Göran Björn et al.

Patent Trials and Appeals Board

Oct 16, 2019

13270691 - (D) (P.T.A.B. Oct. 16, 2019)

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.
13/270,691 10/11/2011 Göran BJÖRN 5441-320 3331
111614 7590 10/16/2019
Pilloff & Passino LLP
2000 Duke Street
Suite 300
Alexandria, VA 22314
EXAMINER
KUHLMAN, CATHERINE BURK
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
10/16/2019 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):
mail@pilloffpassino.com
mcosenza@pilloffpassino.com
rpilloff@pilloffpassino.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GÖRAN BJÖRN,
STEFAN MAGNANDER, and MARCUS ANDERSSON
__________________

Appeal 2018-001567
Application 13/270,691
Technology Center 3700
____________________

Before EDWARD A. BROWN, JAMES P. CALVE, and JILL D. HILL,
Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 1–17, 19, 20, and 23–38. We have
jurisdiction under 35 U.S.C. § 6(b). Appellant presented argument at an oral
hearing conducted on September 26, 2019.
We AFFIRM-IN-PART.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Cochlear Limited. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claims 1, 13, 25, 28, and 31 are independent. Claim 1 is below.
1. A bone conduction implant, comprising:
a bone fixture including a male screw section configured
to screw into a skull; and
an abutment configured to be rigidly attached to the bone
fixture,
wherein the abutment includes an exterior surface
diameter lying on a first plane normal to a longitudinal axis of
the bone conduction implant that is less than or substantially
equal to the maximum thread diameter of the male screw
section of the bone fixture.

REJECTIONS
Claims 34 and 38 are rejected as directed to patent-ineligible subject
matter under a judicial exception to 35 U.S.C. § 101.2
Claims 1–6, 8, 9, 11, 31, and 32 are rejected under 35 U.S.C. § 102(b)
as anticipated by Shepard (US 2009/0263763 A1, published Oct. 22, 2009).
Claims 1, 4, 7, and 13–17 are rejected under 35 U.S.C. § 102(b) as
anticipated by Al-Attar (US 2009/0298015 A1, published Dec. 3, 2009).
Claims 1, 8, and 10 are rejected under 35 U.S.C. § 102(b) as
anticipated by Lazzara (US 5,879,161, issued Mar. 9, 1999).
Claims 19, 20, 25, and 26 are rejected under 35 U.S.C. § 102(b) as
anticipated by D’Alise (US 2007/0298379 A1, published Dec. 27, 2007).
Claims 28 and 29 are rejected under 35 U.S.C. § 102(b) as anticipated
by Niznick (US 4,645,453, issued Feb. 24, 1987).
Claims 31 and 33–38 are rejected under 35 U.S.C. § 102(b) as
anticipated by Westerkull (US 2006/0050913 A1, published Mar. 9, 2006).

2 The Examiner withdrew the rejection of claim 33 on this ground. Ans. 2.
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Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Shepard and Parker (US 2009/0248085 A1, published Oct. 1, 2009).
Claims 23 and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Al-Attar and König (US 2010/0196850 A1, published
Aug. 5, 2010).
Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable over
D’Alise and Shepard.
Claim 30 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Parker and Niznick.
ANALYSIS
Patent Eligibility of Claims 34 and 38
Appellant does not present argument for this rejection. See Appeal
Br. 6–185; see also Ans. 2. Therefore, we summarily sustain this rejection.
Claims 1–6, 8, 9, 11, 31, and 32 as Anticipated by Shepard
Appellant argues claims 1, 2, 5, 6, 9, 31, and 32 as a group. Appeal
Br. 21–79. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv).
Claims 1, 2, 5, 6, 9, 31, and 32
Regarding claim 1, the Examiner finds that Shepard discloses a bone
fixture (implant 116) with a screw section (threads 120) configured to screw
into a skull (jaw) and an abutment 82 configured to rigidly attach to the bone
fixture with an exterior surface diameter (shaft 101) that is less than or equal
to the maximum thread diameter of the screw section. Final Act. 3 (citing
Shepard ¶ 55, Fig. 29); Ans. 10. The Examiner interprets “bone conduction
implant” in the preamble as an intended use of the device recited in the body
of the claim (Final Act. 13–14) and finds that Shepard discloses such a bone
conduction implant with structure as recited in the body of claim 1 (id. at 3).
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Appellant argues that Shepard is directed to a dental implant and
provides no statement about bone conduction, hearing, sound, or vibration.
Appeal Br. 23. Appellant argues that “the mere capability of Shepard’s
implant to allow use as a bone conduction device is not the inquiry that the
Examiner should have made” and the Examiner “here instead should have
determined whether [Shepard’s] machine, when used as intended by
[Shepard], would necessarily or inherently provide the claimed bone
implant features.” Id. at 25, 30. Appellant cites In re Giannelli, 739 F.3d
1375 (Fed. Cir. 2014) in support of this position. Id. at 24–31.
Giannelli is not relevant to the issue of whether “a bone conduction
implant” in the preamble is given patentable weight or treated as a statement
of intended use as the Examiner has done. Giannelli interpreted the phrase
“adapted to” in the limitation “a first handle portion adapted to be moved
from a first position to a second position by pulling force exerted by a user
on the first handle portion in a rowing motion” recited in the claim body to
mean that “the claimed machine is designed or constructed to be used as a
rowing machine whereby a pulling force is exerted on the handles.”
Giannelli, 739 F.3d at 1376, 1379 (emphasis added). The Court relied on
the Specification’s description of the handle portion “enabl[ing] a user to
maintain biomechanical alignment of the user’s wrist and forearm during
performance of the exercise, while maintaining a consistent resistance
applied to the muscles, in the stability of an exercise machine.” Id. at 1380
(quoting the #261 application, at 3). The Court also cited the description of
“[t]he location of those handles relative to the other components [a]s one of
their structural attributes that enables performance of the rowing motion
against the selected resistance.” Id. (citing ’261 application, at 4).
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As noted, the phrase “adapted to” appeared in a limitation in the body
of the claim in contrast to claim 1, which does not recite “adapted to” in the
claim. Because “adapted to” was given patentable weight and construed
narrowly in the claims of Giannelli, the prior art had to disclose handles that
are “made to,” “designed to,” or “configured to” allow the user to perform a
rowing exercise by pulling on the handles rather than handles that are
capable of being pulled. Id.
Here, claim 1 uses “configured to” in the claim body to describe the
bone fixture and abutment. The parties agree that the use of “configured to”
in claim 1 imparts structure to “a bone fixture” and “an abutment.”
A separate issue exists as to what weight is given to “bone conduction
implant” in the preamble of claim 1. The Examiner interprets the preamble
as a statement of purpose or intended use of the abutment and bone fixture
recited in the body of the claims and does not accord any patentable weight
to the preamble because it does not impart any structure to those elements.
Final Act. 13–14; Ans. 3. Thus, “a device for anchoring structures to the
skull meets the limitation of the claimed bone conduction implant.” Ans. 4;
id. at 5 (“There are no structural or functional limitations recited in the
claims which are not shown in the prior art dental implant references.”); id.
at 9 (“this limitation does not connote any additional structure”).
Appellant argues that “a bone conduction implant” in the preamble
should be given patentable weight and the capability of the prior art dental
implants to be used as a bone conduction device is not the issue. Appeal Br.
21–31. Appellant argues that the Examiner must show Shepard expressly or
inherently teaches that its dental implant is “capable of securing a vibrator to
the skull for conducting sound to the ear.” Id. at 32–34; Reply Br. 22–29.
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Appellant argues that “[a] bone conduction implant” should be treated
as a limitation but fails to identify any features that are imparted to claim 1
except that the prior art should be “capable of securing a vibrator to the skull
for conducting sound to the ear.” Appeal Br. 7–14, 17–40; Reply Br. 22–29.
We interpret “[a] bone conduction implant” in the preamble of claim 1
as a statement of intended use or purpose of the bone fixture and abutment
recited in the body of the claim. This interpretation is consistent with the
claim language because the body of claim 1 recites a structurally complete
device and does not rely on the preamble’s recital of “[a] bone conduction
implant” for life and meaning. Claim 1 recites that the abutment includes an
exterior surface diameter “lying on a first plane normal to a longitudinal axis
of the bone conduction implant . . .,” but this reference back to the preamble
merely acknowledges that the two elements of the bone fixture and abutment
form the bone conduction implant having a longitudinal axis and does not
impart any further meaning or recite any essential structure that gives life,
meaning, and vitality to the claim. E.g., Arctic Cat Inc. v. GEP Power
Prod., Inc., 919 F.3d 1320, 1328 (Fed. Cir. 2019) (“in the preambles, the
reference to a ‘personal recreational vehicle’ merely identifies an intended
use for the claimed power distribution module.”); IMS Tech., Inc. v. Haas
Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000) (“The phrase
‘control apparatus’ in the preamble merely gives a descriptive name to the
set of limitations in the body of the claim that completely set forth the
invention.”); Howmedica Osteonics Corp. v. Zimmer, Inc., 640 F. App’x
951, 956 (Fed. Cir. 2016) (holding “a medical implant” in the preamble did
not limit the claims where “[t]he body of each claim describes a structurally
complete invention”) (non-precedential).
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Our interpretation is consistent with the Specification, which discloses
that a “bone conduction implant” is used to connect a vibrator to the skull
and comprises two components (1) a bone attachment piece such as a bone
fixture attached or implanted directly to the skull and (2) a skin penetrating
piece attached to the bone attachment piece and referred to as an abutment.
Spec. ¶ 3. Reciting “[a] bone conduction implant” in the preamble merely
provides a label for the abutment and bone fixture recited in the body of
claim 1. It recites an intended use of those claimed structures.
Appellant argues that a bone conduction implant must be “capable of
securing a vibrator to the skull for conducting sound to the ear” but does not
identify features of its own invention that provide this capability. Appeal
Br. 24–34; Reply Br. 22–48. Lacking such an understanding of the features
of Appellant’s invention that secure a vibrator to the skull for conducting
sound to the ear, we cannot discern what structure Appellant is alleging is
missing from the prior art.
Claim 1 recites “an abutment configured to be rigidly attached to the
bone fixture.” It does not recite structure that attaches to a vibrator. We do
not read such unclaimed features into claim 1. E.g., In re Van Geuns, 988
F.2d 1181, 1184–85 (Fed. Cir. 1993). Claim 12 depends from claim 1 and
recites “a magnetic implant abutment coupling located proximate to the
exterior surface diameter [of the abutment] configured to releasably
magnetically couple to a removable component of a bone conduction
device.” Appeal Br. 83 (Claims App.).3 This recital in claim 12 creates a
presumption the feature is not present in claim 1. E.g., Inline Plastics Corp.
v. EasyPak, LLC, 799 F.3d 1364, 1371 (Fed. Cir. 2015) (citation omitted).

