Ex Parte Leysieffer

Patent Trial and Appeal Board

Jan 29, 2013

10747166 (P.T.A.B. Jan. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HANS LEYSIEFFER
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Appeal 2011-013582
Application 10/747,166
Technology Center 3700
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Before ERIC GRIMES, STEPHEN WALSH, and SHERIDAN K.
SNEDDEN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to hearing
aid system. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
In “cochlear implants (CI) an array of stimulation electrodes which is
controlled by an electronic system (electronic module) is inserted into the
cochlea,” or inner ear (Spec. 1, ¶ 3). “In cochlear implants exclusively
electrical stimulation signals are used” (id. at 5, ¶ 13).
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In addition to cochlear implants, “for some time there have been
approaches to offer better rehabilitation than with conventional hearing aids
. . . using partially or totally implantable hearing aids” (id. at 2, ¶ 4).
Implantable hearing aids work by “stimulating an ossicle of the middle ear
or directly the inner ear via mechanical or hydromechanical stimulation and
not via the amplified acoustic signal of a conventional hearing aid” (id.).
“The actuator stimulus of these electromechanical systems is accomplished
with different physical transducer principles such as for example by
electromagnetic and piezoelectric systems” (id.).
The Specification discloses a system that “at least partially
circumvents, on the one hand, the . . . disadvantages of currently available
implantable electromechanical hearing systems and on the other hand the
drawbacks of cochlear implants, by using both types of stimulation, i.e.
mechanical stimulation and electrical stimulation, in a single implant
system” (id. at 7, ¶ 19).
Claims 1-36 and 44-49 are on appeal. Claim 1 is representative and
reads as follows:
1. An at least partially implantable system for rehabilitation of a hearing
disorder of a patient, comprising:
at least one sensor configured to convert a received acoustic signal
into one or more corresponding electrical signals;
a signal processing unit configured to convert the electrical signals
into stimulation signals; and
an output-side actory stimulation arrangement comprising:
an electromechanical transducer configured to utilize the
stimulation signals to mechanically stimulate the patient’s middle ear,
and
an electrode array configured to be positioned in the cochlea of
the patient beyond the basal region of the scala tympani of the cochlea,
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and to utilize the stimulation signals to electrically stimulate the
patient’s cochlea,
wherein the signal processing unit is configured to supply the
stimulation signals to both the electromechanical transducer and the
electrode array.

The following rejections are on appeal:
• Claims 1-3, 9, 10, 13-15 under 35 U.S.C. § 102(e) as anticipated by
von Ilberg,1 or alternatively under 35 U.S.C. § 103(a) as obvious based on
von Ilberg and Berrang2 (Answer 4); and
• Claims 44-49 under 35 U.S.C. § 103(a) as obvious based on von
Ilberg, or von Ilberg in view of Berrang, further combined with
Westermann3 (Answer 5).
I.
In addition to the rejections summarized above, the Office action
appealed from included the following rejections:
• Claims 4, 18, 34, and 36 under 35 U.S.C. § 103(a) based on von
Ilberg, or von Ilberg in view of Berrang, further in view of Maniglia4 (Office
action mailed Nov. 12, 2010, at 4);
• Claim 5 under 35 U.S.C. § 103(a) based on von Ilberg, or von Ilberg
in view of Berrang, further in view of Money5 (Office action mailed Nov.
12, 2010, at 5);

1 von Ilberg, US 6,231,604 B1, May 15, 2001
2 Berrang et al., US 6,074,422, June 13, 2000
3 Westermann, US 6,549,633 B1, Apr. 15, 2003
4 Maniglia, US 5,906,635, May 25, 1999
5 Money, US 5,782,744, July 21, 1998
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• Claims 6-8, 11, and 33 under 35 U.S.C. § 103(a) based on von
Ilberg, or von Ilberg in view of Berrang, further in view of Puria6 (Office
action mailed Nov. 12, 2010, at 6);
• Claims 12, 16, 17, and 19-32 under 35 U.S.C. § 103(a) based on
von Ilberg, or von Ilberg in view of Berrang, further in view of Gooch7
(Office action mailed Nov. 12, 2010, at 7);
• Claim 35 under 35 U.S.C. § 103(a) based on von Ilberg, or von
Ilberg in view of Berrang, further in view of Muller8 (Office action mailed
Nov. 12, 2010, at 8);
• Claims 1-36 and 44-49 for obviousness-type double patenting based
on claims 1-49 of U.S. Patent 7,376,563 (Office action mailed Nov. 12,
2010, at 10); and
• Claims 1-36 and 44-49 for obviousness-type double patenting based
on claims 1-49 of U.S. Patent 6,697,674 (Office action mailed Nov. 12,
2010, at 10).
