface pad. Accordingly, on the record before us, we do not sustain the Examiner’s rejection of independent claim 24, as well as claims 25–30, which depend from claim 24. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1 103 Ruppersberg, Kasic, Brodie 1 9, 16, 24 103 Ruppersberg, Brodie 9, 16, 24 2, 3, 4, 5, 6, 8 103 Ruppersberg, Kasic, Brodie 2, 3, 4, 5, 6, 8 7 103 Ruppersberg, Kasic, Brodie, Partovi 7 10, 14, 15, 17, 18, 19, 20, 21, 25, 26, 103 Ruppersberg, Brodie 10, 14, 15, 17, 18, 19, 20, 21, 25, 26, 27, 28, 29, 30 Appeal 2020-006372 Application 15/213,786 18 REVERSED 27, 28, 29, 30 11, 12 103 Ruppersberg, Brodie, Sato 11, 12 13 103 Ruppersberg, Brodie, Partovi 13 22 103 Ruppersberg, Brodie, Kimura 22 23 103 Ruppersberg, Brodie, Ridler 23 Overall Outcome 1–30 Copy with citationCopy as parenthetical citation