EarLens Corporation

Patent Trials and Appeals Board

Aug 23, 2021

2021000490 (P.T.A.B. Aug. 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.
15/187,407 06/20/2016 Rodney C. PERKINS 33999-707.302 2314
21971 7590 08/23/2021
WILSON SONSINI GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
EXAMINER
KUHLMAN, CATHERINE BURK
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
08/23/2021 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):
patentdocket@wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODNEY C. PERKINS and VINCENT PLUVINAGE
Appeal 2021-000490
Application 15/187,407
Technology Center 3700
Before JENNIFER D. BAHR, PHILLIP J. KAUFFMAN, and
SEAN P. O’HANLON, Administrative Patent Judges.
KAUFFMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–10. 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 Earlens Corporation.
Appeal Br. 3. In our Decision, we refer to the Specification filed June 20,
2016, (“Spec.”), the Final Office Action mailed may 29, 2019 (“Final Act.”),
the Appeal Brief filed June 18, 2020 (“Appeal Br.”), and the Examiner’s
Answer mailed July 10, 2020 (“Ans.”).

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Application 15/187,407

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We AFFIRM.
THE CLAIMED SUBJECT MATTER
The Application is titled, “Systems and methods for photo-mechanical
hearing transduction,” and relates to the use of light signals for producing
vibrational energy in a transduction pathway from a subject’s tympanic
membrane to the subject’s cochlea. Spec., Title, ¶ 2.
Claims 1 and 8 are independent. We reproduce claim 8 below.
8. An output transducer assembly configured for placement on
a tympanic membrane, the transducer assembly being adapted
to couple to a hearing transduction pathway of a subject when
positioned on the subject’s tympanic membrane to induce
neural impulses interpreted as amplified sound, said output
transducer configured to receive a light signal from the light
source and convert the light signal to mechanical vibration, the
output transducer comprising a cantilever element clamped at
one end of a support element and a small mass attached at a free
end of the cantilever, wherein the output transducer assembly is
configured to vibrate the mass on the cantilever.
EVIDENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Ball US 5,624,376 Apr. 29, 1997
Van Antwerp US 6,011,984 Jan. 4, 2000
Glendon US 6,493,453 B1 Dec. 10, 2002
Hamanaka US 6,523,985 B2 Feb. 25, 2003
Abel WO 03/063542 A2 July 31, 2003
REJECTIONS
I. Claims 8 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ball and Abel.
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II. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Ball, Abel, and Van Antwerp.
III. Claims 1 and 4–7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ball, Abel, and Glendon.
IV. Claim 2 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Ball, Abel, Glendon, and Van Antwerp.
V. Claim 3 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Ball, Abel, Glendon, Van Antwerp, and
Hamanaka.
OPINION
Rejection I – Obviousness Based on Ball and Abel
In rejecting independent claim 8, the Examiner finds that Ball
discloses an output transducer assembly (transducer 100) configured for
placement on a tympanic membrane (tympanic membrane CC).2 Final Act.
5 (citing Ball, Fig. 19a, 16:35–43, 58–62); see also Ball 1:13–30, 3:48–49,
Figs. 1, 19a (showing the portion of the ear corresponding to “CC”). The
Examiner finds that Ball’s transducer 100 is configured to receive signals
from external sound transducer 506 via magnetic induction (rather than
light) and converts the signals into mechanical vibrations. Final Act. 5–6
(citing Ball 16:58–62). The Examiner finds that Abel teaches “a technique
for transmitting a sound signal from an external sound transducer to an
implanted transducer coupled to a component of the hearing transduction
pathway using light.” Id. at 6. In particular, the Examiner finds that Abel

