Ex Parte Björn et al

Patent Trials and Appeals Board

May 20, 2019

13451171 - (D) (P.T.A.B. May. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/451,171
111614 7590
Pilloff & Passino LLP
1940 Duke Street
Suite 200
04/19/2012
05/22/2019
Alexandria, VA 22314
FIRST NAMED INVENTOR
Goran Bjorn
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.
5441-324 2369
EXAMINER
MATTHEWS, CHRISTINE HOPKINS
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
05/22/2019 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):
mcosenza@pilloffpassino.com
mail@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 GORAN BJORN, MARCUS ANDERSSON, and
STEFAN MAGNANDER
Appeal2017-001856
Application 13/451,171 1
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM V. SAINDON, and
BRANDON J. WARNER, Administrative Patent Judges.
SAINDON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Office
Action dated April 29, 2015 ("Final Act."), rejecting claims 1, 3, 4, 6-13,
15, 16, 20-24, and 26-33, which constitute all the pending claims in this
application. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION.
1 In this Decision we make reference to the Appeal Brief received February
8, 2016 ("App. Br."), the Examiner's Answer dated September 14, 2016
("Ans."), and the Reply Brief received November 14, 2016 ("Reply Br.").
According to Appellants, the real party in interest is Cochlear Limited, the
assignee of this application. App. Br. 2.
Appeal2017-001856
Application 13/451,171
I. CLAIMED SUBJECT MATTER
The claims are directed to a hearing prosthesis, comprising a
transcutaneous bone conduction device, wherein an external vibrator
generates vibrations that are transmitted through the skull bone to the
cochlea to aid auditory perception. Spec. ,-J,-J 6-8, 21. Claims 1, 15, and 21
are independent, and reproduced below:
1. An implantable component of a hearing prosthesis,
compnsmg:
an implantable bone fixture; and
one or more magnets disposed in an implantable housing coupled
to the bone fixture via a bridge extending from the housing to
the bone fixture between the housing and bone fixture,
wherein the one or more magnets are configured to
magnetically couple to an external component of the
prosthesis.
15. An implantable component of a hearing prosthesis,
compnsmg:
an implantable bone fixture; and
an implantable magnetic assembly removably attached to the
implantable bone fixture and including at least one magnet
coupled to and laterally offset from a longitudinal axis of the
bone fixture, wherein all boundaries of the at least one magnet
are located within an angle about a longitudinal axis of the
bone fixture that is less than 360 degrees, and wherein the at
least one magnet is configured to magnetically couple to an
external component of the prosthesis, wherein the
implantable component of the hearing prosthesis is
configured such that the implantable magnetic assembly is
both attachable and removable from the implantable bone
fixture while the implantable bone fixture is osseointegrated
to a skull bone of a recipient of the implantable component.
21. An implantable component of a hearing prosthesis,
compnsmg:
at least one magnet; and
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Application 13/451,171
an implantable bone fixture, wherein
the at least one magnet is disposed in an implantable housing,
and
the housing is flexibly coupled to the bone fixture.
App. Br. 56-58 (Claims Appendix).
II. REJECTIONS
Claims 1-3,2 6-11, 21, 22, 26-28, 31, and 33 are rejected underpre-
AIA 35 U.S.C. § 102(a) as anticipated by Ball (US 2012/0029267 Al, pub.
Feb. 2, 2012);
Claim 4 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ball;
Claim 12 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ball in view of Parker (US 2009/0247811 Al, pub. Oct. 1,
2009);
Claims 13 and 29 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Ball in view ofBerrang (US 6,648,914 B2, iss. Nov.
18, 2003);
Claims 15, 16, 18-20,3 and 32 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Ball in view of Westerkull (US
2007/0053536 Al, pub. Mar. 8, 2007) as evidenced by Asnes (US
2010/0209873 Al, pub. Aug. 19, 2010);
2 Claim 2 was canceled by Appellants on January 15, 2015; its inclusion
here appears to be a typographical error.
3 Claims 18 and 19 were canceled by Appellants on August 31, 2015; their
inclusion here appears to be a typographical error.