3 The Claims Appendix was filed with the Appeal Brief filed Jan. 27, 2017.
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Claims 19 and 20 recite “a coupling component located at an end
portion of the abutment that is a male coupling component configured to be
received in and coupled to a coupling adapter of an operationally removable
component of a bone conduction device” and “a bulbous outer profile that
forms a ball-joint when coupled to a coupling adapter of an operationally
removable component of a bone conduction device.” Id. Claim 30 recites:
a magnetic implant abutment coupling removably attached
to the abutment, the magnetic implant abutment including a
first permanent magnet, and
an operationally removable component of the bone
conduction device, the operationally removable component
including a vibrating actuator and a coupling adapter, the
vibrating actuator being in vibrational communication with the
coupling adapter, the coupling adapter including a second
permanent magnet,
wherein the magnetic implant abutment is configured to
magnetically couple to the coupling adapter via magnetic
attraction between the first and second permanent magnets so as
to establish a vibrational conductive path between the coupling
adapter and the magnetic implant abutment.

These claims recite various features used to attach the abutment to
other devices. They indicate that the abutment lacks sufficient structure to
attach directly to devices such as a vibrator of a bone conduction device.
During examination, claims are given their broadest reasonable
interpretation because “the applicant may freely amend the claim language
to clarify the scope of the claim.” PPC Broadband, Inc. v. Corning Optical
Commc’ns RF, LLC, 815 F.3d 734, 740 (Fed. Cir. 2016) (quoting In re Zletz,
893 F.2d 319, 321 (Fed. Cir. 1989) (“[D]uring patent prosecution when
claims can be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed.”)); see Ans. 6–7.
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The holding in Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951) also
supports our interpretation of “bone conduction implant” as an intended use.
In that case, the issue was whether “[a]n abrasive article” in the preamble of
claim 1 should be treated as a limitation. Id. at 151. Claim 1 recited:
1. An abrasive article comprising abrasive grains and a
hardened binder comprising the additive reaction product of a
substantially neutral unsaturated monomeric material and an
unsaturated esterification product of an aliphatic alcohol and a
polybasic acid.

Id. at 150 (emphasis added). Appellant sought to show in an interference
proceeding that his 1938 application, which disclosed fillers and binders,
supported a claim to an abrasive article of the counts. Id. at 151.
The Court held that “[a]n abrasive article” was essential to point out
the invention because “[t]he term calls forth a distinct relationship between
the proportions of grain and resin comprising the article” and “[e]very union
of substances capable inter alia of use as abrasive grains and a binder is not
an ‘abrasive article.’” Id. at 152. The 1938 application disclosed “fillers”
that could be considered abrasive grains, but it described the “fillers” with
other substances that are not to be used as abrasive grains. Id. The 1938
application also described resin fillers but with no suggestion that they be
mixed with these substances as abrasive grains. Id.
The record fairly establishes that the proportions of silicon
carbide, sand, or other substances customarily added to a
resinous composition as a filler are distinctly and greatly
different than the proportions generally regarded in the abrasive
industry as appropriate where “filler” substances, usable as
abrasive grains, are mixed as such with a resinous binder to
produce an abrasive article.