2 Here, and throughout, parenthetical nomenclature refers to the prior art
reference.
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teaches an output transducer “configured to receive a light signal from a
light source and convert the light signal to mechanical vibration (light signal
generated by external ear microphone is received by a photoreceiver on the
implant and converted to an electrical signal for driving an actuator).” Id.
(citing Abel 3, 7). The Examiner determines that it would have been
obvious
to use light, as opposed to magnetic induction, to transmit the
sound signal in the system of Ball, and thus configure the output
transducer to receive a light signal from a light source and
convert the light signal to mechanical vibration, because Abel
teaches problems with magnetic induction such as high power
consumption, signal variations, and background noise, which are
not present in a light-coupled system.
Id. (citing Abel 2–3).
Appellant argues that Abel discloses “a middle or inner ear implant,
and does not teach or reasonably suggest any output transducer assembly
sized for placement on the tympanic membrane.” Appeal Br. 6 (citing Abel,
Abstr., 3:21–22, Fig. 1). We are not persuaded by this argument because it
is inapposite in that it attacks Abel individually rather than as combined in
the rejection. “Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981). As
discussed above, the Examiner relies on Ball, not Abel, for disclosing an
output transducer configured for placement on a tympanic membrane. See
Final Act. 5 (finding that Ball’s transducer 100 is placed on tympanic
membrane CC); Ans. 3 (explaining that “Ball is applied as the primary
reference and is used to teach an output transducer assembly sized for
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placement on the tympanic membrane (fig. 19a)”). The Examiner relies on
Abel only for teaching a technique for transmitting sound signals to an
output transducer using light. Final Act. 6 (citing Abel 3, 7).
Appellant contests the Examiner’s finding that Ball discloses a
transducer assembly configured for placement on a tympanic membrane.
See Appeal Br. 6. In particular, Appellant asserts that Ball is “directed to the
placement of floating mass transducers in the middle ear to vibrate the bones
of the inner ear directly.” Appeal Br. 6 (citing Ball, Figs. 5a, 7–10, 14, 18,
19a, 19b, 23, 24). This argument is unpersuasive. Ball discloses, with
reference to Figure 19a, “an implementation where the floating mass
transducer of the present invention is removably placed in contact with the
tympanic membrane. A transducer 100 is shown attached to the tympanic
membrane CC with a flexible membrane 502.” Ball 16:36–40. In other
words, Ball’s transducer is positioned on the tympanic membrane in the
external ear AA, not in the middle ear JJ. Ball 1:20–21, Figs. 1, 19a.
Further, in that position, Ball’s transducer directly vibrates the tympanic
membrane, not the bones of the inner ear. Ball 16:36–40.
Appellant argues that the Examiner’s proposed combination of Ball
and Abel is deficient because “[t]here is no teaching in either reference
which would guide on[e] of skill in the art to combine the various elements
of these two references in the manner suggested by the Office.” Appeal Br.
7. In particular, Appellant asserts that “Abel does not teach or suggest that
there would be problems with magnetic induction in systems wherein the
actuator can be placed on the tympanic membrane and the pickup coil
positioned in the ear canal close to the transmit coil, such as illustrated in
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Figure 19a of Ball.” Id. at 6 (emphasis omitted). For the reasons that
follow, this line of argument is unpersuasive.
Appellant appears to insist on an explicit teaching, suggestion, or
motivation in the cited references to establish obviousness, but such a
requirement has been foreclosed by the Supreme Court. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007) (stating that a rigid insistence on
teaching, suggestion, or motivation is incompatible with the Court’s
precedent concerning obviousness). The Court noted that an obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for [an examiner] can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” Id. at 418. Instead, the relevant inquiry is whether the Examiner
has set forth “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. Here, as
discussed above, the Examiner reasons that one of ordinary skill in the art
would have modified Ball’s system to use light, rather than magnetic
induction, to transmit sound signals to the output transducer because light
