Daly, Christopher N.

Patent Trials and Appeals Board

May 27, 2020

2019001953 (P.T.A.B. May. 27, 2020)

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.
13/293,758 11/10/2011 Christopher N. Daly 5441-350B 9709
111614 7590 05/27/2020
Pilloff Passino & Cosenza LLP
2000 Duke Street
Suite 300
Alexandria, VA 22314
EXAMINER
D ABREU, MICHAEL JOSEPH
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
05/27/2020 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 CHRISTOPHER N. DALY
Appeal 2019-001953
Application 13/293,758
Technology Center 3700
Before JENNIFER D. BAHR, JOHN C. KERINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, 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, 3, 5, 7, 8, 10, 11, 13–16, and 18–30.
An oral hearing was held on May 6, 2020 and a transcript of the hearing has
been entered into the record (“Tr.”). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Cochlear Limited.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “the configuration of implantable
medical devices.” Spec. ¶ 2. Claims 1, 8, 15, and 25 are independent.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An implantable medical device comprising:
an implantable component comprising an implantable
memory module, said implantable component configured to
receive and store data in said implantable memory module; and
an external component comprising an external memory
module, said external component configured to communicate
with said implantable component to receive said data,
wherein said external component further comprises an
identification circuit and is further configured to transmit an
identification code stored on said identification circuit, and
wherein said implantable component further comprises a sensor
configured to receive said identification code and is further
configured to transmit said data from said implantable memory
module to said external memory module upon receiving said
identification code and verifying the compatibility of said
external component.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Faltys US 6,219,580 B1 Apr. 17, 2001
Haubrich US 6,482,154 B1 Nov. 19. 2002