The Examiner stated in the Answer that “[e]very ground of rejection
set forth in the Office action from which the appeal is taken (as modified by
any advisory actions) is being maintained by the examiner except for the
grounds of rejection (if any) listed under the subheading ‘WITHDRAWN
REJECTIONS’” (Answer 3-4). The Answer does not include a section with
the subheading “WITHDRAWN REJECTIONS.”

6 Puria et al., US 6,554,761 B1, Apr. 29, 2003
7 Gooch, US 5,403,262, Apr. 4, 1995
8 Muller et al., US 5,814,095, Sept. 29, 1998
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Appellant did not contest these rejections in the Appeal Brief or Reply
Brief. Appellant has therefore waived any argument with respect to these
rejections, and we affirm them. See Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir. 2008): “When the appellant fails to contest a ground of rejection
to the Board, . . . the Board may treat any argument with respect to that
ground of rejection as waived. In the event of such a waiver, the PTO may
affirm the rejection of the group of claims that the examiner rejected on that
ground without considering the merits of those rejections.”
II.
Issue
The Examiner has rejected claims 1-3, 9, 10, and 13-15 as anticipated
by von Ilberg (Answer 4). The Examiner alternatively rejected these claims
as obvious based on von Ilberg and Berrang, but for the reasons discussed
below, we need not address the alternative rejection based on obviousness.
The Examiner finds that “Von Ilberg discloses a hybrid middle
ear/cochlea implant system” that meets all of the limitations of claim 1
(Answer 4-5). Appellant contends that von Ilberg’s system does not include
an electromechanical transducer that stimulates a patient’s middle ear
(Appeal Br. 9-11) or an electrode array configured to be implanted beyond
the basal region of the cochlea (id. at 7-9), as required by claim 1.
The issue with respect to this rejection is: Does a preponderance of
the evidence support the Examiner’s finding that von Ilberg discloses a
system that includes all of the elements of claim 1, including an electro-
mechanical transducer that stimulates the middle ear and an electrode array
configured to be implanted beyond the basal region of the cochlea?
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Findings of Fact
1. Von Ilberg discloses that “[i]n the prior art, hearing aids have been
based on one of two basically different principles: acoustic mechanical
stimulation, or electrical stimulation” (von Ilberg, col. 1, ll. 28-30).
2. “With acoustic mechanical stimulation, sound is amplified in
various ways and delivered to the inner ear as mechanical energy. This may
be through the column of air to the ear drum, or direct delivery to the
ossicles of the middle ear.” (Id. at col. 1, ll. 30-34.)
3. In “electrical stimulation . . . the sound wave is transformed into an
electrical signal. . . . With electrical stimulation, the stimulating electrodes
should be placed as close as possible to the nerve endings of the auditory
nerve. This occurs optimally when an electrode carrier is inserted into the
cochlea.” (Id. at col. 1, ll. 47-51.)
4. Von Ilberg discloses “a hearing prosthesis . . . [that] includes a
microphone, an electrical stimulation module, and an acoustic mechanical
stimulation module” (id. at col. 1, ll. 59-62).
5. The “microphone 11 converts the sounds of the user’s acoustic
environment into a representative electrical signal output” (id. at col. 4, ll.
18-20).
6. “The signal from the microphone 11 may be further processed by a
stimulation amplifier 12 that produces an amplified representative electrical
signal” (id. at col. 4, ll. 20-22). “An acoustic mechanical stimulation module
13 receives the amplified representative electrical signal” (id. at col. 4, ll.
23-24). “An electrical stimulation module 15 also receives the amplified
representative electrical signal” (id. at col. 4, ll. 36-37).
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7. “The structure and operation of the acoustic mechanical
stimulation module 13 may be as in a conventional hearing aid. . . . The
output of the acoustic mechanical stimulation module 13 is a mechanical
stimulation signal.” (Id. at col. 4, ll. 24-29.)