Id. at 152–53.
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The Court found that adding these substances (silicon carbide, sand,
and granite dust) in the proportions used for “fillers” would not yield an
abrasive article as understood in the art. Id. at 152. The evidence showed
that bonded abrasives used no less than 70% abrasive grain for an abrasive
article but a lesser percentage of such substances were used as “fillers.” Id.
at 153. Similarly, the relative proportions of resin and abrasive grains in an
abrasive article were on the order of 12% to 15% and no more than 20%
bond with at least 70% abrasive grain. Id.
In contrast to these proportions used to make an abrasive article, using
these same substances as fillers in a resin composition could result in a filler
substance being 50% or less of the resin composition. Id. at 154. In view of
this evidence, the Court held that the 1938 application’s disclosure of these
substances as “fillers” to be used in resin compositions would not be used by
a resin artisan practicing the 1938 application’s suggestion to add silicon
carbide or sand to resins to produce an abrasive article as that term is used
and understood in the abrasives industry. Id.
Unlike the factual situation in Kropa v. Robie, we have no evidence of
purported differences in abutments and bone fixtures of a bone conduction
implant and a dental implant. Shepard discloses the claimed configurations
of both elements as discussed above. Both implants are implanted through
skin into the skull. Shepard ¶ 58, Fig. 15. Shepard’s system can retain a
facial prosthesis such as an ear. Id. ¶ 51. The abutments of both implants
couple to other devices. The Specification describes a wide variety of such
couplings as discussed above and indicates that any type of coupling may be
used that permits embodiments to be practiced in addition to the disclosed
magnetic, ball-joint, snap, and positive retention couplings. Spec. ¶ 77.
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Absent an express definition in the Specification or limitations in the
claim, we do not interpret “abutment” to have coupling/attachment features
for unclaimed bone conduction devices that are described in general terms in
the Specification. Spec. ¶¶ 22–26, 68, 71–77, 90, Figs. 1–8. Appellant’s
arguments regarding Shepard’s lack of such coupling features (Appeal Br.
16–50; Reply Br. 28–29) are not commensurate with the scope of claim 1.
To rely on such features for patentability, they must be recited in claim 1.
Appellant also argues that the “Examiner provides absolutely no
support whatsoever for the assertion that Shepard expressly or inherently
discloses an abutment configured to be rigidly attached to a bone fixture.”
Appeal Br. 51–52. This argument is not persuasive because the Examiner
finds that Shepard’s abutment 82 rigidly attaches to bone fixture 116 via
threaded screw portion 114. Final Act. 3. As the Examiner correctly finds,
Appellant’s Specification discloses abutment 220 is configured to rigidly
attach to bone fixture 210 by screwing male threads of the abutment into an
interior bore of the bone fixture. Ans. 8–9 (citing Spec. ¶¶ 7, 20, 27, 69, 80).
The Examiner also correctly finds that Shepard discloses a screw connection
between abutment 82 and bone fixture 116, and such screw connections are
known in the art to provide rigid connections. Id. at 8 (citing Shepard ¶ 57).
In response to these findings, Appellant argues that “the examiner
does not notice and does not address [] that the rigid attachment disclosed in
Appellant’s specification is an attachment that enables the conduction of
vibrations from the abutment to the bone fixture to evoke a hearing percept”
and this feature is not disclosed in Shepard. Reply Br. 50. Appellant also
argues that there are many classes of screw connections and fits, and there is
no need for a rigid attachment in the prior art devices. Id. at 50–52.
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The Examiner has the better position. The Specification describes the
rigid connection of abutment 220 to bone fixture 210 as follows:
To rigidly connect the abutment 220 to the bone fixture 210,
abutment screw 230 is screwed into bore 250 of bone fixture
210. In an exemplary embodiment, a healthcare provider
utilizes a male hex head wrench (e.g., an allen wrench) inserted
into upper bore 280 and into internal bore 272 of bone fixture
210 to apply torque thereto to secure the abutment 220 to the
fixture 210.

Spec. ¶ 80. Neither claim 1 nor the Specification prescribes a particular
torque for the rigid connection of abutment 220 and bone fixture 210 beyond
screwing abutment screw 230 into inner threads 251 of bone fixture 210 to
pull abutment 230 to fixture 210. Id. ¶¶ 27, 40, 80, Figs. 2–6. “As may be
seen [in Figure 2], the abutment screw 230 connects and holds the abutment
220 to the fixture 210, thereby rigidly attaching abutment 220 to bone fixture
210.” Id. ¶ 27; see also Ans. 8–9. Figure 2 is reproduced below.

