Ex Parte Banna et al

Patent Trial and Appeal Board

Nov 16, 2017

13037453 (P.T.A.B. Nov. 16, 2017)

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.
13/037,453 03/01/2011 Rami Banna 3065.0224C 6911
110239 7590 11/20/2017
Edell Shapiro & Finnan LLC
9801 Washingtonian Blvd., Suite 750
Gaithersburg, MD 20878
EXAMINER
EVANISKO, GEORGE ROBERT
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
11/20/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMI BANNA and ANDREW BOTROS
Appeal 2017-000944
Application 13/037,4531
Technology Center 3700
Before ERIC B. GRIMES, DEBORAH KATZ, and
ELIZABETH A. LaVIER, Administrative Patent Judges.
LaVIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner’s rejections of claims 14—20, 22, 24—27, 29, 31, 32, 40, and 41.
We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth
below, we REVERSE.
BACKGROUND
The Specification generally relates to “systems and methods for
processing electrophysiological signals,” including a system for monitoring
a cochlear implant. Spec. 9, 22. Claim 14 is illustrative:
1 Appellants state the real party in interest is Cochlear Limited. Appeal Br. 2.
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Application 13/037,453
14. A device for use in a system for processing
electrophysiological signals, the device comprising:
an input configured to receive, from a remote device, an
electrophysiological signal request specifying at least one
electrode from which to receive an electrophysiological signal;
a first output configured to transmit to an implanted component
of a hearing prosthesis instructions for applying a plurality of
stimuli via the specified at least one electrode;
a recording module including one or more amplifiers, wherein
the recording module is configured to record an
electrophysiological signal component resulting from each
stimulus in the plurality of stimuli applied by the stimulation
device;
distortion detection circuitry configured to determine that one
or more of the recorded electrophysiological signal components
have been distorted as a result of saturation of one of the one or
more amplifiers in the recording module,
logic configured to eliminate the one or more recorded
electrophysiological signal components determined to have
been distorted as a result of saturation of one of the one or
more amplifiers in the recording module such that only a
plurality of non-distorted recorded electrophysiological signal
components remain;
a combiner configured to combine only the plurality of the non-
distorted recorded electrophysiological signal components to
produce the electrophysiological signal; and
a second output configured to transmit, to the remote device,
the electrophysiological signal that includes only the non-
distorted recorded electrophysiological signal components.
Appeal Br. 21 (Claims Appendix) (emphases added).
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Application 13/037,453
APPEALED REJECTIONS
1. Claims 14—20, 22, 24—27, 29, 31, 32, 40, and 41 stand rejected
under 35 U.S.C. § 112(a) as failing to comply with the written
description requirement. Final Action 3.
2. Claims 14—20, 22, 24—27, 29, 31, 32, 40, and 41 stand rejected
under 35 U.S.C. § 112(a) as not enabled. Final Action 4.
3. Claims 14—20, 22, 24—27, 29, 31, 32, 40, and 41 stand rejected
under 35 U.S.C. § 112(b) as indefinite. Final Action 5.
DISCUSSION
A. Rejection 1
The Examiner finds that the application, as originally filed, does not
support the above-italicized portions of claim 142 for two reasons. First, the
Specification does not disclose “two separate elements, logic and distortion
detection circuitry, to perform the functions of the detection and removal of
the distortion.” Final Action 3 (discussing Spec. Tflf 65, 88). Second, the
Specification “had the system and method reapply the stimulus and re-record
the electrophysiological signal to combine the re-recorded signal to remove
the distortion due to the saturation of the amplifier” (id. at 3—4), rather than
using “logic configured to eliminate the one or more . . . signal components
determined to have been distorted ...” as claimed (id. at 3 (quoting claim
14)).
We agree with Appellants that the Specification is not so limited. See
generally Appeal Br. 8—11. Specifically, paragraph 69 discloses:
2 Or similar language in independent claim 26.
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Application 13/037,453
the distortion detection circuitry 508 can be included in the
processor 502, such that the processor can use the distortion
detection circuitry 508 to detect any distortion of the
electrophysiological signal components before they are
transmitted. In this manner, only the usable (non-distorted)
electrophysiological signals are transmitted.
