Ex Parte Gibson

Patent Trial and Appeal Board

Oct 13, 2017

14587260 (P.T.A.B. Oct. 13, 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.
14/587,260 12/31/2014 Peter Gibson 40833.0048FPC2 1549
106936 7590 10/17/2017
Merchant Rr (Tonlrl Pnrhle.ar
EXAMINER
P.O. Box 2903 HOLMES, REX R
Minneapolis, MN 55402
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
10/17/2017 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):
USPTO106936 @ merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER GIBSON1
Appeal 2016-008674
Application 14/587,260
Technology Center 3700
Before TONI R. SCHEINER, ERIC B. GRIMES, and RYAN H. FLAX,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
implantable device and method for implanting such a device, which have
been rejected as anticipated and obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies the Real Party in Interest as Cochlear Limited. (Br. 3.)
Appeal 2016-008674
Application 14/587,260
STATEMENT OF THE CASE
The Specification discloses “implantable devices and, more
particularly, . . . implantable devices having osseointegrating
protuberances.” (Spec. 12.) “Osseointegration is . . . the process in which
living bone forms a biological bond to an implanted element, firmly securing
the implanted element to the skeletal structure.” (Id. 121.) The
Specification describes cochlear implants and other implantable devices that
embody the disclosed invention. (Id. H 22, 31.)
Claims 1—16 and 21—24 are on appeal. Claim 1, 8, and 16 are the
independent claims and read as follows (emphasis added):
1. An implantable device for mounting to a patient’s bone,
the device comprising:
a housing including a surface having an abutting portion
configured to abut the bone when the device is implanted in the
patient, the abutting portion defining a housing axis orthogonal
to the surface; and
at least one stud extending from the surface of the
housing;
the at least one stud being adapted to abut the patient’s
bone; and
the at least one stud having a substantially smooth shaft.
8. An implantable component of a tissue stimulating
prosthesis, the implantable component comprising:
a housing including a surface having an abutting portion
configured to abut the bone when the housing is implanted in
the patient, wherein the abutting portion defines a housing axis
orthogonal to the surface; and
one or more components of the prosthesis mounted in the
housing; and
at least one stud extending from the surface of the
housing; the at least one stud being adapted to abut the patient’s
bone; and
the at least one stud having a substantially smooth shaft.
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Application 14/587,260
16. A method for implanting an implantable device having a
housing with an abutting surface and at least one stud extending
from the housing, the method comprising:
forming a pocket in the patient’s bone to receive the
housing;
positioning the housing in the pocket; and
simultaneously with positioning the housing in the
pocket, positioning the stud so as to be in direct contact with a
surface of the patient’s bone forming the pocket.
The claims stand rejected as follows:
Claims 1, 2, 4, 6, 8, 9, 11, 13-16, and 21-24 under 35 U.S.C. § 102(b)
as anticipated by Berrang2 (Ans. 2);
Claim 7 under 35 U.S.C. § 103(a) as obvious based on Berrang (Ans.
3);
Claims 3 and 10 under 35 U.S.C. § 103(a) as obvious based on
Berrang and Sevrain3 (Ans. 3 4); and
Claims 5 and 12 under 35 U.S.C. § 103(a) as obvious based on
Berrang and Ellingsen4 (Ans. 4).
I
The Examiner has rejected claims 1, 2, 4, 6, 8, 9, 11, 13—16, and 21—
24 as anticipated by Berrang. The Examiner finds that Berrang discloses a
device and method meeting all of claim limitations, including “multiple
studs extending from the surface (e.g. 122)” of its device. (Ans. 2.)
2 US 2002/0019669 A1 (Feb. 14, 2002).
3 US 2003/0135216 A1 (July 17, 2003).
4 US 2002/0111694 A1 (Aug. 15,2002).
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Appeal 2016-008674
Application 14/587,260
Appellant argues that Berrang discloses anchoring its device to the
skull with sutures or screws, but “the present application itself recognizes
the difference between a stud and a screw, in that the specification identifies
both studs 304 and screws 404.” (Br. 19.) Appellant also argues that
“[w]hen considering a screw, ... a person of skill in the art would not
consider a screw to be ‘substantially smooth.’” {Id.) Appellant argues that
the rejection is based on an unreasonably broad claim interpretation. (Id. at
19—20.) With regard to claim 16, Appellant argues that Berrang does not
disclose placing the device in a bone pocket while simultaneously placing a
stud in contact with the bone. (Id. at 23—24.)
We agree with Appellant that the Examiner has not shown that
Berrang discloses a device and method meeting the broadest reasonable
interpretation of the rejected claims. Claims 1 and 8 recite a device
comprising a stud having a substantially smooth shaft. The Specification
describes embodiments of the disclosed device having “[ojsseointegrating
protuberances in the form of loop members 204A, 204B” (Spec. 136), or
“three (3) studs 304A-304C (collectively and generally referred to herein as
stud or studs 304)” (id. 145), or “two (2) osseointegrating protrusions in the
form of threaded shafts 404A-404B (collectively and generally referred to
herein as screw or screws 404)” (id. 148).
The Specification distinguishes between the structures of “studs” and
“screws.” The Specification states that “[t]o extricate studs 304, the bonds
formed during osseointegration must be severed. Thus, it is preferential that
studs 304 do not include additional integrating features such as apertures.”
(Id. 146.) By contrast, “[sjhould it becomes necessary to remove housing
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Application 14/587,260
400, screws 404 can be unscrewed from bone 206 using a screwdriver.” {Id.
149.)
We agree with Appellant that interpreting the studs recited in the
claims to include screws is broader than is reasonable when the claim
language is read in light of the Specification. We also agree with Appellant
that interpreting a “substantially smooth shaft” to encompass the threaded
shaft of a screw is broader than is reasonable in light of the Specification.
We have considered the Examiner’s reasoning to the contrary (Ans. 5—6) but
conclude that that reasoning does not “tak[e] into account whatever
enlightenment by way of definitions or otherwise . . . may be afforded by the
written description contained in the applicant’s specification,” In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997), as required under the broadest
reasonable interpretation of the claims.
Claim 16 requires positioning a device having a stud in a bone pocket
while “simultaneously with positioning the housing in the pocket,
positioning the stud so as to be in direct contact with a surface of the
patient’s bone forming the pocket.” (Claim 16.) For the reasons discussed
above, however, we conclude that Berrang’s device does not include a stud,
under the broadest reasonable interpretation of the term in light of the
Specification. Therefore, it cannot disclose a method that requires
simultaneously placing a stud against a bone when positioning a device in a
bone pocket.
For these reasons, we reverse the rejection of claims 1, 8, and 16, as
well as dependent claims 2, 4, 6, 9, 11, 13—15, and 21—24, as anticipated by
Berrang.
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Application 14/587,260
II
The Examiner has rejected claims 3, 5, 7, 10, and 12 as obvious based
on Berrang, by itself or combined with either Sevrain or Ellingsen. (Ans. 3—
5.) The obviousness rejections, however, all rely on the Examiner’s finding
that Berrang discloses all of the limitations of the independent claims.
Because we conclude that Berrang does not disclose the claimed stud, under
the broadest reasonable interpretation of the term, and because the Examiner
has not shown that that limitation would have been obvious to a person of
ordinary skill in the art based on Berrang, Sevrain, or Ellingsen, we also
reverse the obviousness rejections.
SUMMARY
We reverse all of the rejections on appeal.
REVERSED
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