Appellant’s Figure 2 above illustrates bone conduction implant 200 on
the left and in section view on the right with abutment 220 rigidly connected
to fixture 210 via abutment screw 230 that pulls the elements together.
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The Examiner correctly finds that Shepard discloses a similar rigid
connection because abutment 82 has threads 114 that screw into threaded
aperture 121 of fixture 116 to draw these elements together. Shepard ¶ 57,
Figs. 19–23; Ans. 8–9. Because Shepard teaches the claimed structure of an
abutment and bone fixture that screw together, the Examiner had an
adequate reason to find that Shepard teaches the claimed rigid attachment.
See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (holding that a
patent applicant may describe an apparatus structurally or functionally but
where a functional feature is claimed and the PTO has a reason to believe
that the feature is an inherent characteristic of the prior art, it can require the
applicant to prove that the prior art structure does not have the functional
characteristic) (quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)).
In Schreiber, claim 1 recited “[a] dispensing top for passing only
several kernels of a popped popcorn at a time from an open-ended container
filled with popped popcorn, having a generally conical shape and an opening
at each end, the opening at the reduced end allows several kernels of popped
popcorn to pass through at the same time . . . .” Id. at 1475. The Examiner
rejected claim 1 as anticipated by the Harz patent, which disclosed a spout
for nozzle-ready canisters that may be tapered inwardly in a conical manner
and is useful for dispensing oil from an oil can. Id.
The Court held in that case that “the recitation of a new intended use
for an old product does not make a claim to that old product patentable.” Id.
at 1477 (citations omitted) (“Accordingly, Schreiber’s contention that his
structure will be used to dispense popcorn does not have patentable weight if
the structure is already known, regardless of whether it has ever been used in
any way in connection with popcorn.”).
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Because the opening of the conically-shaped top of Harz’s device was
inherently of a size sufficient to allow several kernels of popped popcorn to
pass through at the same time, as claimed, Harz established a prima facie
case of anticipation, and the burden shifted to Schreiber to show the prior art
structure did not inherently possess the functionally defined limitation of the
claimed apparatus. Id. at 1478. Schreiber failed to do so. Id.
Here, Appellant’s arguments about different screw thread fits are not
commensurate with the scope of claim 1. See Reply Br. 50–52. Nor do they
persuade us that Shepard lacks this capability of a rigid attachment where
Shepard’s abutment 82 and threaded portion 114 screw into bone fixture 116
so the lower surface of the top abutment 82 is pressed tightly against the top
surface of lower bone fixture 116 with no space in between their surfaces or
threaded portions, similar to Appellant’s illustration of a rigid connection in
Figure 2 above. See Shepard ¶¶ 22, 26, 57, Figs. 15, 19, 22. Appellant has
not carried its burden of showing that Shepard’s structure lacks this function.
Appellant’s arguments and evidence also are not persuasive in view of
the Specification’s disclosure that any abutment screw of any type, size or
geometry may be used in some embodiments provided the abutment screw
permits embodiments detailed herein and variations thereof to be practiced.
Spec. ¶ 43. In addition, the bone fixture includes outer screw threads 215
“configured to be installed into the skull 136” and the fixture may be made
of any material that can integrate into surrounding bone tissue by exhibiting
osseointegration characteristics, e.g., titanium. Id. ¶ 30. Furthermore, the
Specification discloses that any bone fixture of any type, size, or having any
geometry may be used in embodiments therein as long as it permits
embodiments detailed herein and variations to be practiced. Id. ¶ 39.
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Because Shepard discloses a bone fixture and abutment with the
structure recited in claim 1, the Examiner had a reason to find that Shepard’s
bone fixture 116 performs the claimed functions of a male screw section
configured to screw into a skull, and abutment 82 is configured to be rigidly
attached to the bone fixture. Shepard discloses external threads 120 that are
configured to thread into jaw bone structure 57. Shepard ¶ 58. Abutment 82
includes a threaded portion 114 that is configured to screw into an internally
threaded implant aperture 121 of bone fixture 116 to draw the abutment 82
into contact with the fixture 116 as discussed above. Id. ¶ 57, Figs. 19, 22.
Even if we were to read into claim 1 a requirement that the implant must be
capable of conducting sound from a vibrator to a human skull, Shepard’s
implant can likewise perform that function because it has the claimed
structures that provides this function. It has a rigid attachment. It screws
into the skull. Abutment head 105 attaches to devices including a prosthetic
ear. See id. ¶¶ 51–58, Fig. 15; Schreiber, 128 F.3d at 1478. Appellant’s
attorney argument is not evidence that Shepard lacks this capability.
Next, Appellant argues that Shepard’s drawings cannot be relied on to
teach “the abutment includes an exterior surface diameter lying on a first
plane normal to a longitudinal axis of the bone conduction implant that is
less than or substantially equal to the maximum thread diameter of the male
screw section of the bone fixture” as recited in claim 1. Appeal Br. 53–54.
In particular, Appellant argues that Shepard does not disclose the drawings
as being to scale; therefore, “it is well-established that patent drawings do
not define the precise proportions of the elements and may not be relied on
to show particular sizes if the specification is completely silent on the issue.”
Id. at 54 (citing MPEP § 2125); Reply Br. 53–54.
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We agree that “patent drawings do not define the precise proportions
of the elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue.” Hockerson-Halberstadt, Inc.
v. Avia Group. Int'l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). “[A]rguments
based on measurements of a drawing are of little value” if there is no written
description in the specification of quantitative values or no indication that
the drawings are to scale. In re Wright, 569 F.2d 1124, 1127 (CCPA 1977);
Go Med. Indus. Pty, Ltd. v. Inmed Corp., 471 F.3d 1264, 1271 (Fed. Cir.
2006). However, “a drawing is available as a reference for all that it teaches
a person of ordinary skill in the art.” In re Meng, 492 F.2d 843, 847 (CCPA
1974; see also In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (same).
Furthermore, things shown clearly in patent drawings are not to be
disregarded. In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). Therefore, “a
drawing in a utility patent can be cited against the claims of a utility patent
application even though the feature shown in the drawing was unintended or
unexplained in the specification of the reference patent.” Aslanian, 590 F.2d
at 914; see also In re Seid, 161 F.2d 229, 231 (CCPA 1947) (“an accidental
disclosure, if clearly made in a drawing, is available as a reference.”).
In this case, claim 1 merely requires the abutment to have an exterior
surface diameter that is “less than or substantially equal to the maximum
thread diameter of the male screw section of the bone fixture.” No particular
dimensions or proportions are claimed. We agree with the Examiner that the
drawings of Shepard clearly disclose to a skilled artisan that abutment 82 has
exterior surfaces with a diameter that is “less than or substantially equal to
the maximum thread diameter of the male screw section of the bone fixture”
as claimed. Shepard’s Figures 15, 19, 22, and 29 are reproduced below.
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Figure 15 is a sectional view of the system of Figure 13. Figure 19 is
a side elevation of an abutment of the system of Figure 13. Figure 22 is a
side elevation of an implant for the abutment of Figure 19. Figure 29 is a
side elevation view of a modified abutment of the Figure 13 system in which
the abutment and fixture are integral. Shepard ¶¶ 22, 26, 29, 34, 55–59.
As shown in Figures 15 and 22, bone fixture 116 has external threads
120 having a maximum thread diameter substantially equal to a diameter
defined by surface 119 in Figure 22. Figure 15 illustrates upper abutment 82
having an exterior surface (base portion 106 in Figure 19) with the same
diameter as the diameter of upper surface 119 of lower bone fixture 116 and
therefore, it is substantially equal to external threads 120. Because exterior
surfaces 106 and 119 have the same diameter, their exterior surfaces appear
even/flush in Figure 15. Figure 29 also illustrates these same flush exterior
surfaces substantially equal to bone fixture thread outer diameter. Shepherd
discloses bone fixture 116 with an upper smooth, cylindrical surface 119 and
external threads 120 extending to second end 118. Shepard ¶ 57. Surface
119 includes flat upper end 117 of the same outer diameter as flat bottom
113 of abutment 92 and these two flat surfaces contact one another as shown
in Figures 15, 19, and 22 indicating the similarity of their outer diameters.
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Figures 19–23 of Shepard disclose exterior abutment surfaces 106,
109 with diameters substantially equal to the maximum diameter of threads
120 of the bone fixture. Figure 15 and the related embodiment of Figure 29
(Shepard ¶ 59) clearly show the exterior surface diameter of abutment 106 as
being substantially equal to the exterior diameter of external threads of
fixture 116. See Aslanian, 590 F.2d at 912, 915 (finding prior art drawings
anticipated the claimed structure including a rearward convex portion having
a height approximately corresponding to the first convex portion).
Thus, we sustain the rejection of claim 1 and claims 2, 5, 6, 9, 31, and
32, which fall therewith.
Claims 3, 4, and 8
Claim 3 recites “at least a first portion of an exterior surface of the