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Claim 23 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ball in view of Parker (US 2009/0245554 Al, pub. Oct. 1,
2009) ("Parker II"); and
Claims 24 and 30 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Ball in view of Westerkull (US 7,160,244 B2, pub.
Jan. 9, 2007) ("Westerkull II").
III. ANALYSIS
A. Obviousness in View of Ball and Westerkull as Evidence by Asnes
(Claims 15, 16, 20, and 32)
l. Independent Claim 15
In relevant part, independent claim 15 recites an implantable
component of a hearing prosthesis having bone fixture osseointegrated to the
skull and a magnetic assembly removably attached to the bone fixture. App.
Br. 57-58 (Claims App.). Appellants do not contest that Ball and
Westerkull teach each element of claim 15 but, rather, focus on the rationale
for combining teachings. See App. Br. 25-28; Reply Br. 31-34. We agree
with and adopt as our own the Examiner's findings as to how the
implantable components of a hearing prosthesis of Ball and W esterkull teach
each element of claim 15. See Ans. 8-9. At a high level, the Examiner finds
that Ball teaches a bone fixture attached to the skull that has a magnetic
assembly. Id. ( citing, e.g., Ball ,-J 15). The Examiner finds that Ball does not
teach that the bone fixture is osseointegrated or that the magnetic assembly
is removable. Ans. 9. For those elements, the Examiner turns to Westerkull.
Id.
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W esterkull, like Ball, teaches a bone fixture attached to the skull that
has a magnetic assembly. See, e.g., Westerkull ,-J 6. Westerkull, however,
teaches to make the magnetic portion removable and separable from the
fixation portion by using a specific type of screw anchor, such that it is
possible to replace or remove the magnetic portion without having to remove
the portion fixed to the skull. Id. ,-i 16. This provides the benefit of making
it easy to replace the magnet. Ans. 11. Further, the screw-in anchor
borrowed from Westerkull is made of titanium (W esterkull ,-J 16), which the
Examiner finds is known to osseointegrate (Ans. 9 ( citing Asnes ,-J 19) ).
We find that the Examiner has set forth sufficient reasoning with
rational underpinnings in support of the proposed combination of Ball and
Westerkull. Specifically, using the Westerkull anchoring system allows the
magnetic portion of Ball to be swapped out without having to re-tap or re-
use holes in a person's skull. See Ans. 13. As shown in Figure 2 of
Westerkull, for example, implanted magnetic unit 630 screws into fixation
portion 626, instead of directly into the skull. Westerkull ,-J 32, Fig. 2.
Because the fixation portion is a titanium screw, it will osseointegrate, as
known in the art. Id. ,-i 16; see also Asnes ,-J 19. In combination, therefore,
instead of screws 215 of Ball going directly into the skull, they would go
into titanium fixation portions as in W esterkull. This is a straightforward
application of W esterkull' s removability feature to Ball's implantable
component.
We have reviewed Appellants' arguments (App. Br. 25-28; Reply Br.
31-34) but they do not apprise us of error in the Examiner's rejection of
claim 15. As we explained above, the Examiner has provided a sufficient
rationale explaining why it would have been obvious to a skilled artisan for
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Ball to have a removable magnetic portion, namely, in order to allow it to be
replaced without having to re-do the screws in the patient's skull.
Appellants argue that the Examiner has not addressed why it would
have been obvious to use titanium specifically. See, e.g., Reply Br. 26
("There is no sufficient rationale articulated to support the removable feature
of claim 15 with respect to something that is osseointegrated") ( emphasis
removed). The Examiner's rejection takes care of that limitation by way of
using W esterkull' s fixation portions, which already are made from titanium.
Thus, by using W esterkull' s titanium fixation portions in Ball, one of
ordinary skill gets both the removability feature alongside the
osseointegration feature. There is no separate need to modify Westerkull's
titanium fixation portions to make them titanium; thus, there is no need to
separately specify why it would have been obvious to one of ordinary skill in
the art to use titanium fixation portions. Further, because Ball does not
specify what material its screws are made of, there is no particular need to
address why one would change Ball's screw material. Also, on this record,
we do not find any reason to believe there is anything particularly interesting
about using titanium as a material in this art-we see no technical issue of
how to use titanium in Ball.
