Ex Parte Ilberg et al

Patent Trial and Appeal Board

May 10, 2017

12957550 (P.T.A.B. May. 10, 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.
12/957,550 12/01/2010 Christoph von Ilberg 1941/C55 1323
2101 7590 05/12/2017
Sunstein Kann Murphy & Timbers LLP
125 SUMMER STREET
BOSTON, MA 02110-1618
EXAMINER
MALAMUD, DEBORAH LESLIE
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
05/12/2017 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):
usptomail @ sunsteinlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPH VON ILBERG,
DOMINIK HAMMERER, and MARTIN ZIMMERLING
Appeal 2015-004795
Application 12/957,550
Technology Center 3700
Before EDWARD A. BROWN, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1—11 and 13—15. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
Appeal 2015-004795
Application 12/957,550
CLAIMED SUBJECT MATTER
The claims are directed to inductive signal and energy transfer
through the external auditory canal. Claim 1, reproduced below with
emphasis added, is illustrative of the claimed subject matter:
1. An inductive coil arrangement for an ear canal of a
recipient patient, the ear canal having an outer wall defining a
generally cylindrical shape around a central ear canal axis, the
inductive coil arrangement comprising:
an inner transmitter coil for insertion into the ear canal, the
transmitter coil having a plurality of transmission
wire loops having a radial loop center, wherein the
transmission wire loops and their radial loop center
lie along a curve around the central ear canal axis
conformal to the outer wall of the ear canal for
transmitting a communication signal through the
skin of the outer wall of the ear canal; and
an outer receiver coil for implantation under the skin of
the outer wall of the ear canal, the receiver coil
having a plurality of receiver wire loops having a
radial loop center, wherein the receiver wire loops
and their radial loop center lie along a curve around
the central ear canal axis substantially parallel to the
transmitter coil for receiving the communication
signal from the transmitter coil.
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Hortmann
Feeley
US 4,696,287 Sept. 29, 1987
US 7,139,404 B2 Nov. 21, 2006
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Appeal 2015-004795
Application 12/957,550
REJECTIONS
(I) Claims 1—4, 6, 7, and 12—151 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Hortmann.
(II) Claims 5 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hortmann.
(III) Claims 8—11 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hortmann and Feeley.
OPINION
Rejection (I)
Claim 1 recites, in part, “the transmission wire loops and their radial
loop center lie along a curve around the central ear canal axis conformal to
the outer wall of the ear canal.” Appeal Br. (Claims App.) (emphasis
added). Thus, in the intended position, (i) the radial center of the
transmission wire loops and (ii) the transmission wire loops themselves lie
along a curve around the central ear canal axis, and the curve is conformal to
the outer wall of the ear canal. The intended position of the receiver wire
loops is similarly specified, but, instead of requiring conformance to the wall
of an ear canal in any way, has the requirement that that the receiver wire
loops and their center are positioned to lie on a curve that is parallel to the
transmitter coil. As further discussed below, this arrangement of wire loops
is functionally recited and does not require actual placement of the claimed
transmitter and receiver coils in a patient.
1 Claim 15 is listed in each of Rejections (I)—(III) because it refers to claims
1—11, 13, and 14. Appeal Br. 11 (Claims App.).
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Appeal 2015-004795
Application 12/957,550
The Examiner finds that Hortmann discloses all the elements recited
in claim 1, and, with respect to the arrangement of the transmission wire
loops and receiver wire loops, states:
The functional language and statement of intended use of claim
1, have been carefully considered but are not considered to
impart any further structural limitations over the prior art. Since
Hortmann utilizes radially looped coil inner transmitter and outer
receiver coils as claimed by the applicant, Hortmann is therefore
capable of being used along a curve around the central ear canal
axis of the ear canal conformal to the outer wall of the ear canal. [
] In addition nothing prevents Hortmann’s system from being
arranged in this method. Therefore, they are capable of being
used in this configuration.
Final Act. 4 (emphasis added).
Appellants contend that Hortmann does not teach centers of
transmission and receiver loops disposed on a curve around the central axis
