Ex Parte Dadd et al

Patent Trial and Appeal Board

Feb 16, 2016

12683424 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/683,424 01/06/2010 Fysh Dadd
106936 7590 02/18/2016
Merchant & Gould Cochlear
P.O. Box 2903
Minneapolis, MN 55402
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.
CID00304USCT1 3106
EXAMINER
FLORY, CHRISTOPHER A
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
02/18/2016 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):
US PTO 106936@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FYSH DADD, CLAUDIU TREABA, and
PETER GIBSON
Appeal2013-005783
Application 12/683,424
Technology Center 3700
Before MICHELLE R. OSINSKI, LISA M. GUIJT, and
JAMES J. MAYBERRY, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Fysh Dadd et al. (Appellants) 1 appeal under 35 U.S.C. § 134 from the
Examiner's final decision rejecting claims 1-27. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Cochlear Limited.
App. Br. 3.
Appeal2013-005783
Application 12/683,424
THE CLAIMED SUBJECT MATTER
Claims 1, 8, and 16 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter on appeal.
1. A hearing prosthesis comprising:
an elongate member, configured to be implanted into a
duct of a recipient's cochlea, having a preformed curved
orientation, proximal and distal ends, electrodes disposed
thereon, and a longitudinally-extending lumen for receiving a
stiffening element; and
a tip member, extending distally from the distal end of the
elongate member, configured to have a substantially uniform
bending stress distribution in an axial direction, and a length
sufficiently short to avoid substantially damaging walls of the
duct when the elongate member is in a fully implanted location
in the cochlea, and sufficiently long to guide the elongate
member through the duct to the fully implanted location as the
elongate member adopts its preformed curved orientation in
response to withdrawal of the stiffening element from the lumen.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Charvin
Kuzma '044
Kuzma '3 02
us 5, 123,422
us 6,119,044
us 6, 125,302
REJECTIONS
June 23, 1992
Sept. 12, 2000
Sept. 26, 2000
I. Claims 1-11 and 16-27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kuzma '044 and Kuzma '302. Final Act. 2-5.
II. Claims 12-15 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Kuzma '044, Kuzma '302, and Charvin. Id. at 6-7.
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Application 12/683,424
OPINION
Rejection I
The Examiner finds, inter alia, that Kuzma '044 discloses a tip
member (i.e., "tip portion seen generally in Fig. 1 ") and that the disclosed tip
member is considered to be "configured to have a substantially uniform
bending stress distribution in an axial direction and length sufficiently short
to avoid damage to the walls of the duct when fully implanted since Kuzma
[']044 meets all positively recited structural limitations." Final Act. 2, 3.
More particularly, the Examiner finds that:
[B]ecause the tip member is a tapered member and substantially
symmetric/uniform in size and dimensions about the
circumference of the tip, therefore[,] when exposed to a bending
stress there will necessarily be an even distribution of the
bending stresses because the tip member is a tapered uniform
symmetrical in configuration.
Id. at 8.
It is first appropriate to emphasize that the initial burden of
establishing a prima facie basis to deny patentability rests upon the
examiner. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Thus, if
relying upon the theory of inherency, "the [E]xaminer must provide a basis
in fact and/or technical reasoning to reasonably support the determination
that the allegedly inherent characteristic necessarily flows from the teachings
of the applied prior art." Ex Parte Levy, 17 USPQ2d 1461, 1464 (BP AI
1990).
With these legal principles in mind, we view the Examiner's position
as deficient in discharging the initial burden in this particular case. The
Examiner's premise rests on Kuzma '044's tip member inherently having
the claimed characteristic relating to uniform bending stress distribution
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Application 12/683,424
because Kuzma '044's tip is "tapered" and is "substantially
symmetric/uniform in size and dimensions about the circumference." Final
Act. 8; see also Ans. 4 ("[T]he elongate member and tip of Kuzma [']044
has a generally cylindrical and tapered tip. Examiner considers the
symmetrical shape would produce the same mechanical characteristic of a
uniform bending stress distribution since the tip member is symmetrical and
tapered which would force the stress to be evenly distributed.")