Appellants also argue that it is incongruous to incorporate
Westerkull's fixation portions because, on one hand, they provide
removability and, on the other hand, they provide non-removability (i.e.,
osseointegration). See, e.g., Reply Br. 26 ("If there is some desirability to
have the device of Ball removable, just get rid of the feature that frustrates
the ability of removal - the osseointegrating component") ( emphasis
removed). We do not find the combination incongruous as Appellants
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suggest, because the removability and non-removability are directed to
separate components and features. First, there is the removability of the
magnets from the fixtures. Second, there is the removability of the fixtures
from the skull. Separating the way the magnets are held to the skull into this
two-prong approach is what allows the magnets to "be replaced or removed
in a quite simple surgical procedure without removing the fixation portion
that is anchored in the skull bone." W esterkull ,-J 16. Thus, the Examiner's
combination allows the removable part of the assembly to be easily
removed, while allowing the fixed portion to remain fixed.
Having reviewed the Examiner's rejection of claim 15, Appellants do
not apprise us of error.
2. Dependent Claim 16
Claim 16 depends from claim 15 and recites that "the angle about the
longitudinal axis is less than 90 degrees." App. Br. 58 (Claims App.). The
"angle" referenced is the angle defined by the boundaries of the magnets
around the longitudinal axis of the bone fixture. Figure 4A of Appellants'
drawings illustrates the angle as item 402 defined by the boundaries of
housing 3 5 3A relative to longitudinal axis 401.
The Examiner takes the position that the angle between the
longitudinal axis and the magnets is approximately 90 degrees in Ball, as
shown in Ball Figure 2. Ans. 10, 14. Appellants argue that the Examiner
has misconstrued the claim, reading it as if it said the angle between the
longitudinal axis and the magnets. App. Br. 34-35. We agree with
Appellants that the Examiner misconstrued the claim. It is not possible to
ascertain the claimed angle from Figure 2 of Ball because it is a side view,
perpendicular to the longitudinal axis. Given that the Examiner
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misconstrued the claim, we are apprised of error in the Examiner's rejection
of claim 16.
However, looking to Figure 4 of Ball, we find that the claimed angle
is disclosed. If one were to take the angle formed about the longitudinal axis
in the lowermost flange 401 with respect to the boundaries of attachment
magnet 202 (i.e., tangent lines to 202 drawn from origin 401), the angle
would be substantially less than 90 degrees. We recognize that patent
drawings are not necessarily engineering drawings or drawn precisely to
scale, but that which is shown cannot be ignored, and even if Ball's
drawings are not precise, the angle formed will be substantially less than 90
degrees. In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). Because the
Examiner's rejection is sustainable under other facts, we designate a new
ground of rejection for claim 16 obvious in view of Ball and Westerkull, as
evidenced by Asnes.
3. Dependent Claim 20
Appellants do not separately argue claim 20, which falls with claim 15
under 37 C.F.R. § 41.37(c)(l)(iv).
4. Dependent Claim 32
Claim 32 recites that the implantable component of independent claim
15 is "a passive transcutaneous bone conduction device." App. Br. 59
(Claims App.). The Examiner finds that the implantable component of Ball
is passive and points to the fact that the drive coil is located in the external
component as evidence. Ans. 10 ( citing Ball ,-J,-J 16-17, Fig. 2). The cited
portion in Ball explains how the "external signal drive coil 204 provides the
magnetic audio signal to the implant signal transducer 203." Ball ,-J 16
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( emphasis removed); see also id. ,i 17 ( containing similar language). The
Examiner's rejection is supported by a preponderance of the evidence.
Appellants argue that a "transducer" is "a device that receives a signal
in the form of one type of energy and converts it to a signal in another
form." App. Br. 47 (providing a definition from dictionary.com).