of the ear canal, but rather, the centers of these loops are disposed on the
central axis of the ear canal. Appeal Br. 5—7.
In response, the Examiner states, “Appellant has failed to explain how
Hortmann’s device differs from the claimed invention in function, or how
Hortmann’s device would be rendered dysfunctional in the claimed
arrangement” and “the claimed arrangement of coils is an intended use of
the claimed elements,” and “Hortmann’s coils are capable of being used in
this arrangement.” Ans. 7—8.
In reply, Appellants contend that claim 1 limits the claimed
arrangement structurally, and the Examiner’s finding that the positions of the
transmission and receiver coils, as well as the positions of their centers, are
merely an intended use of these elements is erroneous. Reply Br. 1—2.
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Appeal 2015-004795
Application 12/957,550
Although we agree with the Examiner that certain features in claim 1
are recited functionally, Appellants have the better position regarding the
Examiner’s use of Hortmann in Rejection (I). Claim 1 recites, in part, “[a]n
inductive coil arrangement for an ear canal... an inner transmitter coil for
insertion into the ear canal... an outer receiver coil for implantation under
the skin.” Appeal Br. 9 (Claims App.) (emphasis added). Thus, the claimed
inductive coil arrangement is not required to be physically arranged in the
positions described in the two “wherein” clauses specifying the arrangement
of the transmission and receiver wire loops and their radial loop centers.
Rather, the claimed inductive coil arrangement structure is “for” being
arranged or positioned in a particular way in relation to a patient’s ear canal,
i.e., it is intended to be used in conjunction with the ear of a patient, as
specified in the two “wherein” clauses. Accordingly, the Examiner is
correct in finding that claim 1 recites certain features functionally. These
types of limitations carry the following risk.
[Wjhere the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic
of the prior art, it possesses the authority to require the applicant
to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Nevertheless, the
Examiner must establish a sound basis for the belief that the functional
limitation is an inherent characteristic of the prior art before the burden
shifts to the applicant. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990);
see also In re Chudik, 2017 WL 74769, at *3 (Fed. Cir. Jan. 9, 2017) (non-
precedential).
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Appeal 2015-004795
Application 12/957,550
The Examiner has not established such a basis supporting the rejection
of claim 1. Specifically, the Examiner does not provide the basis for finding
any capability in Hortmann for the arrangement recited in the two wherein
clauses in claim 1. Claim 1 requires an inner transmitter coil for insertion
into the ear canal with the capability for arrangement of (i) the transmission
wire loops and (ii) their radial loop center along a curve around the central
ear canal axis conformal to the outer wall of the ear canal. See Appeal Br. 9
(Claims App.). Additionally, claim 1 requires the capability to arrange (i)
the receiver wire loops and (ii) their radial loop center along a curve around
the central ear canal axis in an arrangement that is substantially parallel to
the transmitter coil. See id. The Examiner does not adequately explain how
the coils described by Hortmann can be so arranged. In particular, it is
unclear as to how the Examiner finds that transmitter coil 23 of Hortmann
can be positioned such that its loops, as well as the radial center of its loops,
are disposed on a curve that is located around a central axis of an ear canal
and which curve is also conformal to the outer wall of the ear canal. In this
regard, transmitter coil 23 has an elongated, cylindrical shape (see
Hortmann, Fig. 1), which structure would not appear to permit both its loops
and the radial center of its loops to be positioned to reside on a curve
conforming in the recited manner. Accordingly, we reverse the Examiner’s
rejection of claims 1—4, 6, 7, and 12—15 as anticipated by Hortmann.
Rejections (II) and (III)
The Examiner’s rejections of claims 5 and 15 as unpatentable over
Hortmann and of claims 8—11 and 15 as unpatentable over Hortmann and
Feeley rely on the same unsupported findings as discussed above regarding
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Appeal 2015-004795
Application 12/957,550
Rejection (I). See Final Act. 5—7. Accordingly, for the same reasons, we
reverse Rejections (II) and (III).
DECISION
The Examiner’s decision to reject claims 1—11 and 13—15 is reversed.
REVERSED
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