REJECTIONS
1) The Examiner rejected claims 1, 3, 5, 7, 15, 16, 18, 19, 22, 25, and
26 under 35 U.S.C. § 103(a) as unpatentable over Haubrich.
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2) The Examiner rejected claim 8, 10, 11, 13, 14, 20, 21, 23, 24, and
27–30 under 35 U.S.C. § 103(a) as unpatentable over Haurbrich
and Faltys.
OPINION
Rejection 1
The Examiner provides the same findings and reasoning for
independent claims 1 and 25. Final Act. 6–7. The Examiner finds that
Haubrich discloses most of the limitations of claims 1 and 25 but “it is
unclear as to what [Haubrich’s] EMD discovery signal contains; however, it
is noted that Haubrich states that the identifying information can be used by
the EMD in subsequent telemetry transmissions.” Id. at 7 (citing Haubrich,
13:15–21). The Examiner concludes that “it would have been an obvious
design choice to have some sort of identifying information in the discovery
signal in order to ensure that the device is paired appropriately” and “the
device necessarily includes some sort of verification and identification
circuit in order to have ‘identifying information’ and to establish secure and
uninterrupted connections . . . as is well known in the art.” Id.
Claim 25
Claim 25 recites, inter alia, “An implantable medical device system
comprising: an implantable component . . . configured to provide stimulation
to the recipient” and “that the implantable component can configure a
plurality of different external components.” Appeal Br. 159 (Claims App.).
The Examiner does not direct us to any disclosure in Haubrich to support a
finding that Haubrich discloses either of these claim limitations. See Final
Act. 5–7; Ans. 3–5. Therefore, we do not sustain the rejection of
independent claim 25.
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Claims 1, 3, 5, 7
Appellant contends that Haubrich fails to disclose an external
component that comprises “an identification circuit” and argues that the
identification circuit is a separate component from the recited “external
memory module.” Appeal Br. 45–47. The Examiner finds that Haubrich
discloses “a memory cell in either the hard disk drive or floppy disc drive
. . . where [the identification code] is stored prior to transmission” which,
according to the Examiner, corresponds to the recited identification circuit.
Final Act. 2 (citing Haubrich, Fig. 2). The Examiner also finds that hard
disk drive 52 shown in Figure 2 of Haubrich corresponds to the recited
external memory module. Id. at 6. The Examiner further finds that
identifying information sent by the internal component to the external
component is “used by the EMD in subsequent telemetry transmissions to
the IMD to assure that only the desired IMD receives and responds to
transmissions.” Id. at 3–4 (quoting Haubrich, 13:15–21).
Resolution of this rejection requires construction of the claim term
“identification circuit.” We give claim terms their broadest reasonable
interpretation consistent with the Specification as it would be interpreted by
one of ordinary skill in the art. See In re Suitco Surface, Inc., 603 F.3d
1255, 1259–60 (Fed. Cir. 2010); In re Morris, 127 F.3d 1048, 1054–55 (Fed.
Cir. 1997). Although the claims are interpreted in light of the Specification,
limitations from the Specification are not read into the claims. In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). “The correct inquiry in giving
a claim term its broadest reasonable interpretation in light of the
Specification . . . is an interpretation that corresponds with what and how the
inventor describes his invention in the Specification, i.e., an interpretation
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that is ‘consistent with the specification.”’ In re Smith International, Inc.,
871 F.3d 1375, 1382–1383 (Fed. Cir. 2017).
We begin our analysis with the claim language. In re Power
Integrations, Inc., 884 F.3d 1370, 1376 (Fed. Cir. 2018) (“[C]laim
construction must begin with the words of the claims themselves.”) (internal
citation and quotations omitted). Claim 1 recites that the external
component comprises both “an external memory module” and “an
identification circuit” and that the identification code is stored on the
identification circuit, not on the external memory module. The language of
claim 1, thus, suggests that the external memory module and the
identification circuit are distinct components as Appellant argues.
Paragraph 50 of Appellant’s Specification provides:
FIG. 2D illustrates a different technique for triggering the data
transfer in another embodiment of the invention in which an ID
circuit 270, for example an RFID chip, is incorporated into external
component 222. Implanted component 224 comprises a circuit
configured to detect and receive data from an ID circuit 270 such as
an RFID chip. Upon detecting the ID circuit and upon passing a
preprogrammed test, recipient-specific data stored in memory 238 of
implanted component 224 is transmitted to external component 222
automatically. The pre-programmed test may be the matching of data
representing a serial number or a model number. In one embodiment
of the present invention, receiving a model number from ID 270 of
external component 222 which is an exact match or within a range of
acceptable model numbers stored in implanted component 222 will
allow cochlear implant 220 to enter an operational state. Where the
model number is not an exact match or within an expected range
programmed into implanted component 224, hearing prosthesis will
be prevented from entering an operational state, or if already in
operational state, will cause hearing prosthesis to enter a fault or error
mode.
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Spec. ¶ 50 (emphases added). From this disclosure and the claim language,
we determine that one of ordinary skill in the art would reasonably
understand that the identification circuit in the external component is
separate from the external memory module and contains data that can be
used to identify the external component.
Haubrich is directed to a telemetry system “between an implanatable
medical device (IMD) and an external medical device (EMD) such as a
programmer or a monitor.” Haubrich 1:7–10, Fig. 1. Specifically, Haubrich
is directed to “a method of ensuring that the telemetry link is between an
intended, rather than an unintended, implantable medical device and the
external medical device.” Id. 1:11–14. In use, Haubrich’s “EMD
(programmer 20) transmits a beacon or EMD discovery signal . . . and waits
for a predetermined time for receipt of an uplinked IMD discovery or ID
signal.” Id. 11:67–12:3. The IMD(s) then “transmit their ID codes or other
IMD discovery signals” to the EMD. Id. 12:10–11. The EMD may use the
IMD identification information “in subsequent telemetry transmissions to
the IMD to assure that only the desired IMD receives and responds to
transmissions from the EMD.” Id. 13:18–21
Although we agree with the Examiner that Haubrich discloses that its
IMD transmits an identification code to the EMD and that code may
subsequently be transmitted back to the IMD by the EMD, that code
identifies the IMD, not the EMD, so that whatever programming is
transmitted by the EMD reaches the intended IMD. The Examiner has not
shown that Haubrich discloses an identification circuit on the EMD that
stores an identification code that identifies the EMD in order to “verify[] the
compatability of the said external component” with the implantable
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component as required by claim 1. Further, the Examiner’s reasoning that
design choice supports modifying Haubrich’s discovery signal to include
identification information of the EMD to “ensure that the device is paired
appropriately” is not properly supported. See e.g. Cutsforth, Inc. v.
MotivePower, Inc., 636 Fed. Appx. 575, 578 (Fed. Cir. 2016) (unpublished)
(stating that a particular placement of an element is a design choice does not
make it obvious; a reason must be offered as to why a skilled artisan would
have made the specific design choice). In this case, as noted above,
Haubrich is directed to “ensuring that the telemetry link is between an
intended, rather than an unintended, implantable medical device and the
external medical device.” Haubrich, 1:11–14. The Examiner has not
adequately explained why one of ordinary skill in the art would include
information identifying Haubrich’s EMD in the discovery signal to ensure
that the EMD is “paired appropriately” with the intended IMD because, as
discussed above, the EMD uses the identification code for the IMD in
subsequent transmissions to assure appropriate pairing. Therefore, we do
not sustain the rejection of claim 1 because the Examiner has not shown by a
preponderance of the evidence that Haubrich discloses an “identification
circuit” as required by claim 1. We also do not sustain the rejection of
claims 3, 5, and 7, which depend directly or indirectly from claim 1 for the
same reasons.
Claim 15
Claim 15 is an apparatus claim requiring “an internal component” as
recited (the “first limitation”) and “an external component” as recited (the
“second limitation”). Appeal Br. 157–58 (Claims App.). We address each
of these limitations separately focusing on Appellant’s contentions for each.
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The Examiner finds that Haubrich discloses the subject matter of
claim 15. Final Act. 8. With respect to the first limitation, the Examiner
finds that Haubrich discloses, inter alia, “the implantable component
configured to receive and store operating parameters . . . wherein said
operating parameters are specific to a recipient of the implantable
component.” Final Act. 8 (citing Haubrich 3:41–4:25, 4:52–5:2); see also
Ans. 4 (“Haubrich is clearly a pacemaker with a memory which necessarily
stores operating parameters specific to the recipient of the implantable
component.”).
In connection with the first limitation, Appellant provides several
contentions based on an argument that Haubrich fails to disclose operating
parameters that are specific to a recipient of the implantable component. See
Appeal Br. 66, 68, 76, and 78. In support of these contentions, Appellant
focuses primarily on the disclosure at column 4, line 52 to column 5, line 2
of Haubrich. See Appeal Br. 66–67, 68–69, and 73–74. Appellant’s only
mention of Haubrich’s disclosure at column 3 line 41 to column 4 line 25 in
connection with the first limitation is the following: “Assuming arguendo
that columns 3–4, lines 41–25 so disclose operating parameters specific to a
recipient (it does not, demonstrated above), those alleged operating
parameters are not the parameters that are transferred to the external
component.” Id. at 79. We make several observations with respect to this
argument. First, this argument is not commensurate in scope with the first
limitation of claim 15, which does not require transferring operating
parameters to the external component.2 We note that claim 16 recites that

