Ex Parte Zimmerling

Patent Trial and Appeal Board

Sep 18, 2017

13932315 (P.T.A.B. Sep. 18, 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.
13/932,315 07/01/2013 Martin Zimmerling 1941/E22 5228
2101 7590 09/20/2017
Sunstein Kann Murphy & Timbers LLP
125 SUMMER STREET
BOSTON, MA 02110-1618
EXAMINER
FLORY, CHRISTOPHER A
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
09/20/2017 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 MARTIN ZIMMERLING
Appeal 2015-006619
Application 13/932,3151
Technology Center 3700
Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
FREDERICK C. LANEY, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Martin Zimmerling (“Appellant”) appeals under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1—8.2 Appellant’s
representative presented oral argument on September 6, 2017. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 According to Appellant’s Appeal Brief, Med-El Elektromedizinische
GmbH of Innsbruck, Austria is the real party in interest. Appeal Br. 2 (filed
Feb. 9, 2015).
2 Claim 9 is cancelled. Appeal Br. 10 (Claims App.).
Appeal 2015-006619
Application 13/932,315
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellant’s invention relates to magnetic elements used in
implantable medical devices usable with magnetic resonance imaging. Spec.
1, para. 2.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A magnetic arrangement for an implantable system for a
recipient patient, the arrangement comprising:
an implantable coil housing containing a signal coil for
transcutaneous communication of an implant
communication signal;
a cylindrical implant magnet freely rotatable within the
coil housing for transcutaneous magnetic interaction with a
corresponding external attachment magnet, the implant magnet
having:
i. a central cylinder axis of symmetry, and
ii. a magnetization direction along a magnetic axis
angled away from the axis of symmetry at a non-zero
angle less than 45 degrees.
REJECTION
I. The Examiner rejected claims 1—8 under 35 U.S.C. § 102(a) as
anticipated by Zimmerling et al. (US 2011/0264172 Al,
published Oct. 27, 2011, hereafter “Zimmerling”).
II. The Examiner rejected claims 1—8 under 35 U.S.C. § 103(a) as
being unpatentable over Zimmerling.
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Appeal 2015-006619
Application 13/932,315
ANALYSIS
Rejection I
Independent claim 1 requires, inter alia, “a magnetization direction
along a magnetic axis angled away from the axis of symmetry at a non-zero
angle less than 45 degrees.” Appeal Br. 9 (Claims App.).
The Examiner finds that Figures 7 A and 7B of Zimmerling present “a
magnetization direction along a magnetic axis angled away from the axis of
symmetry at a non-zero angle less than 45 degrees.” Final Act. 3 (citing
Zimmerling, paras. 27, 31, 36, 43) (transmitted Sept. 10, 2014). According
to the Examiner, Figures 7A and 7B of Zimmerling “show the real axis of
magnetization ... as differing from the axis of symmetry (i.e. 90 degrees by
about 10-20 degrees, i.e. non-zero angle less than 45 degrees).” Id.
Appellant argues that “the magnetization direction of the Zimmerling .
. . magnet 301 is clearly shown and described as being perpendicular to that
central cylindrical axis, i.e., at a 90 degree angle to the axis” and thus is not
“angled away from the axis of symmetry at a non-zero angle less than 45
degrees,” as called for by claim 1. Appeal Br. 6 (citing Zimmerling, Fig.
3B). According to Appellant, Zimmerling’s Figures 7A and 7B are “simply
not relevant to the magnetization direction with respect to the magnet’s
cylindrical axis of symmetry,” but rather is related to “the relationship
‘between the magnetic momentum of the implant magnet and the static
magnetic field of the MR scanner.’” Id. at 8.
In response, the Examiner takes the position that “the argued claim
limitation [noted above] does not specify what the magnetic axis is
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Appeal 2015-006619
Application 13/932,315
generated by or relative to.” Ans. 3 (transmitted May 6, 2015). According
to the Examiner,
The claim does not make reference to the magnetic dipole of
the magnet itself, nor does the Specification appear to clearly
and unambiguously define the magnetization direction or
magnetic axis to be equivalent to or a special definition for the
magnetic dipole.
Id.
Thus, the Examiner concludes that because “[t]he claimed magnetic
direction/magnetic axis is not necessarily the same as the magnetic dipole,”
Zimmerling’s Figures 7A and 7B “show an angle of a magnetic
axis/direction (the strong magnetic field of the MRI) being at an angle of
preferably 10-20 degrees, i.e. a non-zero angle of less than 45 degrees as
claimed.” Id. (citing Zimmerling, para. 31).
We do not agree with the Examiner’s position because claim 1
explicitly recites an “implant magnet” having “a central cylinder axis of
symmetry” and “a magnetization direction along a magnetic axis angled
away from the axis of symmetry.” See Appeal Br. 9 (Claims App.).
Moreover, we note that Appellant’s Specification explicitly defines the
claimed magnetization direction as a magnetic dipole orientation. See Spec.,
para. 16 (“The angular magnetization direction 303 (that is, the magnetic
dipole orientation).” As such, from the explicit language of independent
claim 1 and Appellant’s Specification, it is clear that the magnetization
direction (magnetic dipole orientation) of the implant magnet is along a
magnetic axis angled with respect to its axis of symmetry. See Reply Br. 2
(filed July 2, 2015).
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Appeal 2015-006619
Application 13/932,315
Furthermore, in contrast to the Examiner’s position, Zimmerling’s
Figures 7A and 7B do not show a non-zero angle of less than 45 degrees
between a direction of magnetization of the implant magnet with respect to
its axis of symmetry. Rather, Appellant is correct in that the implant magnet
in both Figures 7A and 7B has a magnetization direction “m” that is along
the plane of the magnet and thus forms a 90° angle with its axis of