transmission has known advantages over magnetic induction. See Final Act.
6 (explaining that light transmission does not have problems with high
power consumption, signal variations, and background noise that are known
to affect magnetic induction (citing Abel 2–3)). Appellant does directly
address the Examiner’s reasoning and consequently has not identified error.
Appellant argues that Abel is “directed to transmitting signals through
opaque tissue such as the tympanic membrane (with chicken skin as a test
tissue), minimizing the need for invasive devices traversing the tympanic
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membrane and/or adjacent tissue to access the middle ear transducer.”
Appeal Br. 7 (citing Abel, Figs. 1–2). Appellant elaborates that, “[i]n Ball,
there is no similar problem to transmit signal across opaque tissue as the Ball
device embodiments shown by Figs. 18–21b are entirely placed in the ear
canal laterally of the tympanic membrane.” Id. (boldface omitted). The
Examiner responds, “Abel’s teaching of light transmission as an
improvement over magnetic induction would apply whether the transducer is
located on the tympanic membrane or in the middle ear.” Ans. 4. Appellant
does not persuasively refute the Examiner’s position. Even assuming,
arguendo, that Abel’s teaching regarding problems with magnetic induction
transmission refers to transmission to a transducer through opaque tissue,
such as the tympanic membrane (see Appeal Br. 7), Appellant does not
contest the Examiner’s additional reasoning that improvements associated
with using light transmission over magnetic induction would also apply to
Ball’s system (see Ans. 3).
Further, the prior art need not teach the particular problem that
Appellant alleges the instant claims solve in order to render those claims
obvious. Instead, “any need or problem known in the field of endeavor at
the time of invention and addressed by the [claims] can provide a reason for
combining the elements in the manner claimed.” KSR, 550 U.S. at 420; see
also In re Kahn, 441 F.3d at 987–88 (establishing that the reason to modify
the reference may often prompt a person of ordinary skill in the art to do
what the inventor has done, but for a different purpose or to solve a different
problem. It is not necessary that the prior art suggests the combination to
achieve the same advantage or result discovered by an applicant).
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Appellant also argues that the Examiner’s proposed combination of
Ball and Abel relies on impermissible hindsight. Appeal Br. 7. This
argument is unpersuasive because Appellant does not identify, nor do we
discern, any knowledge relied upon by the Examiner that was gleaned only
from Appellant’s disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from [Appellant’s] disclosure, such a reconstruction
is proper.”).
Moreover, Appellant has not provided any factual evidence or
persuasive technical reasoning to explain why modifying Ball’s system to
use light to transmit sound signals to transducer 100 on tympanic member
CC, would yield anything other than a predictable result, or that doing so in
an operable manner would be beyond the level of ordinary skill in the art.
The Examiner’s proposed modification of Ball does not amount to more than
the simple substitution of one known signal transmission type (i.e., Ball’s
magnetic induction-based) for another (i.e., Abel’s light-based) or the mere
application of a known technique to a piece of prior art ready for the
improvement. See KSR, 550 U.S. at 417.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s conclusion that the subject matter of claim 8 would have been
obvious. Accordingly, we sustain the rejection of claim 8, and its dependent
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claim 10, for which Appellant does not present separate arguments (see
Appeal Br. 6–9), as unpatentable over Ball and Abel.
Rejection II – Obviousness Based on Ball, Abel,
and Van Antwerp
In contesting this rejection, Appellant relies on the same arguments
we found unpersuasive in connection with claim 8, from which claim 9
depends. See Appeal Br. 9 (relying on the alleged deficiencies in the
combination of Ball and Abel, and asserting that Van Antwerp fails to
remedy such deficiencies). Accordingly, for the same reasons discussed
above with respect to Rejection I, we also sustain the rejection of claim 9 as
unpatentable over Ball, Abel, and Van Antwerp.
Rejection III – Obviousness Based on Ball, Abel, and Glendon
In contesting this rejection, Appellant presents arguments for
independent claim 1 (Appeal Br. 9–10) and relies on the same arguments for