abutment extends along the longitudinal axis for 100% of a longitudinal
length of the abutment” and has “additional exterior surface diameters . . .
having a maximum length that is less than or substantially equal to the
maximum thread diameter of the male screw section of the bone fixture.”
The Examiner finds that Shepard discloses an abutment exterior
surface that extends for 100% of a longitudinal length of the abutment and
has additional exterior surface diameters with a maximum length that is less
than or substantially equal to the maximum thread diameter of the male
screw section of the bone fixture as recited in claim 3. Final Act. 4. The
Examiner reasons that this abutment exterior surface also includes a first
portion extending along 30–70% and along 70–90% of its longitudinal
length as recited in claims 4 and 8, and these first portions have a maximum
length that is less than or substantially equal to the maximum thread
diameter of the male screw section of the bone fixture. Id.; Ans. 10–11.
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Appellant argues that claim 3 requires all additional exterior surface
diameters to have a maximum length that is less than or substantially equal
to the maximum thread diameter of the male screw section of the bone
fixture, and the drawings of Shepard are lousy drawings that are not to scale
and do not disclose this feature. Appeal Br. 55–56. Appellant also argues
that if claim 3 is anticipated by Shepard’s drawings, then claim 4 cannot be
anticipated because the feature of the first portion that extends from the bone
fixture must be 30% to 70% of the length of the abutment cannot be met. Id.
at 62–63. Appellant also argues that the Examiner relies on element 116 but
this element is not shown in Figure 29. Id. at 63. Appellant then argues that
Figure 29 shows the base of the abutment is wider than the threads. Id.
The Examiner clarifies that Figures 19–23 disclose this feature and the
embodiment of Figure 29 is not relied on for these portions. Ans. 10.
We find Figures 19–23 of Shepard sufficiently clear to show that all
diameters of the outer surfaces of the abutment, e.g., peripheral surface 109,
shaft portion 101, base portion 106, are less than or substantially equal to the
maximum diameter of threads 120 of bone fixture, as recited in claim 3. In
addition, Figure 15 and the related embodiment of Figure 29 support this
finding as discussed above. These elements have circular cross-sections as
illustrated in Figures 20, 21, and 23. Because the entire exterior surface of
the abutment is less than or substantially equal to the maximum thread
diameter, first portions of that abutment that extend about 30% to about 70%
and about 70% to about 90% of the longitudinal length of the abutment also
are less than or substantially equal to the maximum thread diameter (versus
all thread diameters) as recited in claims 4 and 8.
Thus, we sustain the rejection of claims 3, 4, and 8.
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Claim 11
Claim 11 depends from claim 8 and recites that “all additional exterior
surface diameters are a length that is less than or equal to about two thirds of
the maximum thread diameter of the male screw section of the bone fixture.”
The Examiner relies on narrowed abutment shaft 101 in Figure 19 of
Shepard for this limitation. Ans. 11–12; see Final Act. 5. Appellant argues
that the drawings are not to scale and thus this feature cannot be discerned
from Figures 19 or 29 of Shepard. Appeal Br. 72–75; Reply Br. 59–63.
We agree with the Examiner that Figures 19–23 show all abutment
exterior surface diameters as less than or substantially equal to the maximum
thread diameter of the fixture and abutment shaft portion 101 as having an
exterior surface diameter that is less than the maximum thread diameter, but
we cannot say with any certainty that this reduced shaft portion 101 diameter
is less than or equal to about two thirds of the maximum thread diameter of
the male screw section of the bone fixture as recited in claim 11. Such
precise proportions cannot be discerned from these drawings.
Thus, we do not sustain the rejection of claim 11.
Claims 1, 4, 7, and 13–17 as Anticipated by Al-Attar
Claims 1 and 13
Regarding claim 1, the Examiner finds that Al-Attar discloses a bone
fixture (implant 10) including a male screw section configured to screw into
a skull (jaw) and an abutment (digital abutment 50) configured to rigidly
attach to the bone fixture via screw 70. Final Act. 5, 6. The Examiner also
finds that Al-Attar discloses an abutment with an exterior surface diameter
that is less than or substantially equal to the maximum thread diameter of the
male screw section of the bone fixture as claimed. Id.
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Appellant argues that Al-Attar discloses a dental implant, which is not
a bone conduction implant for hearing, sound, or vibration. Appeal Br. 81–
82. Appellant also argues that Al-Attar is incapable of securing a vibrator to
the skull for conducting sound to the ear for the reasons discussed for the
rejection based on Shepard. Id. at 83–92. Appellant argues that element 50
of Al-Attar is incompatible with the vibrator of Appellant’s disclosure. Id.
at 91. Appellant asserts that a general visual similarity between Appellant’s
disclosure and Al-Attar’s teachings does not support a finding that Al-Attar
is capable of securing a vibrator to the skull for conducting sound to the ear.
Reply Br. 67.
As discussed above, “bone conduction implant” in the preamble of
claim 1 is a statement of intended use. The same holds true for claim 13,
which recites a structurally complete apparatus of an abutment and bone
fixture similar to claim 1. Appellant’s arguments are not commensurate
with the scope of claims 1 and 13, and therefore are not persuasive.
Appellant also argues that Al-Attar does not disclose an abutment that
is configured to be rigidly attached to a bone fixture. Appeal Br. 93–94. As
with the previous rejection based on Shepard, the Examiner has a sound
basis to find that Al-Attar discloses an abutment configured to be rigidly
attached to the bone fixture based on the screw connection between the two
elements illustrated in Figure 8. Final Act. 5, 6; Ans. 8. Al-Attar describes
this configuration as securing digital abutment 50 to the fixture 10. Al-Attar
¶ 39. Appellant’s attorney arguments do not persuade us that Al-Attar is not
capable of rigidly attaching abutment 50 and fixture 10 when Al-Attar has
the claimed configuration. Appellant’s reliance on arguments made for
Shepard also is unpersuasive here. See Appeal Br 93–94; Reply Br. 69.
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Regarding the Examiner’s reliance on Figure 8 of Al-Attar to disclose
an abutment exterior surface diameter that is less than or substantially equal
to the maximum thread diameter of the bone fixture as recited in claim 1,
Appellant argues that the drawings are not to scale and cannot be relied on to
disclose proportions of features therein. Appeal Br. 95–96.
These arguments are not persuasive for the reasons discussed for
Shepard, namely, Figure 8 of Al-Attar clearly shows a section view in which
the exterior surface diameter of digital abutment 50 is substantially equal to
or less than the maximum thread diameter of the screw section of implant 10
as recited in claim 1. Appellant’s arguments do not persuade us otherwise.
Claim 13 does not include this limitation of claim 1. Instead, claim 13
recites that an exterior of the abutment includes a first portion closer to the
fixture connection and this first portion narrows along a longitudinal axis of
the abutment in a direction away from the fixture connection. The Examiner
relies on Figure 8 of Al-Attar to disclose this feature. Final Act. 6. We are
not persuaded by Appellant’s general arguments about drawings that the
Examiner’s finding is in error because Figure 8 illustrates digital abutment
50 with an exterior that has an exterior diameter substantially equal to the
maximum outer thread diameter of the bone fixture and that diameter tapers
down as abutment 50 extends away from the fixture connection with implant
10 as claimed. Furthermore, the upper portion of digital abutment 50 has a
cutout portion near the top second end 58. This curved, cutout portion is
formed by a first portion that narrows as it extends along the longitudinal
axis of the abutment in a direction away from the fixture connection where
the abutment connects to the fixture as claimed.
Thus, we sustain the rejection of claims 1 and 13.
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Claim 4
Appellant argues that claim 4 requires all additional exterior surface
diameters of the first portion to have a maximum length that is less than or
substantially equal to the maximum thread diameter of the male screw
section of the bone fixture. Appeal Br. 97. Appellant argues that Figure 8
of Al-Attar is a section view that does not describe all of the exterior surface
diameters of the abutment, and the perspective view of Figure 7 of Al-Attar
suggests that the abutment may not have a constant diameter. Id. at 97–101.
We agree with the Examiner that Figure 8 of Al-Attar discloses a first
portion of the abutment exterior surface that extends for about 30% to about
70% of a longitudinal length of the abutment has additional exterior surface
diameters that are less than or substantially equal to the maximum thread
diameters of the screw threads of the bone fixture. Final Act. 5–6; Ans. 12.
Even if part of the cross section of Al-Attar’s abutment 50 is not circular as
Appellant speculates (Appeal Br. 97–100), the Examiner is correct that the
claim only requires a first portion to have some additional exterior surface
diameters that are less than or substantially equal to the maximum diameter
of the bone fixture threads. Figure 8 of Al-Attar discloses such additional
diameters. See Ans. 12. Moreover, a perspective view cannot be relied on
to teach precise proportions, particularly where section views of Al-Attar’s
Figures 5 and 6 illustrate the implant components as circular. In view of
these other drawings, a skilled artisan would understand Figure 8 of Al-Attar
to teach additional exterior diameters of abutment 50 are less than or equal
to the maximum thread diameter of the bone fixture as claimed.
Thus, we sustain the rejection of claim 4.

