Ex Parte PolakDownload PDFPatent Trials and Appeals BoardApr 22, 201914316952 - (D) (P.T.A.B. Apr. 22, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/316,952 06/27/2014 2101 7590 04/24/2019 Sunstein Kann Murphy & Timbers LLP 125 SUMMER STREET BOSTON, MA 02110-1618 FIRST NAMED INVENTOR Marek Polak 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. 1941/E75 1049 EXAMINER DINGA, ROLAND ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 04/24/2019 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 MAREK POLAK 1 Appeal2018-002867 Application 14/316,952 Technology Center 3700 Before DANIEL S. SONG, EDWARD A. BROWN and MICHELLE R. OSINSKI, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's Office Action ("Off. Act.") rejecting claims 1-24 in the present application. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). We REVERSE. 1 The Appellant is the Applicant, Med-El Elektromedizinische GmbH, which is identified as the real party in interest. Appeal Brief ("Appeal Br.") 2. Appeal2018-002867 Application 14/316,952 The claimed invention is directed to a cochlear implant fitting. Title. Independent claim 1 is illustrative of the invention and reads as follows: 1. A cochlear implant fitting system for fitting an implanted cochlear implant electrode array having a plurality of electrode contacts to an implanted patient, the system comprising: means for assigning to each of a plurality of different fitting response measurement methods, one or more electrode contacts such that each of the plurality of electrode contacts is assigned one and only one fitting response measurement method; means for each fitting response measurement method: i. to fit each of the assigned electrode contacts using the fitting response measurement method, and ii. to interpolate fitting values for all of the non- assigned electrode contacts based on the fitting of the assigned electrode contacts; and means for fitting each electrode contact in the electrode array based on a weighted averaging of the fittings for the plurality of different fitting response measurement methods. Appeal Br. 9 (Claims App.). REJECTIONS The Examiner rejects claims 1-5, 9-13, and 17-21 under 35 U.S.C. § I02(a)(2) as being anticipated by Nopp et al. (US 2013/0079845 Al, pub. Mar. 28, 2013, "Nopp"). Off. Act. 2. The Examiner rejects claims 6-8, 14--16, and 22-24 under 35 U.S.C. § 103 as being obvious over Nopp in view ofKals et al. (US 2013/0138180 Al, pub. May 30, 2013, "Kals"). Off. Act. 8. 2 Appeal2018-002867 Application 14/316,952 Rejection 1 ANALYSIS The Examiner rejects claims 1-5, 9-13, and 17-21, finding that Nopp discloses each and every limitations of these claims. Off. Act. 2-7. In so doing, the Examiner interprets the limitations of claim 1 reciting "means for" under 35 U.S.C. § 112([), and finds that "the recited limitations 'means for assigning,['] 'means for each fitting' and 'means for fitting' are achieved by a control unit (201) and a database (208)" ofNopp. Ans. 14. The Appellant argues that "the correct interpretation of the m[ e Jans plus function phrases in claim 1 is not merely a control unit (201) and a database (208), but rather hardware elements such as those which have been programmed to act as a special purpose computer programmed to perform the algorithmic functions that are recited." Reply Br. 2. While this issue does not appear to be dispositive in view of the following discussion, we nonetheless agree with the Appellant. Indeed, the Examiner does not dispute that the application of a prior art reference to a means plus function limitation requires that the prior art element perform the identical function specified in the claim. See MPEP 2182; In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994). The substantive dispute in this appeal is whether the Examiner's further interpretation of the independent claims is correct, and whether N opp discloses the invention under such interpretation. In particular, the Appellant argues that Nopp does not anticipate these claims because in contrast to the claims, "some of the electrode contacts [in Nopp] are fit solely by interpolation without taking fitting response measurements." 3 Appeal2018-002867 Application 14/316,952 Appeal Br. 7 (citing Nopp ,r,r 6-9, 17 et seq.). The Examiner finds the Appellant's argument unpersuasive because the claims, as written, refer to a single fitting response measurement method (the fitting response measurement method) and does not positively claim either functionally or structurally program code or means for each fitting response measurement method that uses a different fitting response measurement method than that used for the first assigned electrode contact. Ans. 15 ( emphasis added). The basis of the Examiner's assertion is unclear because the independent claims do not refer to a single fitting response measurement method, but instead, explicitly recite "a plurality of different fitting response measurement methods" in the limitations pertaining to assignment, as well as the limitations pertaining to weighted averaging. In that regard, the Examiner's position that the claims do not require different fitting response measurement methods, and that the fitting response method used for the first assigned electrode contact can be used for the other electrode contacts to satisfy the claim language is not tenable. The claims not only recite a plurality of different fitting response measurement methods, they also require each of the different fitting response measurement methods to have assigned thereto, one or more electrode contacts, wherein each electrode contact is assigned to only one fitting response measurement method. Accordingly, in contrast to the Examiner's apparent assertion, at minimum, the claims require two different fitting response measurement methods, each having at least one electrode contact assigned thereto. Notwithstanding the above, the Examiner also finds (presumably in the alternative) that Nopp nonetheless discloses "assigning a plurality of different fitting response measurement methods for each channel or 4 Appeal2018-002867 Application 14/316,952 electrode contact so that the electrode contact is only one fitting response." Ans. 16 (citing Nopp ,r,r 10-11, 17). In that regard, the Examiner finds that Nopp "discloses that each of the electrode channels is assigned one and only one fitting response measurement method ( e.g., paragraphs [001 OJ and [0017] ofNopp: 'when time allows all channels in a map to be assessed using psychoacoustics or objective measures')." Ans. 14. We understand this position of the Examiner to be that Nopp suggests measuring the fitting response of each of the electrodes, and thus, each of the electrodes would be assigned to only one fitting response measurement method. However, that does not address the use of different response measurement methods for the plurality of electrodes, or having each electrode contact be assigned to only one fitting response measurement method as required by the claims. The Examiner also responds that Nopp is "like the claimed invention" in that it "discloses that each electrode contact is fit by a combination of fitting response measurements and interpolation values." Ans. 16 ( citing N opp ,r,r 10-11, 13, 17-25). While that finding is not entirely incorrect, it does not address the above noted deficiencies, or the fact that the claims require such combination ( using fitting response measurements and interpolation) for a plurality of different fitting response measurements. As evident from the discussion above, the Examiner's rejection appears to set forth multiple bases as to why Nopp anticipates the rejected claims, these bases rendering the rejection difficult to understand. See Reply Br. 3 ("[ w ]hatever further point the Examiner is attempting to make in the remainder of his discussion ( which Applicant struggles to parse) does no[]thing to alter the foregoing [i.e., that different fitting response measurement methods are required]."). We do not sustain this anticipation 5 Appeal2018-002867 Application 14/316,952 rejection based on our understanding thereof. There is no indication that Nopp discloses the recited "assigning to each of a plurality of different fitting response measurement methods, one or more electrode contacts such that each of the plurality of electrode contacts is assigned one and only one fitting response measurement method," or "fitting each electrode contact based on a weighted averaging of the fittings for the plurality of different fitting response measurement methods" as required by the independent claims. Accordingly, we reverse Rejection 1. Rejection 2 The Examiner rejects claims 6-8, 14--16, and 22-24 as being obvious over Nopp and Kals. Off. Act. 8. The Appellant relies on the same arguments set forth relative to Rejection 1, and dependencies in support of patentability of these claims. Appeal Br. 8. The Examiner's application of Kals does not address the deficiencies ofNopp discussed above. Accordingly, this rejection is also reversed. CONCLUSION The Examiner's rejections are REVERSED. REVERSED 6 Copy with citationCopy as parenthetical citation