Spec. 1 69; see also Appeal Br. 8—10. As Appellants note, “a device that has
ability to identity distorted electrophysiological signal components and
transmit only non-distorted components (as described in Appellant’s
specification) inherently has the ability to ‘eliminate the one or
more . . . signal components determined to have been distorted.’” Appeal
Br. 10. Further support can be found from the context in which paragraph
69 appears. Paragraph 69 sets itself up “[i]n contrast” to the prior art
monitoring systems of the prior art discussed in paragraph 68, in which
distorted signal components may be “needlessly transmitted” and for which
re-recording may be necessary. Accordingly, paragraph 69, especially when
viewed in context, is sufficient to show possession of the claimed “distortion
detection circuitry” and “logic configured to eliminate” the distortion.3
The Examiner’s response that paragraph 69 fails to “go into exactly
how the signals are eliminated” (Ans. 3) imposes an improperly high
3 Paragraph 69 also indicates, either expressly or implicitly, that detecting and
eliminating the distortion is the province of the processor, and specialized
circuitry therein. See also Spec. 1 88. Claim 14 does not demand any specific
degree of separation between the distortion detection circuitry and the logic
for eliminating the distortions. For example, a device could include the
distortion elimination logic as a subpart of the distortion detection circuitry,
and still fall within the scope of claim 14, under its broadest reasonable
construction. In any case, the Specification also contemplates embodiments
in which “some or all of the circuitry can be implemented on separate
integrated circuits.” Spec. 1 64.
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Application 13/037,453
standard, and blurs the distinction between written description and
enablement. To satisfy the written description requirement, the specification
must demonstrate possession, and need not “recite the claimed invention in
haec verba.” AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1352
(Fed. Cir. 2010) (enbanc).
Accordingly, we reverse Rejection 1.
B. Rejection 2
The Examiner finds that the claims are not enabled, because the
Specification does not describe how to practice the invention “without
reapplying the stimulus and re-recording the electrophysiological signal, and
combine the newly recorded electrophysiological signal, in order to
eliminate the distorted component, which is/are critical or essential to the
practice of the invention but not included in the claim(s).” Final Action 4.
As discussed above, paragraph 69 of the Specification, particularly
when read in context, teaches avoiding re-recording when solving for
distortion. Paragraph 65 offers further detail:
However, instead of simply transmitting the
electrophysiological signal components to the remote device
504, the processor 502 can additionally use the distortion
detection circuitry 508 to determine whether any of the
electrophysiological signal components is distorted, and can use
the combining circuitry 510 to combine the multiple
electrophysiological signal components into a single
electrophysiological signal. The processor 502 can then
transmit to the remote device 504 only the single
electrophysiological signal (instead of the multiple
electrophysiological signals).
Spec. 1 65. To be sure, paragraph 65 does not expressly state that the
distortion detection circuitry only sends the non-distorted signals to the
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combining circuitry, or if the distorted signals are removed in some other
manner. Nor does paragraph 65 expressly state that this method can be used
specifically for distortion caused by amplifier saturation. But this level of
detail is not required for enablement, which “is satisfied when one skilled in
the art, after reading the specification, could practice the claimed invention
without undue experimentation.” AK Steel Corp. v. Sollac & Ugine, 344
F.3d 1234, 1244 (Fed. Cir. 2003) (citing In re Wands, 858 F.2d 731, 736-37
(Fed. Cir. 1988)). The Examiner makes no such finding that undue
experimentation would be required here.
We reverse Rejection 2.
C. Rejection 3
This rejection, like Rejection 2, relies on an erroneous finding that the
Specification teaches only re-application of the stimulus and re-recording the
signal. See Final Action 5. Accordingly, the Examiner’s finding that the
claims are “incomplete for omitting essential elements” cannot be sustained.
We reverse Rejection 3.
CONCLUSION
We reverse the rejections of claims 14—20, 22, 24—27, 29, 31, 32, 40,
and 41.
REVERSED
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