symmetry. See Appeal Br. 6; see also Zimmerling, Fig. 3B. We further
agree with Appellant that Zimmerling’s Figures 7A and 7B show the angle
between the external MRI magnetic field B0 and the magnetization direction
“m” of the implant magnet, which is different from the claimed angle
between the magnetization direction of the implant magnet with respect to
its axis of symmetry. See Reply Br. 3. Accordingly, Zimmerling fails to
disclose a non-zero angle less than 45° between the magnetization direction
of the implant magnet with respect to its axis of symmetry, as called for by
independent claim 1.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 102(a) of independent claims 1, and its
dependent claims 2—8, as anticipated by Zimmerling.
Rejection II
The Examiner finds, in the alternative, that Zimmerling “does not
disclose expressly the magnetization being angled away from the axis of
symmetry at a non-zero angle of less than 45 degrees.” Final Act. 4. The
Examiner then concludes,
It would have been an obvious matter of design choice to a
person of ordinary skill in the art to modify the system as taught
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Application 13/932,315
by Zimmerling . . . with the recited angle being less than 45
degrees because Applicant has not disclosed that having a non­
zero angle of less than 45 degrees off the axis of symmetry
provides an advantage, is used for a particular purpose, or
solves a stated problem.
Id. (emphasis added). According to the Examiner, because
Zimmerling “contemplates angles for the dipole of the magnet itself ranging
from zero to 90 degrees” and paragraph 31 “discloses the advantages of
having that angle be less than 20 degrees or as close to zero as possible,” a
person of ordinary skill in the art would readily employ “routine
experimentation to select angles in between that 0-90 degree range.” Ans. 3.
In appropriate circumstances, a modification of prior art teachings
may be a matter of design choice. See In re Kuhle, 526 F.2d 553, 555
(CCPA 1975). However, merely asserting that the change is an obvious
design choice is insufficient. See Cutsforth, Inc. v. MotivePower, Inc., 636
Fed. Appx. 575, 578 (Fed. Cir. 2016) (unpublished) (stating that a particular
placement of an element is a design choice does not make it obvious; a
reason must be offered as to why a skilled artisan would have made the
specific design choice). Moreover, a proposed change that results in
different structure and function may not be an obvious design choice. E.g.,
Flour Tec, Corp. v. Kappos, 499 Fed. Appx. 35, 41—42 (Fed. Cir. 2012). In
this case, changing the angle between the magnetization direction “m” of
Zimmerling’s implant magnet with its axis of symmetry from 90 degrees to
a non-zero angle less than 45° would change the structure and function of
Zimmerling’s magnet as it would have a different magnetic field orientation
and, thus, would interact differently with an external MRI magnetic field B0.
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Application 13/932,315
We further do not agree with the Examiner’s finding that Zimmerling
contemplates a range of angles between zero and 90 degrees. See Ans. 3.
Zimmerling discloses that a zero degree angle between the magnetization
direction “m” of an implant magnet with respect to its axis of symmetry
results in generating a torque between the magnetic field of the implant
magnet and an external MRI magnetic field B0 that can damage the tissue of
a patient. See Zimmerling, para. 4, Figs. 2, 3 A. However, if the angle is 90
degrees, a reduced torque results. Id. at para. 31, Figs. 3B, 7A, 7B. Hence,
we agree with Appellant, that at most, Zimmerling discloses specific angles
of zero or 90 degrees between the magnetization direction “m” of an implant
magnet with respect to its axis of symmetry, but does not disclose any
intermediate angles. See Appeal Br. 7—8. Furthermore, with respect to the
Examiner’s interpretation of Zimmerling’s paragraph 31, the Examiner once
more fails to differentiate between the angle between the external MRI
magnetic field B0 and the magnetization direction “m” of the implant
magnet, which is different from the claimed angle between the
magnetization direction “m” of the implant magnet with respect to its axis of
symmetry. See Appeal Br. 8; Reply Br. 3.
Fastly, although we appreciate that “it is not inventive to discover the
optimum or workable ranges by routine experimentation,” nonetheless, the
Examiner has not shown by a preponderance of the evidence that the
claimed angular range of non-zero to 45 degrees was a known result-
effective variable. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed.
Cir. 2007). Moreover, Appellant is correct in that the Specification
describes specific advantages to providing the claimed magnetic field
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Application 13/932,315
orientation of a non-zero angle of less than 45 degrees between the
magnetization direction “m” of the implant magnet with respect to its axis of
symmetry.3 See Appeal Br. 7. Although Zimmerling discloses specific
angles of zero or 90 degrees between the magnetization direction “m” of an
implant magnet with respect to its axis of symmetry, this does not mean that
every magnetic field orientation is obvious to try, without evidence or
reasoning tending to demonstrate the obviousness of the particularly claimed
configuration.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103(a) of independent claims 1, and its
dependent claims 2—8, as unpatentable over Zimmerling.
SUMMARY
The Examiner’s decision to reject claims 1—8 under 35 U.S.C. §§ 102
and 103 is reversed.
REVERSED
3 Such advantages are (1) no weakening of the magnetic field strength of the
implant magnet when the patient undergoes an MRI procedure; (2)
compatibility with an external magnetic device that is axially-magnetized;
and (3) achieving the same magnetic attraction between the implant magnet
and an external magnet without requiring much more magnetic material than
for an axially-magnetized magnet. See Spec., paras. 19, 20.
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