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Claim 7
The Examiner relies on the upper portion of digital abutment 50 to
disclose an exterior surface of the first portion recited in claim 4 as being “in
the form of one or both of a parabolically curved surface and a partially
circular curved surface” as recited in claim 7, which depends from claim 4.
Final Act. 6. Appellant argues that the portion of the abutment that must be
curved also must extend from the bone fixture as required by claim 4 from
which claim 7 depends. Appeal Br. 102. Appellant also argues that the
Examiner’s reliance on the upper end of digital abutment 50 in Figures 7 and
8 relies on the wrong end of the alleged abutment. Id. We agree.
Claim 7 requires the first portion to extend from about 30% to about
70% of the longitudinal length of the abutment from the bone fixture where
the abutment is rigidly attached in claim 4 and to be a parabolically curved
surface or a partially circular surface. The Examiner’s reliance on the
curved surface at the upper second end 58 of the abutment does not satisfy
this claim limitation because it does not extend from the rigid attachment.
Thus, we do not sustain the rejection of claim 7.
Claims 14 and 15
The Examiner also relies on this curved section to define a second
portion broadening along the longitudinal axis in a direction away from the
fixture connection towards the end 58 as recited in claim 14, which depends
from claim 13. Final Act. 6. The Examiner finds that Al-Attar’s Figure 8
shows a curved surface near the top of the abutment and this curved surface
clearly defines narrowing and broadening portions. Ans. 13. The Examiner
also finds that these narrowing and broadening portions abut in Figure 8 as
recited in claim 15, which depends from claim 14. Final Act. 6; Ans. 13.
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Appellant’s arguments regarding the drawing quality and lack of
specificity by the Examiner (Appeal Br. 102–04) do not apprise us of error
in the Examiner’s finding that the top portion of abutment 50 includes a
narrowing first portion as recited in claim 13 and a broadening second
portion as recited in claim 14 (Final Act. 6; Ans. 13). See Reply Br. 74–75.
Regarding claim 15, Appellant argues that the abutting portions form
a flat portion rather than a curved portion as claimed. Reply Br. 76–80.
Appellant magnifies Figure 8 to illustrate the flat portion connecting the
narrowing and broadening portions. Id. at 78.
The Examiner finds that such magnification to pixelate Figure 8 does
not mean that Figure 8 lacks a curved surface because images appear as a
series of lines under sufficient zoom. Ans. 13. Indeed, Appellant illustrates
a circle under magnification and the bottom, top, and sides appear to be
straight lines as the Examiner asserts. See Reply Br. 79–80.
We agree with the Examiner that Figure 8 illustrates abutment 50 with
curved sides comprising narrowing and broadening portions that abut one
another as recited in claim 15, which depends from claim 14. Appellant’s
use of magnification to change the shape of this curve is not how a skilled
artisan would understand what is shown in Figure 8 in Al-Attar. There is no
claimed requirement that the broadening and narrowing portions form a
curved surface where they abut one another. Appellant’s argument in this
regard is not commensurate with the scope of claim 15. Reply Br. 76–79.
Indeed, Appellant’s Figure 2 illustrates abutment portions that narrow and
broaden and abut at a relatively flat portion that would appear even flatter if
magnified to the extent that Appellant magnified Figure 8 of Al-Attar.
Thus, we sustain the rejection of claims 14 and 15.
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Claims 16 and 17
The Examiner relies on the same findings for claims 13–15 to find
that Figure 8 of Al-Attar anticipates claims 16 and 17, which recite that the
first and second portion form an exterior having an hourglass profile with
two parabolic curves that are mirror images. Final Act. 6; Ans. 13.
Appellant’s arguments that Figure 8 likely depicts straight lines and
lacks parabolic curves as claimed is not persuasive for the same reasons as
were discussed for claims 14 and 15. See Appeal Br. 108–09. Appellant’s
Figure 2, reproduced above, illustrates an hourglass shape. See Spec. ¶ 47.
Figure 2 illustrates a first portion that narrows as it moves away from the
connection to bone fixture 210 and broadens as it moves toward the upper
end of abutment 22. Where the narrowing portion abuts the broadening
portion, the surface flattens somewhat similar to Figure 8 of Al-Attar.
Thus, we sustain the rejection of claims 16 and 17.
Claims 1, 8, and 10 as Anticipated by Lazzara
Claim 1
Regarding claim 1, the Examiner finds that Lazzara discloses a bone
fixture (implant 12) with an external screw section (Fig. 9) and an abutment
40 configured to be rigidly attached to bone fixture 12. Final Act. 7. The
Examiner finds that Lazzara illustrates and discloses a screw connection of
the abutment to the bone fixture and such connections are well-known in the
art to rigidly attach two elements such as the abutment and bone fixture.
Ans. 8 (citing Lazzara 4:7–26). The Examiner finds that the Appellant’s
Specification discloses a screw connection of the claimed abutment and
bone fixture by screwing the threads of the abutment into an interior bore of
the bone fixture. Id. at 8–9 (citing Spec. ¶¶ 7, 20, 27, 69, 80).
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Appellant argues that Lazzara’s dental implant cannot connect to a
vibrator or conduct sound to the ear. Appeal Br. 110–20; Reply Br. 85–89.
This argument is not persuasive for the same reasons discussed above for the
rejections of Shepard and Al-Attar, namely, these features are not claimed.
The recitation of a “bone conduction implant” in the preamble of claim 1
states the intended use of the device. It does not limit claim 1, which recites
a structurally complete device in the body of the claim.
Appellant also argues that Lazzara lacks an abutment configured to be
rigidly attached to a bone fixture, and Figure 9 does not support this finding.
Appeal Br. 121–22. Appellant further argues that Lazzara’s drawings do not
disclose an abutment exterior surface diameter less than or substantially
equal to a maximum thread diameter of the male screw of the bone fixture as
claimed because the drawings are not drawn to scale. Id. at 123–24.
Because Lazzara discloses a screw that connects abutment 40 to bone
fixture 12 in the same way as the Specification discloses the rigid attachment
of the abutment and bone fixture, the Examiner has a sound basis to find that
Lazzara is configured to rigidly attach the abutment 40 and bone fixture 12.
Lazzara discloses screws 13 that assemble dental implant systems by being
tightened with a predetermined torque great enough to produce a substantial
preload on the screw and draw the components together sufficient to prevent
microgaps opening between the pieces. Lazzara 4:7–65, Fig. 9. Appellant’s
arguments (Appeal Br. 121–22; Reply Br. 90) do not persuade us that
Lazzara’s screw connection does not rigidly attach the abutment and bone
fixture when it provides the claimed structure that draws abutment 40 and
bone fixture 13 tightly together in the same way the Specification discloses
the claimed rigid attachment. See Schreiber, 128 F.3d at 1478.
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Appellant’s arguments regarding the Examiner’s reliance on Figure 9
of Lazzara to disclose the claimed exterior surface diameter of the abutment
repeat the arguments made regarding the Examiner’s use of the drawings of
Shepard and Al-Attar to teach this feature. See Appeal Br. 123–24. These
arguments are not persuasive for the same reasons discussed above for those
rejections. Figure 9 clearly illustrates “an exterior surface diameter” of
abutment 40 that is substantially equal to the maximum thread diameter of
the male screw threads of bone fixture 12, as claimed, e.g., where the lead
line for abutment 40 contacts the exterior surface of abutment 40 in Figure 9.
Thus, we sustain the rejection of claim 1.
Claims 8 and 10
The Examiner relies on Figure 9 of Lazzara to disclose a first portion
of an exterior surface of the abutment that extends from the bone fixture for
at least about 70% to about 90% of the longitudinal length of the abutment
with additional exterior surfaces all of which have a maximum length that is
less than or substantially equal to the maximum thread diameter of the male
screw section as recited in claim 8, and substantially equal thereto as recited
in claim 10, which depends from claim 8. Final Act. 7. The Examiner
interprets “substantially” to provide leeway such that Lazzara’s abutment
diameter is considered to be substantially equal to the maximum diameter of
