Ex Parte Van Den Heuvel et al

Patent Trials and Appeals Board

May 16, 2019

13864700 - (D) (P.T.A.B. May. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/864,700 04/17/2013
110239 7590 05/20/2019
Edell Shapiro & Finnan LLC
9801 Washingtonian Blvd., Suite 750
Gaithersburg, MD 20878
FIRST NAMED INVENTOR
Koen Van Den Heuvel
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.
3065.0028CON 6981
EXAMINER
D ABREU, MICHAEL JOSEPH
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
05/20/2019 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):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOEN VANDENHEUVEL and JAN JANSSEN 1
Appeal2018-004633
Application 13/864,700
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Koen Van Den Heuvel and Jan Janssen ("Appellants") appeal under
35 U.S.C. § 134(a) from the Examiner's final rejection of claims 32--40. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellants' identify Cochlear Limited as the real party in interest. Br. 2.
Appeal2018-004633
Application 13/864,700
BACKGROUND
Appellants' invention relates to an implantable hearing prosthesis.
Sole independent claim 32, reproduced below, is representative of the
claimed invention, with certain limitations italicized:
32. A totally implantable hearing prosthesis comprising:
an implantable microphone configured to be implanted in
a recipient and to detect sound signals that include body-borne
n01se;
an implantable upgrade module configured to be
implanted in the recipient and to receive the sound signals from
the implantable microphone, and comprising a preprocessing
unit configured to convert the sound signals into noise-
suppressed audio signals from which the body-borne noise has
been substantially eliminated; and
an implantable main module, which is physically separate
from and electrically connected to the upgrade module,
configured to be implanted in the recipient and to receive the
noise-suppressed audio signals from the upgrade module, and
compnsmg:
a sound processing unit configured to generate stimulation
information based on the noise-suppressed audio signals
received from the preprocessing unit, and a stimulator unit
configured to generate stimulation signals based on the
stimulation information; and
a stimulation module configured to be implanted in the
recipient and to deliver the stimulation signals to the recipient.
Br. 22 (Claims App'x.).
REJECTIONS
I. Claim 36 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 2-3.
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Application 13/864,700
II. Claims 32-34 and 36-38 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Daly (US 2006/0052841 Al, pub. Mar. 9,
2006) and Kroll (US 6,342,035 Bl, iss. Jan. 29, 2002). Final Act. 4--5.
III. Claims 32, 35, and 38--40 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Kroll. Final Act. 5-7.
ANALYSIS
Rejection I: Definiteness of Claim 36
Appellants do not address the pending indefiniteness rejection, which
we therefore summarily sustain. See Br. 5.
Rejection II: Obviousness of Claims 32-34 and 36--38 over Daly and Kroll
Claim 32 recites, inter alia, "an implantable main module, which is
physically separate from and electrically connected to the upgrade module."
We understand the term "physically separate" to refer to a physical
separation of the modules, in a sense that the modules are not attached or
connected to each other. See Spec. ,r 34 ( differentiating the main module
120 having an attached electrode assembly 148 from a "physically separate"
upgrade module 106, which enables removal of the physically separate
upgrade module 106 without disturbing the remainder of the assembly so as
"easily replace or upgrade the components of module 106"). The Examiner
and Appellants appear to use the term in a manner consistent with our
understanding throughout the record before us. Physical separation is
depicted in Appellants' Figure 1, reproduced below.
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Appeal2018-004633
Application 13/864,700
103
(
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\ I \\
\ \
l l l
/ / l
I I /
.I I
/
100
\ FIG. 1
105
)
107
1
101
Figure 1 is "a perspective view of an exemplary totally implantable
cochlear implant," and shows physical separation of modules. Spec. ,r 13.
Appellants' cochlear implant 100 includes "upgrade module 106 [that] is
physically separate from implantable main module 120, and attached
electrode assembly 148." Id. ,r 34. Further, as shown in Appellants' Figure
2, the upgrade module 206A includes a pre-processing unit 246, whereas the
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Application 13/864,700
main module 220 includes a sound processing unit 222 allowing upgrades to
"support increases in the data transfer rate." Id. ,r 45; see also Fig. 2A.
The Examiner finds that Daly discloses, inter alia, an implantable
main module 120, 132 and an external upgrade module 126. Final Act. 4.
The Examiner finds that Daly discloses an alternate embodiment with "a
totally implantable prosthesis ... implemented as one or more implantable
components." Id. (citing Daly ,r 35). The Examiner considers Daly's
disclosure of "one or more implantable components" to encompass multiple,
separate components. Daly ,r 35. The Examiner finds that Daly's upgrade
module 126 does not use audio signals with body-borne noise substantially
eliminated, as recited in claim 32, but that it would be reasonable to expect
Daly's filters to do so. Final Act. 5.
The Examiner further finds that Kroll discloses noise filtering that
includes filtering body noise. Id. (citing Kroll, 3: 1-5; 15:28-36). The
Examiner concludes that it would have been obvious "to incorporate a
similar body noise filter" into Daly's system because eliminating body-borne
noise would "yield the predictable results of providing effective hearing
assistance to the patient." Id.
Appellants argue, inter alia, that the Examiner's combination of
references does not teach or suggest each of the recited claim elements. Br.
5. According to Appellants, Daly does not disclose "an implanted
configuration comprising an 'upgrade module' and an 'implantable main
module' where the 'preprocessing unit' and the 'sound processing unit' are
specifically segregated from one another in different physically separate
modules, as required in claim 32." Br. 11.
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Application 13/864,700
The Examiner responds that the claimed configuration is "a normal