8. “The mechanical stimulation signal is delivered to the inner ear
structure of the user by an acoustic mechanical stimulator receiver 14 that
also may be as in a conventional hearing aid” (id. at col. 4, ll. 31-35).
9. Von Ilberg discloses that the electrical stimulation module receives
an electrical signal from the amplifier and uses “signal processing to produce
an electrical stimulation signal representative of a subrange of mid- to high-
range frequencies . . . in the acoustic environment” (id. at col. 4, ll. 39-42).
10. “The electrical stimulation signal from the electrical stimulation
module, 15 in FIG. 1, is . . . delivered to the auditory nerve of the user by
stimulation electrodes 17” (id. at col. 4, ll. 59-63).
11. Von Ilberg discloses that the “stimulation electrodes 17 may be
inserted partially or fully into the cochlea” (id. at col. 5, ll. 1-2).
12. “The electrodes can, depending on the indication, include 1 or 2
electrodes for extra-cochlear placement, placement into cochleostomy
windows, shallow intra-cochlear placement, or a multichannel electrode for
gentle intra-ochlear [sic] placement” (id. at col. 5, ll. 32-36).
Analysis
We agree with the Examiner that von Ilberg discloses a system that
meets all of the limitations of claim 1. Von Ilberg discloses a system that
includes a microphone (sensor) and an amplifier that supplies an amplified
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signal to both an acoustic mechanical stimulation module and an electrical
stimulation module (FFs 4-6).
Von Ilberg discloses that its acoustic mechanical stimulation module
“may be as in a conventional hearing aid” (FF 7) and outputs a mechanical
stimulation signal that is delivered to the inner ear by an acoustic mechanical
stimulator receiver that “also may be as in a conventional hearing aid”
(FF 8). Von Ilberg states that prior art hearing aids based on acoustic
mechanical stimulation deliver signals to the inner ear as mechanical energy,
either “through the column of air to the ear drum, or direct delivery to the
ossicles of the middle ear” (FF 2, emphasis added).
Thus, a skilled worker would have understood von Ilberg to disclose
that the acoustic mechanical stimulation module of its system delivers a
mechanical stimulation signal in either of two ways: via a column of air to
the ear drum, or by direct delivery to the ossicles of the middle ear. While
von Ilberg does not expressly specify a system that uses mechanical
stimulation of the middle ear, a skilled worker would have understood it to
disclose such a system since that is one of only two conventional methods
disclosed by von Ilberg of delivering an acoustic mechanical signal. See
Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376 (Fed. Cir. 2005)
(“In total, Pereira teaches a total of fourteen skin benefit ingredients. This
court rejects the notion that one of these ingredients cannot anticipate
because it appears without special emphasis in a longer list.”); In re
Petering, 301 F.2d 676, 681-82 (CCPA 1962) (A disclosure that allows one
skilled in the art to “at once envisage each member of [a] limited class”
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describes each member of the class “as if [the reference] had drawn each
structural formula or had written each name.”).
Von Ilberg’s system also includes an electrical stimulation module,
which delivers an electrical stimulation signal to the user’s auditory nerve
via stimulation electrodes (FF 10). Von Ilberg discloses that the stimulation
electrodes may be fully inserted into the cochlea (FF 11) and may be a
multichannel electrode for gentle intra-cochlear placement (FF 12).
Although von Ilberg does not expressly state that its electrode array is
configured to be positioned in the cochlea beyond the basal region of the
scala tympani, as recited in claim 1, its disclosure that the electrodes may be
fully inserted into the cochlea and its disclosure of intra-cochlear placement
support the Examiner’s finding that von Ilberg’s system includes electrodes
configured for placement in the cochlea beyond the basal region of the scala
tympani. And, although von Ilberg does not require such electrodes in its
system, the limited number of expressly disclosed options would have led a
skilled worker to conclude that its disclosure includes such a system.
Perricone, 432 F.3d at 1376; Petering, 301 F.2d at 681-82.
Appellant acknowledges von Ilberg’s disclosure that its electrodes can
be fully inserted into the cochlea (Appeal Br. 8) but argues that “no where
does von Illberg [sic] state that the multichannel array of electrodes may be
inserted so as to ‘be positioned in the cochlea of the patient beyond the basal
region of the scala tympani of the cochlea,’ as recited in claim 1” (id.).
