Ex Parte Faltys et al

Patent Trial and Appeal Board

Feb 18, 2014

11418847 (P.T.A.B. Feb. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MICHAEL A. FALTYS,
TIMOTHY J. STARKWEATHER, and ANTHONY K. ARNOLD
__________

Appeal 2011-011446
Application 11/418,847
Technology Center 3700
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Before TONI R. SCHEINER, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
This is a decision on appeal1 under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 26-31. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

1 The real party in interest is identified as Advanced Bionics, LLC (App. Br.
3).
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STATEMENT OF THE CASE
Claim 26 is representative and reads as follows:
26. A method for operating a cochlear stimulation system worn by a
patient comprising an external portion and an implantable internal portion,
the method comprising:
storing non-patient specific information in a non-volatile memory in
the external portion;
storing patient specific information in a non-volatile memory in the
internal portion;
processing sensed acoustic signals at the external portion using only
non-patient specific information to produce a data signal comprising
amplitude data that has been processed with a speech processing algorithm,
wherein the speech processing algorithm includes filtering and noise
cancelling;
wirelessly transmitting the data signal from the external portion to the
internal portion;
processing the data signal at the internal portion using patient specific
information;
and
generating stimulation waveforms at the internal portion based on the
processed data signal.

The claims stand rejected as follows:
• Claims 26-31 under 35 U.S.C. § 102(e) in view of Nicolai2 (Ans. 4);
and
• Claims 26-31 under 35 U.S.C. § 102(b) in view of Faltys3 (Ans. 5).
I.
The Examiner has rejected claims 26-31 under 35 U.S.C. § 102(e) as
anticipated by Nicolai. The Examiner finds that “Nicolai discloses a method