dependent claims 4–7 (see id. at 10). We select claim 1 as representative,
and claims 4–7 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner’s rejection of claim 1 relies, in part, on a combination
of Ball and Abel substantially similar to that discussed above in the rejection
of claim 8. See Final Act. 7–9 (concluding that it would have been obvious
to modify Ball to use a light source, instead of magnetic induction, to
transmit sound signals to an output transducer, and reasoning that the
modification would overcome known problems with magnetic induction).
The Examiner also finds that “Abel discloses a light source for transmitting
the sound signal[,] but is silent as to an elongate light transmission
component with a light source on a distal end thereof.” Id. at 9. However,
the Examiner finds that Glendon teaches “an electronic or optical signal,
originating from a microphone outside the ear canal, may be transmitted to a
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location near the eardrum with the use of an electrical wire (col. 13, lines
28–43).” Id. The Examiner determines that it would have been obvious
to configure the light transmission component of Ball in view of
Abel as an elongate light transmission component with internal
wires and the light source at the distal end thereof since Ball
teaches the sound signal transmission component can be routed
from behind the ear and over the pinna into the ear canal to a
transmission source and Glendon discloses optical signals can be
coupled to a location near the eardrum from outside the ear canal
using electrical wire.
Id.
Appellant initially relies on the same arguments presented in
contesting the rejection of claim 8. See Appeal Br. 9. For the same reasons
discussed above, we are not persuaded by these arguments.
Appellant also argues that Glendon “describes the transmission of
sound via an electronic or optical signal to ‘a location near the eardrum
where the electronic or optical signal is converted to sound pressure waves’
(col. 13, lns. 31–33), thus teaching away from Appellant’s claimed
invention.” Appeal Br. 9. According to Appellant, Glendon’s system
“creates the impression of sound through the generation of sound pressure
waves, whereas Appellant’s claimed invention creates the impression of
sound through the mechanical vibration of the tympanic membrane.” Id. at
9–10. We are not persuaded by this argument.
A reference teaches away from a claimed invention or a proposed
modification if “a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (quoting In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Prior art does not teach away
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from claimed subject matter merely by disclosing a different solution to a
similar problem unless the prior art also criticizes, discredits, or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Here, Appellant does not identify a disclosure in Glendon
criticizing, discrediting, or otherwise discouraging the combination of
teachings proposed by the Examiner in the rejection. That Glendon creates
the impression of sound by generating sound pressure waves rather than
mechanical vibration of the tympanic membrane (see Appeal Br. 9–10) does
not constitute a teaching away from the Examiner’s proposal to modify the
combination of Ball and Able to use an elongate light transmission
component.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s conclusion that the subject matter of claim 1 would have been
obvious. Accordingly, we sustain the rejection of claim 1, and claims 4–7
fall as unpatentable over Ball, Abel, and Glendon.

Rejections IV and V – Obviousness Based on Ball, Abel,
Glendon, and one or more of Van Antwerp and Hamanaka
In contesting these rejections, Appellant relies on the same arguments
we found unpersuasive in connection with claim 1, from which claims 2 and
3 depend. See Appeal Br. 10 (relying on the alleged deficiencies in the
combination of Ball, Abel, and Glendon, and asserting that each of Van
Antwerp and Hamanaka fails to remedy such deficiencies). Accordingly, for
the same reasons discussed above with respect to Rejection III, we also
sustain the rejection of claim 2 as unpatentable over Ball, Abel, Glendon,
and Van Antwerp, and claim 3 as unpatentable over Ball, Abel, Glendon,
Van Antwerp, and Hamanaka.
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CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8, 10 103(a) Ball, Abel 8, 10
9 103(a) Ball, Abel, Van
Antwerp
9
1, 4–7 103(a) Ball, Abel,
Glendon
1, 4–7
2 103(a) Ball, Abel,
Glendon, Van
Antwerp
2 `
3 103(a) Ball, Abel,
Glendon, Van
Antwerp,
Hamanaka
3
Overall
Outcome
1–10
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