2 Because it is not necessary to our decision here, we do not reach the
argument raised by Appellant in the oral hearing that the language in the
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the internal component is configured to transfer the operating parameters.
Under the doctrine of claim differentiation, “the presence of a dependent
claim that adds a particular limitation raises a presumption that the limitation
in question is not found in the independent claim.” Bancorp Servs., L.L.C. v.
Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1275 (Fed. Cir.
2012). Consequently, we do not construe claim 15 as requiring transfer of
operating parameters by the internal component. Second, claim 15 does not
affirmatively require that the operating parameters be stored in the memory
module of the internal component. Claim 15 only requires that the
implantable component be configured to receive and store the operating
parameters. Third, in order to evaluate the possible relevance of this
argument to the first limitation of claim 15, we reviewed the portions of the
Appeal Brief dealing with claim 15 from page 66 to page 79, and do not
discern any argument by Appellant even addressing, let alone demonstrating,
that the disclosure of Haubrich column 3, line 41 to column 4, line 25 does
not correspond to “operating parameters . . . specific to a recipient of the
implantable component.” See id. at 66–79. Further, based on that review,
we do not discern any argument by Appellant that Haubrich fails to disclose
an implantable component comprising an implantable memory module also
required by the first limitation of claim 15. See id. For the following
reasons, we determine that Appellant’s contentions regarding the first
limitation of claim 15 do not apprise us of Examiner error.

second limitation of claim 15, “receive said operating parameters,” should
be construed as requiring the external component to receive the operating
parameters from the internal component. Tr. 18:19–20:13.
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Appellant’s Specification provides that “recipient-specific operating
parameters” include “a set of instructions or settings values for that
recipient.” Spec. ¶ 8. The Specification describes various types of data that
may be used in connection with a cochlear implant such as speech
processing schemes. Id. ¶¶ 8, 45. Claim 15, however, is not limited to a
cochlear implant but is directed to a generic “implantable medical device.”
We note that the Specification contemplates that recipient specific data
encompasses a broad category of data for such a generic “implantable
medical device” as recited in claim 15 where it provides that “recipient-
specific operating parameters” include generic “data of other types” that “are
well understood by those skilled in the art.” Id. ¶ 45.
Haubrich discloses:
The memory registers or RAM may also be used for storing
data compiled from sensed cardiac activity and/or relating to
device operating history or sensed physiologic parameters for
telemetry out on receipt of a retrieval or interrogation
instruction. All of these functions and operations are well
known in the art and many are employed in other
programmable IMD’s to store operating commands and data for
controlling device operation and for later retrieval to diagnose
device function or patient operation.