Appellants argue that the implanted transducer in Ball "is the antithesis of a
passive transcutaneous bone conduction device." Id. Presumably
Appellants' argument is premised on the identification of the transducer in
Ball, but Appellants do not cogently explain why Ball's implanted
transducer is not passive. Whether some component is a transducer is
irrelevant; the claim says nothing about transducers.
The Specification helps clarify what the claim means by active (versus
passive) components. The active component is the one that includes the
actuator. Spec. ,i 26. A passive component does not. See id. ,i,i 39-40.
This arrangement is similar to that of Ball. More specifically, the external
component in Ball converts electrical energy into an electromagnetic signal
using a drive coil (i.e., an actuator). Ball ,i,i 15, 16, 18. The internal
component reacts to the electromagnetic signal to cause physical vibrations.
Id. ,i 7. Notably, the implantable component in Ball (and in the
Specification) is driven by the external component and has no ability to
create the physical vibrations itself. It is passive.
In summary, we are not apprised of error in the Examiner's rejection
of claim 32.
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B. Anticipation by Ball
(Claims 1, 3, 6-11, 21, 22, 26-28, 31, and 33)
l. Independent Claims 1 and 21
Independent claims 1 and 21 recite an implantable component of a
hearing prosthesis that has an implantable bone fixture and one or more
magnets disposed in a housing and coupled to the fixture with a bridge.
App. Br. 56, 58 (Claims App.). The Examiner finds that Ball discloses an
implantable hearing prosthesis (Ball ,i 7) with a bone fixture (id. ,i,i 8, 19)
and magnets disposed in a housing (id. ,i,i 15-17, 19) that are connected to
the fixture with a bridge (id. ,i,i 15, 16), all of which couple to an external
component (id. ,i 7). Ans. 2-3. The Examiner's Answer states that the
claimed "housing" is satisfied by the disclosure in Ball of a hermetic seal
provided by a biocompatible membrane around the magnets. Id. at 2, 12-13.
The Examiner's rejection of claim 21 is effectively identical. Id. at 5.
The Examiner's finding regarding the membrane was made in
response to Appellants' argument in the Appeal Brief that the Examiner did
not address the "housing" limitation of claim 1. App. Br. 11 (noting the
heading summarizing the argument: "NO HOUSING IS EXPRESSLY OR
INHERENTLY DISCLOSED IN BALL ... "); see also id. at 11-24; Reply
Br. 10 ( arguing that the membrane is not a housing). A "housing" is
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generally understood to be a supportive container. 4,5 Appellants note that a
"housing is something more than a membrane" and it is "a structure that
maintains its shape." Reply Br. 25. A membrane, on the other hand, would
not be a housing because "[ o ]ne would not want the magnet that is implanted
in the recipient to lift off from the bone" or to "deform while implanted in
the recipient every time the external component was removed." Id. For
these reasons, we agree with Appellants that the membrane in Ball is not a
housing.
However, for the same reasons, we find that Ball teaches or suggests a
housing as claimed. Appellants' arguments rightfully imply that it would
not make sense if implanted magnets could move loosely around when
contained in a membrane. Similarly, the conduction of the electromagnetic
signals would be severely limited if the magnets were loosely held by a
membrane. It makes little sense to the skilled artisan to screw a flexible
membrane sack full of magnets to a person's skull-basic technical sense
would say that such a connection is subject to wear and breakage. Accord
4 A technical dictionary definition of "housing" is "[a] protective or
supportive container or covering for a machine or instrument." Academic
Press Dictionary of Science and Technology ( 4th ed.) Oxford, UK: Elsevier
Sci. & Tech. (C. G. Morris, Ed., 1992) (Retrieved from
https://search.credoreference.com/content/entry/apdst/housing/
O?institutionld=743) (last visited May 8, 2019).
5 This general understanding appears commensurate with how the term is
used in the relevant field of endeavor. See, e.g., Berrang 3:32 et seq
( discussing the sensitive components of the implant located within a
"housing"); Parker ,-J 45 ( describing a "housing" containing various sensitive
components); W esterkull (similar); Spec. ,-J,-J 8 ( describing magnets inside a
housing), 39 ( describing various sensitive components in the external
housing).
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Reply Br. 50 ("A membrane would tear or otherwise would not provide the
requisite reinforcement to hold the magnets in place.").
Although Ball does not explicitly state that the implanted component
would have a housing, we find that a person of ordinary skill in the art
would consider Ball's device to have a housing. Indeed, the prior art "need
not teach, and preferably omits, what is well known in the art." Hybritech
Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986)
(citing Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick, 730
F.2d 1452, 1463 (Fed. Cir. 1984)).6 Looking to Figure 4 of Ball, we see a
top plan view of the implantable component. The internal components are
encased in something because we cannot see circular core magnet 213 and
outer ring magnet 214 of attachment magnet 202. Flanges are used to hold
the magnets to the skull-something must be holding the flanges and
magnets in relative position. Similarly, connector member 216 connects and
positions the two magnets-it must be connected to them in a way to
provide meaningful physical support. Although these ideas are not
expressed explicitly in the written potion of Ball, things shown clearly in
drawings cannot be disregarded. Mraz, 455 F.2d at 1072.
We see further evidence in Figure 2 of Ball. Reviewing Figure 2 in
conjunction with the disclosure of Ball, we find an upper, attachment magnet
(202, comprising 209/210), which is "fixable ... to underlying skull bone
6 Thus, the fact that Ball does not expressly discuss a housing is not itself
material. That Ball does discuss a housing for the external component but
not the internal component is noted, but not persuasive because Ball does not
make any statements that indicate the absence of a housing or otherwise
contrast the internal component from the external component in terms of
housings.
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218." Ball iJ 16 (emphasis removed). We also find a lower, signal
transducer magnet (203, comprising 213/214). Id. The attachment magnet
is held a fixed distance from signal transducer magnet 203 by flexible
connector 216, which is held in place by bone screws 215. Id.; id. ,i 19; see
also id., claim 1 ("a connector member flexibly connecting and positioning
the attachment magnet a fixed distance from the signal transducer"). We
also find that Figure 2 of Ball discloses each of the implanted magnet
assemblies (202, 203) housed within a conspicuous box-like shape, to keep it
separate from the skin (205). Each of these findings suggests to a skilled
artisan that something more rigid than a membrane maintains these spatial
arrangements. Further, reviewing the prior art of record, we find that
housings are known to be used to house components in hearing implants.
See, e.g., Parker ,i 57; Berrang, Abstract.
Taking into account all of these things, we find that a person of
ordinary skill in the art 7 would understand that the internal component of
Ball is enclosed within a housing. As discussed supra, something needs to
hold each pair of magnets in place-there would be little purpose for bone
screws 215 and connector 216 if the magnets just floated inside the body
next to them. Rather than only a flexible membrane holding the parts
together ( as urged by Appellants), it makes much more sense that the
membrane encapsulates the housing.
Thus, given Ball's teachings, we find that a person of ordinary skill in
the art would have understood, or at least considered it obvious, that Ball
7 For example, a person familiar with designing implantable hearing devices,
including the engineering principles and medical or biological processes
involved in the design of such devices.
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discloses a housing for the internal magnet. Accordingly, to the extent that
the claim is not anticipated by Ball, a person of ordinary skill in the art
would have considered it obvious to encase the magnets of Ball in a housing
in order to reliably hold them in place. The Examiner originally found
claims 1 and 21 anticipated by Ball without relying on the membrane, but
then changed positions to rely on the membrane. The Examiner's original
position in the Final Office Action was correct. We sustain the Examiner's
rejection, but in an abundance of caution, we enter a new ground of rejection
for claims 1 and 21 as anticipated by, or obvious in view of, Ball, for the
additional explanation and reasons set forth above.
2. Dependent Claims 3, 6-11, 22, and 26-28
Appellants do not argue these claims separately from independent
claims 1 and 21. They fall with claims 1 and 21. 3 7 C.F .R.
§ 41.37(c)(l)(iv). Because these claims depend from a claim for which we
entered a new ground of rejection, however, we sustain the Examiner's
rejection but designate it a new ground of rejection as discussed above.
3. Dependent Claim 31
Claim 31 depends from claim 21 and states that the implantable
device is passive. App. Br. 59 (Claims App.). We have addressed
Appellants' arguments on this topic above in our discussion of claim 32.
For similar reasons, we sustain the Examiner's rejection of claim 31.
Because this claim depends from a claim for which we entered a new ground
of rejection, however, we sustain the rejection but designate it a new ground
of rejection as discussed above.
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4. Dependent Claim 33
Claim 33 depends from claim 21 and states that the implantable
magnetic assembly comprises a monolithic structure and includes at least
one housing and an arm extending between the housing and the fixture.
App. Br. 59 (Claims App.). The Examiner finds that Ball discloses this,
with magnets in the signal transducer 203 a connector member 216. Ans. 6.
We have reviewed Appellants' arguments. App. Br. 30-36; Reply Br.
40-50. Appellants argue that "claim 33 recites a generic feature where all
that is required is that there be a monolithic component that is established by
a housing and an arm." Reply Br. 45. We find Ball to satisfy this
requirement. As the Examiner correctly points out, Ball discloses a signal
transducer 203 and a connector member 216. Ans. 6. For the reasons we
expressed with respect to claims 1 and 21, we find that Ball's signal
transducer 203 is enclosed in a housing. The connector member is the arm
connected to the housing. Accordingly, we sustain the Examiner's rejection
of claim 33. Because this claim depends from a claim for which we entered
a new ground of rejection, however, we sustain the rejection but designate it
a new ground of rejection as discussed above.
C. Obviousness in View of Ball
(Claim 4)
Claim 4 depends from claim 1 and states that the width of the bridge
is substantially larger than the thickness. App. Br. 56 (Claims App.). The
Examiner directs our attention to connector 216 as the bridge, and notes that
the "width" of the bridge is the distance between the items it connects. Ans.
6. The Examiner states that it would have been obvious to have the claimed
proportions because "such a modification would have involved a mere
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change in the size of a component." Id. ( citing In re Rose, 220 F.2d 459
(CCPA 1955)).
Appellants argue that the Examiner has misapplied the holding of In
re Rose (see, e.g., App. Br. 39-40); we agree with Appellants on this point.
In re Rose stands for the premise that merely changing the size of something
is not ordinarily a patentable distinction. But changing the proportions of
something, as the Examiner appears to be doing, is a different matter from
changing the size of something. Thus, the Examiner's rationale is not
supported by rational underpinnings.
In addition, the Examiner points to the wrong "width" in Ball. The
distance between the two lobes would be, in the parlance of the subject
application, the "length" of the bridge. The width would be traverse to the
length. See Spec. ,i,i 46, 60. Under that construction, however, Ball satisfies
the claim without modification. Figure 2 depicts the thickness of the bridge
( connector 216); Figure 4 depicts its width. The width is plainly
substantially greater than the thickness. This has support in the disclosure of
Ball, which states that the bridge "flexibly connects" the two lobes. Ball
,i 16. A person of ordinary skill in the art would recognize that the
flexibility is provided by the thin dimension (i.e., sheet materials are more
flexible to forces applied perpendicular to the plane of the sheet). Under this
claim construction and on these facts, a rejection of claim 4 as obvious in
view of Ball is appropriate. The appealed rejection, however, is not
sustained. We enter a new ground of rejection for claim 4 on the basis set
forth above.
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D. Obviousness in View of Ball and Parker
(Claim 12)
Claim 12 depends from claim 1 and states that a portion of the bridge
is "substantially hand-rigid." App. Br. 57 (Claims App.). The Examiner
finds that Ball is silent as to whether the bridge structure is substantially
hand-rigid, but finds that Parker teaches a sufficiently rigid material. Ans. 7.
The purpose of using a sufficiently rigid material, according to the
Examiner, is to assist in outputting a mechanical force. Id. ( citing Parker
,i 84). Parker explains that the material properties of the vibrating
components can affect the force output. Parker ,i 33. In combination, the
result would be that the upper attaching magnet 202 would be more rigidly
connected to the actuating magnet 203 and associated fixing hardware
(flanges 401/screws 215), allowing more force to be conveyed between the
two. The Examiner clarifies in the Answer that Ball does not explicitly
describe the rigidity of the bridge, but rigidity would be "necessary in Ball in
order to connect the housing and bone fixture." Ans. 15.
Appellants argue that the modification either does nothing or would
not work. App. Br. 41-42. Responding to the Examiner's Answer,
Appellants argues about inherency and Official Notice. Reply Br. 82-84.
Appellants' arguments do not apprise us of error.
The Examiner asserts, and Appellants do not contest, that "hand-
rigid" means rigid but with some flexibility. The Specification makes clear
that the hand-rigid aspect of the bridge may be in a certain plane. Spec.
,i 56. For its part, Ball merely states that the bridge "flexibly connects and
positions the attachment magnet 202 a fixed distance from the signal
transducer 203." Ball ,i 16 ( emphasis removed). As we found above for
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claim 4, the bridge in Ball is substantially wider than it is thick, providing
for more flexibility in one dimension and more rigidity in the other.
Twisting the lobes of the implant relative to each other would be
significantly resisted. Thus, to Appellants' point that "the device of Ball
appears perfectly fine without the modification"-from a materials
standpoint, this is true, and the proposed combination merely is to provide
additional teachings as to the mechanical properties. App. Br. 41. In other
words, the Examiner only provides Parker out of an abundance of caution.
We agree with the Examiner's conclusion that Ball in view of Parker teaches
a device with a hand-rigid bridge and sustain the rejection. Because this
claim depends from a claim for which we entered a new ground of rejection,
however, we sustain the rejection but designate it a new ground of rejection
as discussed above.
E. Obviousness in View of Ball and Berrang
(Claims 13 and 29)
--AND--
Obviousness in View of Ball and Parker II
(Claim 23)
--AND--
Obviousness in View of Ball and Westerkull II
(Claim 24 and 30)
These claims depend from independent claim 1 or 21. Appellants do
not dispute the Examiner's rejections of these claims; we summarily sustain
them. Because these claims depend from a claim for which we entered a
new ground of rejection, however, we sustain the rejections but designate
them new grounds of rejection as discussed above.
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Application 13/451,171
IV. CONCLUSION
Claims 1, 3, 4, 6-13, 15, 16, 20-24, and 26-33 are before us on
appeal. The following is a by-claim summary of our decision:
Rejection Rejection Rejection New Ground
Sustained Not Designated
Sustained
Ball(§ 102(a)) 1, 3, 6-11, 21, 22, - 1, 3, 6-11, 21, 22,
26-28, 31, and 33 26-28, 31, and 33
Ball(§ 103(a)) - 4 4
Ball, Parker 12 - 12
Ball, Berrang 13 and 29 - 13 and 29
Ball, W esterkull 15, 20, and 32 16 16
Ball, Parker II 23 - 23
Ball, W esterkull II 24 and 30 - 24 and 30
In sum, we affirm the Examiner's decision to reject claims 1, 3, 6-13,
15, 20-24, and 26-33; we reverse the Examiner's decision to reject claims 4
and 16; we enter new grounds of rejection for claims 1, 3, 4, 6-13, 16, 21-
24, 26-31, and 33.
V. DECISION
The Examiner's decision to reject claims 1, 3, 4, 6-13, 15, 16, 20-24,
and 26-33 is affirmed as to claims 1, 3, 6-13, 15, 20-24, and 26-33, and is
reversed as to claims 4 and 16. We enter new grounds of rejections for
claims 1, 3, 4, 6-13, 16, 21-24, 26-31, and 33.
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(l) provides
"Appellant[ s] may file a single request for rehearing within two months of
the date of the original decision of the Board." In addition to affirming the
Examiner's rejections of one or more claims, this decision contains a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b).
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Application 13/451,171
Rule 41.50(b) provides that "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review," and that
Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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