Appellant argues that “‘full’ implantation does not require or imply that the
electrode array is implanted ‘beyond the basal region.’ As is known in the
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art, short or basal electrodes are ‘fully’ implanted when they are implanted
into only the basal region.” (Id.)
This argument is not persuasive, for two reasons. First, Appellant has
pointed to no evidence in the record to support the position that a skilled
worker would recognize that an electrode array can be inserted fully into the
cochlea without being implanted beyond the basal region of the scala
tympani. “Attorney’s argument in a brief cannot take the place of
evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Second, even assuming that those skilled in the art recognize that
“short or basal electrodes are ‘fully’ implanted when they are implanted into
only the basal region” (Appeal Br. 8), von Ilberg distinguishes between
electrodes for “shallow intra-cochlear placement” and a multichannel
electrode for gentle intra-cochlear placement (FF 12). Electrodes that are
fully implanted when they are implanted into only the basal region would
appear to correspond to von Ilberg’s electrodes for shallow intra-cochlear
placement; Appellant has provided no reasonable basis for concluding that a
multichannel electrode for gentle intra-cochlear placement (FF 12) is fully
implanted without being implanted beyond the basal region of the scala
tympani.
Appellant also argues that “because von Ilberg only discloses the
delivery of amplified acoustic signals to the ear drum, . . . von Ilberg fails to
contain an enabling disclosure of ‘an electromechanical transducer
configured to utilize the stimulation signals to mechanically stimulate the
patient’s middle ear, and an electrode array’ as recited, in part, in
Applicant’s claim 1” (Appeal Br. 10-11).
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This argument is also unpersuasive. Appellant interprets von Ilberg’s
references to a “conventional hearing aid” (FFs 7, 8) to be limited to those
that deliver an amplified acoustic signal to the ear drum (see Appeal Br. 10).
However, von Ilberg expressly states that prior art – i.e., conventional –
hearing aids deliver mechanical energy either through a column of air to the
ear drum or by direct delivery to the ossicles of the middle ear (FF 2).
Appellant has provided no reasonable basis for concluding that a skilled
worker would have interpreted von Ilberg’s reference to a “conventional
hearing aid” to exclude the prior art hearing aids that deliver a mechanical
signal directly to the ossicles of the middle ear.
Conclusion of Law
A preponderance of the evidence supports the Examiner’s finding that
von Ilberg discloses a system that includes all of the elements of claim 1,
including an electromechanical transducer that stimulates the middle ear and
an electrode array configured to be implanted beyond the basal region of the
cochlea.
III.
The Examiner has rejected claims 44-49 as obvious based on von
Ilberg and Westermann (Answer 5). Claim 44, the only independent claim
rejected on this basis, is directed to a system comprising a sensor, a signal
processing unit, and two “output-side actory stimulation arrangement[s]” –
one for each ear – that each comprises an electro-mechanical transducer and
electrode array like those recited in claim 1.
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The Examiner finds that, although von Ilberg does not disclose the use
of two implants simultaneously, “Westermann discloses the use of two
hearing aids that are identical (Col. 3, ll. 62-67), one being the master and
one being the slave (Col. 9, ll. 37-42), which are connected to each other via
a wired or wireless link (e.g. Col. 4, ll. 54-67)” (Answer 5-6). The Examiner
concludes that it would have been obvious “to modify the hybrid
implantable system as taught by Von Ilberg . . . with the binaural hearing
system as taught by Westermann, since such a modification would provide
the predictable results of stimulating both ears for providing restored or
increased hearing in both ears of the patient” (id. at 6).
We agree with the Examiner’s findings and conclusion.
Appellant argues that Westermann does not cure von Ilberg’s
deficiency of failing to disclose an electrode array that is configured to be
implanted beyond the basal region of the scala tympani of the cochlea
(Appeal Br. 17-18) and that Westermann also does not cure von Ilberg’s
deficiency of failing to disclose a transducer that mechanically stimulates the
middle ear (id. at 18-19). For the reasons discussed above, however, we find
that von Ilberg’s system includes both of the disputed elements. Appellant’s
arguments are therefore unpersuasive.
SUMMARY
We affirm all of the rejections on appeal.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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