Programming commands or data are transmitted between an
IPG RF telemetry antenna 28 and an external RF telemetry
antenna 24 associated with the external programmer 20.
Haubrich, 3:62–4:8. Haubrich, thus, discloses an internal component with a
memory that stores data relating both to the patient (the “recipient”) and to
operating commands for controlling the functions and operation of the IMD
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implanted in the patient and that such data is well known in the art.3
Therefore, Appellant’s contentions concerning the first limitation of claim
15 do not apprise us of Examiner error because Haubrich discloses an
internal component with a memory that stores operating parameters specific
to a recipient.
The second limitation of claim 15 requires “an external component
comprising an external memory module, the external component configured
to communicate with said implantable component and, upon the implantable
component verifying the compatibility of the external component with the
implantable component, to receive said operating parameters and configure
the external component using said operating parameters.” Appeal Br. 157–
58.
Appellant’s first contention with respect to the second limitation of
claim 15 is that Haubrich fails to disclose that the operating parameters
specific to a recipient are transferred to the external component. Appeal Br.
86. As discussed above, leaving aside the fact that claim 15 does not require
the implantable component to receive and store the operating parameters and
that there is no requirement of a transfer from the internal component to the
external component, Haubrich discloses that recipient specific operating
parameters are, in fact, transferred from Haubrich’s IMD to EMD.