the screw threads even for the wider portion shown in Figure 9. Ans. 14.
Appellant argues that the base is wider than the screw threads and
“[c]laim 8 requires a less than or equal to diameter over the recited length.”
Appeal Br. 126–130. Appellant also argues that Figure 9 shows some form
of asymmetry such that a length of the diameter of the abutment is not
substantially equal to the screw threads. Id. at 131–32.
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The issue is whether Lazzara’s abutment portion, which is larger in
diameter than the maximum diameter of the bone fixture screw threads in
Figure 9, can be considered “substantially equal to the maximum thread
diameter of the male screw section of the bone fixture” as recited in claim 8.
The only evidence in the record of how to interpret “substantially” in
this context comes from the Specification, which discloses abutment 220
having a maximum diameter D1 that is less than or substantially equal to
(including equal to) the maximum thread diameter D2 of external threads
215 of bone fixture 210. Spec. ¶ 44. The ratio of D1 to D2 falls in a range
of about 0.8 to about 1 on the low end and 1 to 1 on the high end. Id. ¶ 45.
The Specification therefore discloses the abutment diameter D1 as
being up to 20% less than the maximum thread diameter D2 but no greater
than that diameter D2, namely “1 to 1 on the high end.” Because claim 8
recites “substantially equal” rather than “equal,” we agree with the Examiner
that Lazzara’s abutment exterior surface may have a diameter that is larger
than the maximum thread diameter and meet the claim limitation. However,
even if we determine what percentage or ratio of an oversized abutment
diameter is permitted within the scope of the claim, the drawings cannot be
relied on to disclose such precise or relative proportions. See Hockerson-
Halberstadt, 222 F.3d at 956. The Specification indicates that “substantially
equal” requires abutment diameter D1 to be very nearly equal to maximum
thread diameter D2. We cannot make that determination from Figure 9 of
Lazzara, which illustrates the abutment diameter as larger than the maximum
thread diameter, but Figure 9 is not disclosed as being to scale or having any
particular dimensions. Thus, we do not sustain the rejection of claim 8 or
claim 10, which depends from claim 8.
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Claims 19, 20, 25, and 26 as Anticipated by D’Alise
Claim 25
Regarding claim 25, the Examiner finds that D’Alise discloses a bone
fixture (body portion 13) configured to be implanted into a recipient’s skull
(jaw) and an abutment 19 including a boss with male screw threads (end 57)
that are configured to screw into bone fixture 13 to rigidly attach abutment
19 to bone fixture 13 as claimed. Final Act. 7 (citing D’Alise ¶ 9); Ans. 15.
Appellant argues that D’Alise is a dental implant rather than a bone
conduction implant and cannot secure a vibrator to the skull for conducting
sound to the ear. Appeal Br. 142–52; Reply Br. 101–04. This argument is
not persuasive for the reasons discussed above for the previous rejections
namely, these features are not claimed. The recitation of a “bone conduction
implant” in the preamble of claim 25 states the intended use of the device. It
does not limit claim 25, which recites a structurally complete device in the
body of the claim. Appellant’s arguments are not commensurate with the
scope of claim 25, which recites none of these features of securing a vibrator
to the skull for conducting sound to the ear.
Appellant also argues that D’Alise lacks a rigid attachment between
abutment 19 and bone fixture 13 as claimed. Appeal Br. 153–55; Reply Br.
105. This argument is not persuasive because D’Alise discloses a two-piece
implant in which an abutment with compatible outer threads is screwed into
an internally-threaded cavity of a body portion to join the two components.
D’Alise ¶ 9; Final Act. 7. In particular, D’Alise discloses abutment 51 with
threaded end 57 that screws into internal threads 58 in body 53 to pull the
two pieces together tightly and frictionally engage their tapered sections 55,
56 in a manner similar to a cold weld. See D’Alise ¶ 34, Fig. 7.
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The Examiner therefore has a sound basis to find that this threaded
connection rigidly attaches abutment 51 and bone fixture 53 in the same way
the Specification discloses threads 576 on boss 525 of abutment 520 engage
threads 551 in bore 550 of fixture 510 to rigidly attach the components. See
Spec. ¶ 57, Fig. 5. Appellant’s arguments do not persuade us that D’Alise’s
implant is not capable of providing a rigid attachment. Appeal Br. 153–54.
Thus, we sustain the rejection of claim 25.
Claim 26
The Examiner finds that the threads 57 of D’Alise’s abutment rigidly
attaches to the bone fixture without any additional attachment component as
recited in claim 26, which depends from claim 25. Final Act. 8; Ans. 15.
Appellant argues that D’Alise’s drawings disclose a single component
or a one piece device that does not need any additional component because it
is secured as a single piece. See Appeal Br. 155–58; Reply Br. 105–06.
This argument is not persuasive of error in the Examiner’s finding that
D’Alise discloses a two-piece implant with an abutment that screws into a
body portion without any additional component. Final Act. 7 (citing D’Alise
¶ 9); Ans. 15 (same). As discussed above, D’Alise discloses this two-piece
implant as abutment 51 with threaded end 57 that screws into threaded bore
58 of body 53, which corresponds to the claimed bone fixture, and provides
a rigid attachment without any additional attachment. D’Alise ¶ 34, Fig. 7.
The Specification discloses this rigid attachment with threaded boss 525 of
abutment 520 engaging threads 551 in bore 550 of fixture 510 to rigidly
attach abutment 520 to bone fixture 510 without an additional attachment
components such as an abutment fixture (screw). See Spec. ¶ 57, Fig. 5.
Thus, we sustain the rejection of claim 26.
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Claims 19 and 20
Claims 19 and 20 depend from claim 25. Claim 19 recites “a coupling
component located at an end portion of the abutment that is a male coupling
component configured to be received in and coupled to a coupling adapter of
an operationally removable component of a bone conduction device.” Claim
20 recites “a bulbous outer profile that forms a ball-joint when coupled to a
coupling adapter of an operationally removable component of a bone
conduction device.” Appeal Br. 84–85 (Claims App.).
The Examiner finds that D’Alise teaches ball portion 29 as a coupling
component configured to be received in and coupled to a coupling adapter of
an operationally removable component of a bone conduction device, but the
coupling adapter is not recited in claim 19. Final Act. 8. The Examiner also
finds that ball portion 29 has a bulbous outer profile that forms a ball joint if
coupled to a coupling adapter of an operationally removable component of a
bone conduction device as recited in claim 20. Id.; Ans. 15–16.
Appellant argues that the Examiner rewrote the claims to remove the
requirement that the coupling component is “configured to” be received in
and coupled to a coupling adapter of an operationally removable component
of a bone conduction device in claim 19 and forms a ball-joint when coupled
to a coupling adapter of an operationally removable component of a bone
conduction device in claim 20. Appeal Br. 158–64; Reply Br. 106–12.
The Specification describes coupling component 690 in Figure 6 and
its bulbous section 626 interacting with a coupling adapter having teeth in a
circular array and elastically deformable upon application of sufficient force
to form a ball-joint that permits the operationally removable component to
gimble about the bone conduction implant 600. Spec. ¶¶ 62, 63.
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The Specification discloses a variety of different couplings 290–690
adapted to cooperate with couplings of operationally removable components
of bone conduction devices. Id. ¶¶ 50, 65–68, 71–77, Figs. 2–8. These
abutment couplings are configured as magnetic, ball-joint, snap, and positive
retention couplings. Id. They also may be configured as any other type of
coupling that permits some embodiments to be practiced. Id. ¶ 77.
The Examiner has a sound basis to find that ball portion 29 in Figure 3
of D’Alise is configured to be received in and coupled to a coupling adapter
because it is a bulbous element with a similar configuration to Appellant’s
disclosed bulbous coupling element 690. Ans. 15–16; see Spec. ¶ 62, Fig. 6.
Appellant’s arguments that the Examiner is not giving weight to the
“configured to” limitation that the coupling component is “configured to be
received in and coupled to a coupling adapter of an operationally removable