2 Nicolai et al., US 2007/0135862 A1, published Jun. 14, 2007.
3 Faltys et al., US 6,219,580 B1, issued Apr. 17, 2001.
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for operating a cochlear stimulation system 200 having external and
implantable internal portions” (Ans. 4). The Examiner finds that Nicolai
discloses “storing non-patient specific information in a non-volatile,
alterable, memory 308 in the external portion” (id.). The Examiner finds
that Nicolai discloses “storing patient specific information in a non-volatile
memory 328 in the internal portion” (id.). The Examiner finds that Nicolai
discloses “processing sensed acoustic signals at the external portion using
non-patient specific information to produce a data signal . . . wirelessly
transmitting the data signal . . . to the internal portion, processing the data
signal at the internal portion using patient specific information, and
generating stimulation waveforms” (id.).
Appellants argue that “Nicolai fails to meet the limitation of ‘storing
non-patient specific information in a non-volatile memory in the external
portion.’” (App. Br. 15.) Appellants argue that the Examiner’s assertion
that Nicolai’s memory 308 meets this limitation is not persuasive because
“memory 308 is not in Nicolai’s external portion” (id., emphasis deleted).
Appellants argue that memory 308 is “a component in Nicolai’s fitting
system 282, and specifically in personal computer 302,” and that the fitting
system is different from the cochlear stimulation system worn by the patient
(id.). Appellants argue that independent claim 26 requires that the “external
portion and internal portion are . . . ‘worn by a patient’ . . . [and] memory
308 cannot be worn by a patient, and thus cannot comprise part of the
external portion as claimed” (id.).
The Examiner responds that “the external and internal portions
individually are not claimed to be worn by the patient, but rather the
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cochlear stimulation system comprising such portions is claimed to be worn
by the patient” (Ans. 7). The Examiner further reasons that “a cochlear
stimulation system with some components worn by the patient and some
components not worn by the patient would satisfy the claim limitations”
(id.). The Examiner further responds that “a fitting system could be
considered a wearable external portion when, in the case of a laptop
computer, it is capable of being worn externally by a patient” (id.).
We agree with Appellants that the Examiner unreasonably interprets
claim 26 as not requiring that the external portion (for storing non-patient
specific information) be worn or wearable by a patient. The Specification
discloses that the “cochlear stimulation system . . . includes a speech
processor portion 12 and a cochlear stimulation portion 20 . . . [such that the]
speech processor portion 12 can be worn, placed, or attached externally to a
patient” (id. at 10 ¶ 00033). The Specification discloses that “the speech
processor portion 12 can be incorporated into a housing that can be worn,
such as the behind-the-ear prosthetic device 200 depicted in FIG. 2A or the
behind-the-ear prosthetic device 210 depicted in FIG. 2B” (id.). Thus, in
view of the Specification, one of skill in the art would interpret the claim 26
recitation of a “cochlear stimulation system worn by a patient comprising an
external portion and an implantable internal portion” to require that the
external portion (for storing non-patient specific information in a non-
volatile memory) is worn or wearable by a patient. Thus, the Examiner’s
finding that the fitting system of Nicolai, i.e., a laptop computer, meets the
claim limitations for the external portion of claim 26 is in error. The
Examiner’s finding that the laptop computer of Nicolai could be worn by a
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patient is not persuasive because the Examiner has not pointed to anything in
Nicolai as disclosing that the computer of the fitting system is actually worn
by a patient.
Thus, we reverse the rejection of independent claim 26 and dependent
claims 27-31 as being anticipated by Nicolai.
II.
The Examiner has rejected claims 26-31 under 35 U.S.C. § 102(b) as
anticipated by Faltys.
The Examiner finds that Faltys “discloses a method for operating a
cochlear stimulation system having external and implantable internal
portions” (Ans. 5). The Examiner finds that Faltys discloses “storing non-
patient specific information in a non-volatile, alterable, memory in the
external portion” (id.). The Examiner finds that Faltys discloses “storing
patient specific information in a non-volatile write-protected memory 344 in
the internal portion” (id.). The Examiner finds that Faltys discloses
“processing sensed acoustic signals at the external portion using non-patient
specific information to produce a data signal . . . wirelessly transmitting the
data signal . . . to the internal portion, processing the data signal at the
internal portion using patient specific information, and generating
stimulation waveforms” (id.).
Appellants argue that “the Examiner relies on aspects of Faltys’ fitting
system to satisfy claim limitations relevant to the claimed ‘external
portion.’” (App. Br. 21.) Appellants argue that “the Examiner cites to the
removable memory card in palm personal computer (PPC) 11 as meeting the
limitation of . . . the external portion . . . [but that] the PPC 11 does not
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comprise the ‘external portion’ of Faltys’ cochlear implant system” (id.).
Appellants argue that Faltys’ external portion “‘includes at least a
microphone and appropriate amplification circuitry . . . for sensing acoustic
sounds and converting them to corresponding electrical signals,’ . . . and
‘typically includes a headpiece of some kind’ that is ‘worn by a patient in or
behind the ear,’” but that the PPC 11 is part of the fitting system (not worn
by the patient) and not part of the external portion worn by the patient (id. at
22).
The Examiner responds that “the external and internal portions
individually are not claimed to be worn by the patient, but rather the
cochlear stimulation system comprising such portions is claimed to be worn
by the patient” (Ans. 9-10). The Examiner further responds that since “a
palm personal computer is generally understood to be a relatively small
handheld device, it is considered by the Examiner to be wearable by a
patient” (id. at 10).
We agree with the Appellants that the Examiner has not shown that
Faltys anticipates claim 26. As discussed above, one of skill in the art would
interpret the claim 26 recitation of a “cochlear stimulation system worn by a
patient comprising an external portion and an implantable internal portion”
to require that the external portion (for storing non-patient specific
information in a non-volatile memory) is worn or wearable by a patient.
Thus, the Examiner’s finding that the fitting system of Faltys, i.e., a palm
personal computer, meets the claim limitations for the external portion of
claim 26 is in error. The Examiner’s finding that the palm personal
computer of Faltys could be worn by a patient is not persuasive because the
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Examiner has not pointed to anything in Faltys as disclosing that the palm
personal computer of the fitting system is actually worn by a patient.
Thus, we reverse the rejection of independent claim 26 and dependent
claims 27-31 as being anticipated by Faltys.
SUMMARY
We reverse the rejection claims 26-31 under 35 U.S.C. § 102(e). We
also reverse the rejection of claims 26-31 under 35 U.S.C. § 102(b) in view
of Faltys.

REVERSED

cdc