3As we noted above, Appellant’s argument at page 79 of the Appeal Brief
that Haubrich does not disclose transferring this data to the external
component is not commensurate in scope with the first limitation of claim
15. However, to the extent the argument has any relevance at all to claim
15, it is belied by the above quoted disclosure as well as other disclosure in
Haubrich describing “bi-directional communications between the IMD and
EMD” including “preliminary information regarding device status from the
IMD to the EMD.” Haubrich, 12:64–67; see also id. 12:54–63.
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Haubrich, 3:62–4:7; 12:54–63. Consequently, this contention is not
persuasive.
Appellant’s second contention with respect to the second limitation of
claim 15 is that there is no disclosure in Haubrich that “the EMD (external
medical device) is configured by anything it receives from the IMD. Appeal
Br. 93. Appellant further argues that “nowhere does Haubrich disclose
structure where the programming or anything else that configures the
external device comes from the implant. This is a structural requirement of
claim 15.” Id. at 94.
We note that Appellant does not dispute that Haubrich’s external
component includes a memory module and is configured to communicate
with the implantable component. Tr. 12:12–18. Appellant’s contentions
focus primarily on how the claimed device operates using broadly defined
functional language. Appellant’s Specification is instructive here because it
provides that “the external components are generic in that they are provided
to the recipient without first setting any operational parameters that are
tailored for use by the particular recipient” and that the external components
are configured by “storing operational parameters that are specific to a
particular recipient in the memory module of an implantable component,
transmitting at least one configuration between the implantable and external
components.” Spec. ¶ 37. From this we discern that the basic structural
components of the claimed apparatus are produced as generic devices not
including operating parameters specific to a recipient. We note that in
certain circumstances functional language, such as recited in claim 15, may
be used to add limitations to an apparatus claim. See K-2 Corp. v. Salomon
S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999); Wright Med. Tech., Inc. v.
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Osteonics Corp., 122 F.3d 1440, 1443–44 (Fed. Cir. 1997). The problem
with Appellant’s contentions, however, is that claim 15 does not require the
implantable component to verify the compatibility of the external component
with the implantable component. Rather, claim 15 recites an external
component “configured to . . . receive operating parameters and configure
the external component using said operating parameters” only “upon the
implantable component verifying the compatibility.” Due to the conditional
nature of this limitation, claim 15 does not require that the external
component be configured using the operating parameters. Additionally, as
discussed above, claim 15 does not require that the operating parameters be
received and stored in the internal component, only that it is “configured to
receive and store” the operating parameters. This language adds an
additional condition to the configured language in the second limitation of
claim 15. Therefore, Appellant’s contentions do not persuade us of
Examiner error in connection with the second limitation of claim 15.
We have considered all of Appellant’s contentions in connection with
claim 15 and determine that Appellant does not apprise us of error.
Therefore, we sustain the rejection of claim 15.
Claims 16, 18, 19, 22, 26
Claims 16, 18, 19, 22, and 26 all depend directly from claim 15.
Appeal Br. 158–59 (Claims App.). The Examiner finds that Haubrich
discloses the subject matter of these dependent claims. Final Act. 9.
Appellant argues separately for the patentability of each of these claims. See
Appeal Br. 97–103.
Claim 16 recites that the implantable medical device of claim 15 “is
configured to transfer said operating parameters upon operationally coupling
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said implantable component with said external component.” Appeal Br. 158
(Claims App.). Appellant contends that the Examiner implicitly rewrote
claim 16 as “wherein said implantable medical device is configured to
transfer said operating parameters upon after operationally coupling”
because in Haubrich “[e]verything associated with activating or otherwise
starting transfer of data is directed towards using utilizing something explicit
other than the external device.” Id. at 97–99. Appellant further argues that
in Haubrich “there is already operational coupling between the two devices
prior to any transfer of data.” Id. at 99. We interpret Appellant’s argument
to be that the claim term “upon” should be construed as requiring
transmission of the operating parameters simultaneously or concurrently
with the operational coupling. Although the term “operationally coupled”
does not appear to be used in the Specification, the Specification provides
that “[u]pon detecting the ID circuit and upon passing a pre-programmed
test, recipient-specific data stored in memory 238 of implanted component
224 is transmitted to external component 222 automatically.” Spec. ¶ 50.
From the description, it appears that operational coupling, in the context of
claim 15, would include passing “a pre-programmed test” as no ID circuit is
recited in claim 15. However, there is clearly a sequence of events
described. First, a pre-programmed test is “passed,” then, only if there is a
match of model numbers, will the operating parameters be transmitted to the
external component. See id. Although the transfer is described as occurring
“automatically,” that does not mean that the transfer occurs simultaneously
or concurrently. Rather, the transfer is described as occurring after the test is
passed. Therefore, we are not apprised of Examiner error because
Appellant’s argument that it was improper for the Examiner to construe
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“upon” to mean “after” is contrary to the intrinsic evidence. For these
reasons, we sustain the rejection of claim 16.
Claim 18 recites that the “internal component has stored therein a
unique identifier representing said operating parameters stored in said
implantable memory module.” Appeal Br. 158 (Claims App.). Appellant
repeats its contention that claim 15 “requires that the device be configured to
transfer those operating parameters to the external component.” Appeal Br.
100. This contention is not persuasive for the reasons discussed above in
connection with claim 15. Appellant also contends that in Haubrich, “there
is nothing about any unique identifier, and certainly nothing about that
‘unique identifier representing said operating parameters.’” Appeal Br. 100.
This contention cannot be reconciled with Appellant’s contention in
connection with claim 1 that Haubrich’s EMD Discovery signal is not an
identification code because, inter alia, Haubrich uses the term identification
code “with respect to the identification signal that is transmitted from the
implant to the external component.” Id. at 48, 50. We agree with Appellant
that Haubrich does in fact disclose an identification code for the IMD. See
Haubrich, 12:8–13. We are not persuaded by this contention because
Appellant does not explain adequately why the IMD identification codes of
Haubrich do not correspond to the unique identification codes recited in
claim 18 or why those codes do not represent the operating parameters
stored in memory. For these reasons, we sustain the rejection of claim 18.
Claim 19, which depends from claim 18, recites that the external
component “is configured to download said unique identifier concurrently
with said operating parameters.” Appeal Br. 158 (Claims App.). Appellant
contends that the Examiner has ignored the recitations of claim 19. Appeal
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Br. 102. Haubrich discloses that its EMD first selects the intended IMD by
receiving the ID code from the IMD. See Haubrich, 12:8–53. The EMD
then initiates telemetry with the selected IMD. Id. 12:54–57. The Examiner
has not directed us to any disclosure in Haubrich to support a finding that
Haubrich’s EMD is configured to download the unique identifier
concurrently with the operating parameters as required by claim 19. See
Final Act. 9. Therefore, we do not sustain the rejection of claim 19.
Claim 22 depends from claim 15 and recites, “wherein the
implantable component is implanted in the recipient, and wherein at least a
portion of the external component is located opposite the implantable
component with a layer of skin located between the external component and
the implantable component.” Appeal Br. 158 (Claims App.). The entirety
of the rejection of claim 22 states that “any external component would
necessarily be opposite the implantable component with a layer of skin
separating the two components.” Final Act. 9. Appellant argues that
“Haubrich is a device designed to communicate with the implantable
component at relatively large distances” and “does not necessarily have to be
opposite the implantable component.” Appeal Br. 104 (citing Haubrich Fig.
1). In the Answer, the Examiner responds that “any external element would
be ‘opposite’ the implanted device when using the skin as the layer
between.” Ans. 5. For the following reasons, we do not sustain the rejection
of claim 22.
Haubrich discloses that “the present invention relates to a long-range
telemetry system.” Haubrich, 3:11–12. Figure 5 of Haubrich discloses use
of the “long range telemetry system for monitoring the operation of an IMD
with a home based monitor.” Id. 2:63–65, Fig. 5; see also Fig. 1. The
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Examiner has not adequately explained how the external component in the
long range telemetry systems illustrated in Figures 1 and 5 of Haubrich are
located opposite the implantable component as required by claim 22.
Therefore, we do not sustain the rejection of claim 22.
Claim 26 recites that “the operating parameters are stored in the
implantable memory.” Appeal Br. 159 (Claims App.). Appellant contends
that the “recitations of claim 26 have been ignored in the Office Action.
Appeal Br. 103. As discussed above in connection with the rejection of
claim 15, Appellant has not squarely addressed the disclosure of Haubrich at
column 3 line 41 to column 4 line 25, which as discussed above supports a
finding that Haubrich stores operating parameters in the implantable
memory. For the same reasons, we sustain the rejection of claim 26.