routine change which is obvious in view of Kroll and based on the broad
functional limitations of the elements themselves." Ans. 2.
We disagree with the Examiner's assumption that Daly's disclosure of
multiple components reads on the claimed multiple separate components,
for the reason explained below.
Daly discloses a cochlear implant system embodiment in its Figure 1,
reproduced below.
B2 FIG. 1
106
' 107
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Application 13/864,700
Figure 1 is a perspective view of an exemplary hearing implant
system. Daly ,r 14. Daly's cochlear implant system 100 includes external
components 143 and internal components 144. Id. ,r,r 32-33 ("External
assembly 143 typically comprises microphone 124 for detecting sound, a
speech processing unit 126, a power source (not shown), and an external
transmitter unit 128," and "[i]nternal components 144 comprise an internal
receiver unit 132, a stimulator unit 120 and an electrode assembly 118").
Although some components are internal and some components are external,
each of Daly's components are shown to be connected or attached to another
component. Daly also discloses that "it may be possible to provide a fully
implantable system which incorporates the speech processor and/or
microphone into the internal component assembly 144." Id. ,r 32. The
Examiner identifies nothing in Daly's disclosure, however, that suggests
physically separating any of the parts or components in a fully implantable
system. Likewise, Daly's disclosure that "in alternative embodiments,
implant system 100 may be a totally implantable prosthesis[, wherein] ...
speech processor 116, including the microphone, speech processor and/or
power supply may be implemented as one or more implantable components"
(Daly ,r 35), does not suggest physically separating any of the parts or
components as part of a fully implantable system. Rather, this disclosure
may be satisfied by the external component( s) becoming part of the internal
component assembly. Further, the Examiner's characterization of Daly's
speech processing unit 126 as an upgrade module is not supported by the
disclosure of Daly, because Daly does not recognize the desirability of
replacing only a portion of an implantable prosthesis in order to remove one
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Application 13/864,700
module without disturbing the remainder of the assembly so as to replace or
upgrade the components.
For the reasons discussed above, the Examiner's finding that Daly
discloses the claimed physically separate components is not supported by a
preponderance of the evidence. The Examiner does not rely on the
disclosure of Kroll for this limitation. For this reason, we do not sustain the
rejection of claim 32 as unpatentable over Daly and Kroll. Claims 33, 34,
and 36-38 depend from claim 32, and we do not sustain the rejection of
these claims for the same reason.
Rejection III: Obviousness of Claims 32, 35, and 38--40 over Kroll
The Examiner finds that Kroll discloses most of the limitations of
claim 32, including an implantable main module that is physically separate
from an upgrade module, but not the components of the modules arranged as
claimed. Final Act. 6. Specifically, the Examiner acknowledges that Kroll's
implantable main module does not include a "sound processing unit and
stimulator unit for generating the stimulation information and signals," but
finds that the signal processing unit of Kroll' s upgrade module performs
these functions. Id. The Examiner concludes that it would have been
obvious "to incorporate the sound processing unit and stimulator unit into a
separate main module, since it has been held that constructing a formerly
integral structure in various elements involves only routine skill in the art."
Id. ( citing Nerwin v. Erlichman, 168 USPQ 177, 179 (BP AI 1969).
We find the Examiner's position to be unreasonable for the reasons
stated by the Appellants. Br. 16-20. Appellants are correct that Kroll does
not suggest sound processing in two different, physically separate
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components, because Kroll discloses that "hearing assistance device 200 ...
includes an 'electronics unit 205, an input transducer 210, and an integrally
formed input/output transducer 215," wherein electronics unit 205 is a single
processing unit, - thus, Kroll discloses "a single implanted unit that
includes a single processing unit." Br. 17-19 (citing Kroll, 8:1-13; Fig. 6).
Although we appreciate that the signal processing unit of Kroll' s
implantable module performs sound processing (see Final Act. 6), the
Examiner has not explained adequately why one of ordinary skill would
modify Kroll to remove part of the sound processing function performed by
Kroll's electronics unit 205 (a component of what the Examiner considers to
be the upgrade module) and then add this function to Kroll's input/output
transducer 215 (main module) that provides stimulation, in order to perform
two sound processing functions in physically separate modules.
The Examiner has not persuaded us that an artisan would have 1)
separated Kroll's sound processing functions and then 2) performed one
sound processing function in Kroll's implantable main module and
performed another sound processing function in Kroll's upgrade module that
is physically separate from the main module.
In addition, the Examiner's reliance on Nerwin v. Erlichman to
establish that it is per se obvious to separate a single component into two
components is misplaced. See Ex parte Kawano, Appeal No. 2011-002048,
2013 WL 603839, at *4 (PTAB Feb. 14, 2013). Nerwin does not establish
that it is per se obvious to separate a single component into two components.
On the record before us, the Examiner's conclusion of obviousness is
not supported by reasoning with rational underpinning of factual evidence.
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It follows that we do not sustain the § 103 rejection based on Kroll advanced
in this appeal.
DECISION
We AFFIRM the Examiner's rejection of claim 36 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
We REVERSE the Examiner's rejection of claims 32-34 and 36-38
under 35 U.S.C. § 103(a) as unpatentable over Daly and Kroll.
We REVERSE the Examiner's rejection of claims 32, 35, and 38--40
under 35 U.S.C. § 103(a) as unpatentable over Kroll.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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