As to the purportedly "tapered" nature of Kuzma '044's tip member,
tip 37 of Kuzma '044 may be more properly characterized as semi-spherical
or hemispherical, and the Examiner has not explained how bending stress is
distributed along a semi-spherical or hemispherical structure. We note that
Appellants' Specification appears to draw a distinction between a tapered
portion and a part-spherical blunt end portion (Spec. i-fi-135, 37, 59), and we
are not persuaded that a semi-spherical structure and a tapered structure
would necessarily be identical in how bending stress would be distributed
along the axial length of each.
As to the symmetrical nature of Kuzma '044's tip, Appellants'
Specification provides an example of a prior art structure that is
symmetrical, yet experiences non-uniform bending stresses when subjected
to a force represented by arrow 222. Id. f 57, Fig. 2. More particularly, the
prior art structure is symmetrical and has a semi-spherical or hemispherical
end, but lacks uniform bending stress distribution along its axial length. Id.
When comparing tip 37 of Kuzma '044 to prior art tip member 202 depicted
in Figure 2 of Appellants' Specification, we acknowledge the apparent
difference in the portion of the tip member having a constant cross-sectional
diameter as compared to the portion of the tip member comprising the semi-
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Application 12/683,424
spherical blunt end. The Examiner has not addressed how the length of the
semi-spherical end portion relative to the overall length of the tip member,
or the length of the portion having a constant cross-sectional diameter
relative to the overall length of the tip member, would affect bending stress
distribution, if at all.
Overall, we are not convinced that there is sufficient objective
evidence or technical reasoning to support the conclusion that because the
geometry of tip 37 of Kuzma '044 is cylindrical and symmetrical with a
semi-spherical blunt end, then tip 37 necessarily is configured to have, or
has, a substantially uniform bending stress distribution in an axial direction.
Although we are cognizant of the Examiner's point that Appellants have not
provided evidence as to why the specific geometry of Kuzma '044's tip does
not produce uniform bending stress along the axial length (Ans. 5), we
reiterate that it is the Examiner's initial burden to provide a basis in fact
and/or technical reasoning to support the position that a tip configured to
have, or having, a substantially uniform bending stress in an axial direction
necessarily flows from the teachings of Kuzma '044, rather than Appellants'
burden to provide evidence that it does not necessarily flow from the
teachings of Kuzma '044.
Appellants argue that the Examiner failed to provide a basis in fact
and/or technical reasoning to reasonably support its determination with
respect to inherency. App. Br. 7. We agree with Appellants that the
Examiner does not reasonably support the determination of the inherency in
Kuzma '044 of a tip member configured to have, or having, a substantially
uniform bending stress distribution in an axial direction by relying on the
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geometry of a purported "cylindrically tapered tip that is symmetrical." Ans.
5.
Because the Examiner has not shown that the allegedly inherent
characteristic-a tip member configured to have a substantially uniform
bending stress distribution in an axial direction-necessarily flows from the
teachings of Kuzma '044, and because Kuzma '032 is not shown to cure this
deficiency in Kuzma '044, we do not sustain the Examiner's rejection of
independent claims 1, 8, and 16 under 35 U.S.C. § 103(a) as unpatentable
over Kuzma '044 and Kuzma '032. We also do not sustain the Examiner's
rejection of dependent claims 2-7, 9-11, and 17-27 which depend from
these independent claims.
Rejection II
Claims 12-15 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Kuzma '044, Kuzma '302, and Charvin. Final Act. 6-7. The rejection
of these claims relies on the Examiner's erroneous finding that Kuzma '044
inherently has a tip member configured to have a substantially uniform
bending stress distribution in an axial direction, and the Examiner does not
explain how Charvin cures this underlying deficiency. Id. at 6.
Accordingly, for the reasons discussed supra, we do not sustain the
Examiner's rejection of claims 12-15 as unpatentable under 35 U.S.C.
§ 103(a) over Kuzma '044, Kuzma '302, and Charvin.
DECISION
The Examiner's decision to reject claims 1-27 is REVERSED.
REVERSED
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