Rejection 2
The Examiner finds that Haubrich discloses all the limitations of
claim 8 except for “a speech processor or prosthetic hearing device.” Final
Act. 9. The Examiner finds that Faltys “discloses a comparable implantable
telemetry device as a speech processor.” Id. Appellant contends that “claim
8 specifies two separate unique identifiers that exist at the same time” which,
according to Appellant, the Examiner fails to address in the rejection of
claim 8. Appeal Br. 119–20. For the following reasons, we do not sustain
the rejection of claim 8.
Claim 8 requires an implantable component “configured to receive
and store a first unique identifier for said implantable component” and an
external component “configured to store a second unique identifier for said
external component.” Appeal Br. 156–57 (Claims App.). The Examiner
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does not direct us to any portion of Haubrich disclosing “a second unique
identifier” for the external component. See Final Act. 9. In fact, the only
specific identification code disclosed in Haubrich is for Haubrich’s IMD.
See Haubrich, 12:8–12. The Examiner has, thus, not established by a
preponderance of the evidence that Haubrich discloses “an external
component . . . configured to store a second unique identifier for said
external component in the external memory module.” Therefore, we do not
sustain the rejection of independent claim 8. Claims 10, 11, 13, 14, 21, 23,
24, and 27 depend directly or indirectly from claim 8. Appeal Br. 157–59
(Claims App.). We do not sustain the rejection of these dependent claims
for the same reason.
Claims 28, 29, and 30 depend from claim 1. Appeal Br. 160 (Claims
App.). The Examiner’s reliance on Faltys in the rejection of claims 28, 29,
and 30 fails to cure the deficiency in the rejection of claim 1 discussed above
in connection with Rejection 1. See Final Act. 9. Therefore, we do not
sustain the rejection of claims 28, 29, and 30 for the same reasons discussed
above in connection with claim 1.
Claim 20 depends indirectly from claim 15. Appeal Br. 158 (Claims
App.). Appellant has apparently not made any separate arguments for the
patentability of claim 20. See Appeal Br. 8–15. Therefore, we sustain the
rejection of claim 20.

CONCLUSION
The Examiner’s rejections are affirmed in part.
More specifically,
Appeal 2019-001953
Application 13/293,758

19
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 5, 7,
15, 16, 18,
19, 22, 25,
26
103(a) Haubrich 15, 16, 18,
26
1, 3, 5, 7,
19, 22, 25
8, 10, 11,
13, 14, 20,
21, 23, 24,
and 27–30
103(a) Haubrich, Faltys 20 8, 10, 11,
13, 14, 21,
23, 24, 27–
30
Overall
Outcome
15, 16, 18,
20, 26
1, 3, 5, 7, 8,
10, 11, 13,
14, 19, 21–
25, 27–30

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART