Ex Parte Ball et al

Patent Trial and Appeal Board

Jun 9, 2016

13462931 (P.T.A.B. Jun. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/462,931 05/03/2012
2101 7590 06/13/2016
Sunstein Kann Murphy & Timbers LLP
125 SUMMER STREET
BOSTON, MA 02110-1618
FIRST NAMED INVENTOR
Geoffrey R. BALL
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3435/187 2213
EXAMINER
LEVICKY, WILLIAM J
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
06/13/2016 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):
usptomail@sunsteinlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFFREY R. BALL, PETER LAMP ACHER,
BERNHARD JAMNIG, MARTIN ZIMMERLING,
GUNTHER WEIDENHOLZER, MARKUS NAGL, and
WOLFGANG AMRHEIN
Appeal2014-003059
Application 13/462,931
Technology Center 3700
Before JAMES P. CALVE, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
5. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a magnetic attachment arrangement for an
implantable device. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
Appeal2014-003059
Application 13/462,931
1. An implantable device comprising:
an implant housing containing a portion of an
implantable electronic system; and
an implant magnet arrangement within the housing
having adjacent magnetic sections lying substantially in a
common plane including:
i. an inner center disc having an inner magnetic
orientation in an inner magnetic direction, and
ii. an outer radial ring having an outer magnetic
orientation in an outer magnetic direction opposite to the
inner magnetic direction.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Baermann
Teissl
Zimmerling
Rule
us 4,549 ,532
us 6,348,070
US 2006/0244560 Al
US 2008/0123866 Al
REJECTIONS
Oct. 29, 1985
Feb. 19,2002
Nov. 2, 2006
May 29, 2008
(I) Claims 1 and 3 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Teissl and Baermann.
(II) Claims 1-3 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Zimmerling and Baermann.
(III) Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable
over T eissl, Baermann, and Zimmerling.
(IV) Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Teissl, Baermann, and Rule.
(V) Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Teissl and Baermann.
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Application 13/462,931
(VI) Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Zimmerling, Baermann, and Rule.
(VII) Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Zimmerling and Baermann.
OPINION
Rejection (I)
The Examiner relies on Teissl to teach most of the features recited in
claim 1, but relies on Baermann to teach "i. an inner center disc having an
inner magnetic orientation in an inner magnetic direction, and ii. an outer
radial ring having an outer magnetic orientation in an outer magnetic
direction opposite to the inner magnetic direction" (hereinafter "features (i)
and (ii)"). Final Act. 4--5. The Examiner reasons that it would have been
obvious to modify the system in Teissl to include features (i) and (ii) "since
such a modification would provide the predictable results of increased blood
flow and therefore accelerate healing of the implantation site." Final Act. 5.
Appellants argue, "neither Baermann nor any other reference suggests
that the unusual magnetic therapy sheet that Baermann describes could
suitably be used in a hearing implant system as in the present claims."
Appeal Br. 8. We do not find Appellants' arguments on this point
persuasive. Baermann explicitly teaches that its arrangement of magnetic
polarities provides a therapeutic effect on blood flow. See Baermann, col. 2,
11. 16-23. Appellants do not provide any persuasive evidence that this
benefit would not occur in the Examiner's proposed modification to Teissl
or that such a modification would have been beyond one of ordinary skill in
the art. Accordingly, the Examiner's rationale for modifying Teissl is
supported by rational underpinning. KSR Int 'l. Co. v. Teleflex, Inc., 550
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Application 13/462,931
U.S. 398, 416 (2007) ("If a person of ordinary skill in the art can implement
a predictable variation, and would see the benefit of doing so, § 103 likely
bars its patentability.").
Appellants next argue that "[n]either Baermann nor Teissl offer any
discussion suggesting that an implantable magnet modified as proposed by
the Examiner would provide a strong enough magnetic force to properly
hold the external device in place so as to operate as required." Appeal Br. 8;
see also Reply Br. 2-3.
In reply, the Examiner states, "Baermann does not disclose that the
magnetic field strength is weak; therefore it appears that this comment is
based on Applicant's opinion." Ans. 3. We agree with the Examiner on this
point. Appellants provide no persuasive objective evidence that the
arrangement provided by Baermann would weaken the arrangement in
Teissl. Furthermore, the Examiner's proposed modification does not bodily
incorporate the entire structure of the magnet (including the magnetic field
weakness alleged by Appellants to exist) from Baermann; the modification
provides the inner disc and outer ring magnetic orientation disclosed in
Baermann to the magnet of Teissl. See Final Act. 4--5.
Appellants next contend that a person of ordinary skill in the art
would not "consider implementing an implantable magnet arrangement that
as described by Baermann promotes heating of the adjacent tissues over the
years-long lifetime of the implant system without some knowledge of the
risks involved with prolonged continuous heating of ear tissues in a hearing
impaired patient," and neither Teissl nor Baermann provides such
knowledge. Appeal Br. 8. Further, Appellants contend that "in the United
States, FDA approval is required for implantable medical devices, which
process entails explaining all the risks of the proposed device)." Reply Br.
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Application 13/462,931
3. The Examiner finds that Baermann "does not disclose removal of the
device after the therapeutic benefits have been received." Ans. 4.
We do not agree with Appellants' arguments on this issue because
Appellants do not provide any persuasive evidence that the therapeutic
configuration provided by Baermann would pose any risk to a patient or that
a person of ordinary skill in the art would believe that such a risk exists.
Further, the Examiner finds that Baermann does not disclose that its device
must be removed (Ans. 4), and Appellants do not persuasively address this
finding (see Reply Br. discussing the heating effect provided by Baermann's
device). Having considered all of Appellants' arguments against Rejection
(I), we are not apprised of Examiner error, and we sustain the Examiner's
rejection of claim 1 as unpatentable over Teissl and Baermann. Appellants
do not make separate arguments for the patentability of dependent claim 3
(see Appeal Br. 7-8), and claim 3 thus falls with claim 1.
Rejection (II)
As in the rejection of claim l over Teissl and Baermann, the Examiner
relies on Baermann for features (i) and (ii). Final Act. 6-7.
Appellants argue, " [ t] he Examiner proposes that the Zimmerman (sic)
magnet arrangement be modified as taught by Baermann without regard to
their existing structural functionality for the entirely different purpose of
obtaining a therapeutic benefit: 'increased blood flow and therefore
accelerate healing of the implantation site."' Appeal Br. 6. Appellants refer
to the heading for MPEP § 2143.0l(VI) "THE PROPOSED
MODIFICATION CANNOT CHANGE THE PRINCIPLE OF
OPERATION OF A REFERENCE" and then argue that there is no
suggestion the magnetic field strength of the rubbery sheet in Baermann
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Application 13/462,931
would be strong enough to perform the holding function required by
Zimmerling. Appeal Br. 6; see also Reply Br. 1-2.
We find the Examiner's rationale for modifying Zimmerling (Final
Act. 5), which is the same rationale the Examiner provides for modifying
Teissl (Final Act. 7), to be adequate, as discussed above with respect to
Rejection (I).
Regarding Appellants' arguments as to the strength of the magnetic
field, as was the case with Appellants' arguments against Rejection (I),
Appellants provide no persuasive objective evidence that the arrangement
provided by Baermann would weaken the arrangement in Zimmerling. In
any event, the Examiner's proposed modification does not bodily
incorporate the entire structure of the magnet (including the magnetic field
weakness alleged by Appellants to exist) from Baermann, rather, the
Examiner's modification provides the inner disc and outer ring magnetic
orientation disclosed in Baermann to the magnet of Zimmerling. See Final
Act. 4--5. Further, modifying Zimmerling with the above-noted disc and
ring arrangement taught by Baermann to provide a therapeutic effect does
not change the principle of operation of Zimmerling, it merely adds an
additional benefit.
Appellants make similar arguments to those discussed above in the
discussion of Rejection (I) regarding the potential risk of heating tissue.
Appeal Br. 7. We addressed these arguments above and remain
unpersuaded.
Appellants further argue that a person of ordinary skill in the art
"could not be sure that Baermann's magnetic therapy theories extend to the
special case as in Zimmerling where there is another magnet implanted
under the skin." Reply Br. 3. However, Baermann discloses that its
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Application 13/462,931
arrangement provides a therapeutic benefit (Baermann, Abstract), and
Appellants provide no persuasive reason or argument as to why this benefit
would not occur in the Examiner's proposed modification. "Obviousness
does not require absolute predictability of success." In re 0 'Farrell, 853
F.3d 894, 903 (Fed. Cir. 1988).
Rejections (III-VII)
Appellants do not make separate arguments against any of Rejections
(III-VII). Accordingly, for the same reasons discussed above with respect to
Rejections (I and III), we affirm Rejections (III-VII).
DECISION
(I) The rejection of claims 1 and 3 as unpatentable over Teissl and
Baermann is affirmed.
(II) The rejection of claims 1-3 as unpatentable over Zimmerling
and Baermann is affirmed.
(III) The rejection of claims 2 as unpatentable over Teissl,
Baermann, and Zimmerling is affirmed.
(IV) The rejection of claims 4 and 5 as unpatentable over Teissl,
Baermann, and Rule is affirmed.
(V) The rejection of claims 4 and 5 as unpatentable over Teissl and
Baermann is affirmed.
(VI) The rejection of claims 4 and 5 as unpatentable over
Zimmerling, Baermann, and Rule is affirmed.
(VII) The rejection of claims 4 and 5 as unpatentable over
Zimmerling and Baermann is affirmed.
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Application 13/462,931
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)(l )(iv).
AFFIRMED
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