component of a bone conduction device” (Appeal Br. 158–64; Reply Br.
106–13) are not persuasive in view of the Examiner’s finding that D’Alise
discloses a “coupling component” with a “bulbous outer profile” configured
as recited in claims 19 and 20. Final Act. 8; Ans. 15. Nor do Appellant’s
arguments persuade us that D’Alise’s ball portion 29 is not capable of
coupling to a coupling adapter of an operationally removable component of
a bone conduction device when the coupling adapter is described as having a
circular array of teeth that deform elastically upon application of sufficient
removal or installation force to the coupling adapter on the bulbous coupling
component 690. Spec. ¶ 62; see Schreiber, 128 F.3d at 1487 (shifting the
burden to applicant to show the prior art does not possess inherently the
claimed functional feature).
Thus, we sustain the rejection of claims 19 and 20.
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Claims 28 and 29 as Anticipated by Niznick
Appellant argues claims 28 and 29 as a group. See Appeal Br. 167–
80. We select claim 28 as representative. 37 C.F.R. § 41.37(c)(1)(iv).
Regarding claim 28, the Examiner finds that Niznick discloses an
abutment (adapter 28) configured to rigidly attach to a bone fixture (adapter
10) and configured to removably connect to a magnetic implant abutment
coupling 32 (screw end 32 of fastener 30). Final Act. 8–9. The Examiner
interprets claim 28 as not reciting a magnetic implant abutment coupling,
which need not be shown in the prior art. Id. at 9.
Appellant argues that Niznick is a dental implant rather than a bone
conduction implant as claimed. Appeal Br. 167–68. Appellant also argues
that the preamble’s recital of “[a]n apparatus for a bone conduction implant”
should be treated as a limitation by the Examiner as the Examiner apparently
did treat this feature in previous office actions. Id. at 169–70. Appellant
cites the Examiner’s determination that “bone conduction implant” appears
in the preamble and generally is not accorded patentable weight where it
merely recites the purpose or intended use of a process or structure and the
body of the claim does not depend on the preamble for completeness. Id. at
171. Appellant further argues that the feature of “an abutment including a
fixture connection section and an end opposite the fixture connection” is not
addressed by the Examiner’s action. Reply Br. 114.
We interpret bone conduction implant in the preamble of claim 28 as
an intended use or purpose of the abutment and fixture recited in the body of
claim 28 because the abutment and fixture recited in the body of claim 28
completely define the structure of the claimed apparatus without relying on
the preamble for meaning. The reasoning for claim 1 applies equally here.
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The Examiner’s identification of elements of Niznick that correspond
to the claimed abutment and fixture make clear which end of the abutment is
connected to the fixture as recited in claim 28. Ans. 16. Figure 4 of Niznick
illustrates one end of abutment adapter 28 configured to fit into bone fixture
adapter 10 and the other end configured to receive threads 32 of fastener 30.
One end of adapter 28 is inserted into a socket of bone fixture anchor 10 to
form a rigid connection. Niznick, 1:43–45; Final Act. 8. Thus, abutment
adapter 28 is configured to rigidly attach to bone fixture anchor 10.
We agree with the Examiner’s findings that Niznick discloses the
claimed abutment configuration. The Specification describes abutment 720
as removably connecting to a magnetic implant abutment coupling 760 via
female threads 788 in abutment bore 780. Spec. ¶ 70, Fig. 7. The Examiner
correctly finds that Niznick’s abutment 28 includes a similar screw pocket
34 that removably connects to screw end 32 of fastener 30 in a similar way.
Niznick, 3:35–55, Fig. 4. Therefore, the Examiner has a sound basis to find
that Niznick’s abutment is configured to removably connect to a magnetic
implant abutment coupling because it has the same threaded structure that
the Specification describes as performing this function. See Final Act. 8–9.
Appellant’s arguments do not persuade us that Niznick’s same configuration
is not capable of meeting this function. See Schreiber, 128 F.3d at 1478.
Thus, we sustain the rejection of claim 28 and claim 29 which falls
therewith.
Claims 31 and 33–38 as Anticipated by Westerkull
Appellant does not present arguments for this rejection. See Appeal
Br. 6–185; Ans. 2. Thus, we summarily sustain this rejection. 37 C.F.R.
§ 41.37(c)(1)(iv).
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Claim 12 as Unpatentable Over Shepard and Parker
Claim 12 depends from claim 1 and recites “a magnetic implant
abutment coupling located proximate to the exterior surface diameter
configured to releasably magnetically couple to a removable component of a
bone conduction device.” The Examiner relies on Parker to disclose this
feature as magnetic implant abutment coupling 419 as part of abutment 405.
Final Act. 10–11. The Examiner determines it would have been obvious to
include this coupling on Shepard’s abutment “in order to facilitate coupling
of the abutment to various implants.” Id. at 11.
Appellant argues that a skilled artisan would not have combined a
magnetic coupling of Parker’s bone conduction device that attaches behind
the ear with Shepard’s dental implant because the magnetic coupling could
be overcome to allow the component to move freely in a person’s mouth and
cause a choking hazard. Appeal Br. 182–83; Reply Br. 118–122. We agree.
Because a patent composed of several elements is not proved obvious
simply by demonstrating that each element was, independently, known in
the prior art, “it can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (“To facilitate review, this analysis
should be made explicit.”) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”). Here, the Examiner’s reasoning is conclusory and lacks a
rational underpinning supported by technical reasoning.
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Shepard teaches an abutment 82, shaft 101, and head 105 sized to fit
inside O-ring 98 in abutment insert 91 to retain denture 81 while allowing O-
ring 98 to stretch to permit removal of denture 81. Shepard ¶ 58. In contrast
to Shepard’s configuration to retain denture 81 in a person’s mouth, Parker
teaches magnetic material 419 on abutment 405 to provide sufficient holding
force to maintain seating of vibratory coupler 403 on abutment 405 under a
force generated by the weight of vibratory coupler 403 and vibration forces
generated by external vibration generating module 401 that are coupled with
the weight of vibratory coupler 403. Parker ¶ 52.
It is not clear on the record before us why a skilled artisan would have
been motivated to use Parker’s magnet 419 in Shepard to retain denture 81
in a person’s mouth. The Examiner has not explained sufficiently why a
magnetic holding force designed to maintain vibratory coupler 403 seated in
usage that generates vibrations from external module 401 would have been
obvious to use to retain denture 81 on Shepard’s dental implant abutment.
Thus, we do not sustain the rejection of claim 12.
Claims 23 and 24 as Unpatentable Over Al-Attar and König
Appellant does not present argument for this rejection. See Appeal
Br. 6–185. Thus, we summarily sustain this rejection.
Claim 27 as Unpatentable Over D’Alise and Shepard
Appellant does not present argument for this rejection. See Appeal
Br. 6–185. Thus, we summarily sustain this rejection.
Claim 30 as Unpatentable Over Parker and Niznick
Appellant does not present argument for this rejection. See Appeal
Br. 6–185. Thus, we summarily sustain this rejection.
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Whether New Grounds Are Asserted in the Answer
Filing a Reply Brief waives any argument that the Answer includes
new grounds of rejection. See 37 C.F.R. § 41.40(a) (a request to review a
primary examiner’s failure to designate a rejection as a new ground in the
answer is by petition to the Director under § 1.181 within two months of
entry of the answer and failure to timely file a petition waives any argument
that a rejection must be designated as a new ground of rejection). Moreover,
we considered arguments in the Reply Brief about the grounds raised in the
Answer. See In re Durance, 891 F.3d 991, 1002 (Fed. Cir. 2018) (holding
that the applicant could respond to new arguments raised in the answer).
The Examiner interpreted “bone conduction implant” in the preambles
of all claims as a statement of intended use of structure recited in the body of
the claims and applied the prior art to the structure in the body of the claims
rather than to unclaimed features. Final Act. 13–14; Ans. 3–7.
The Office notes that it is not being suggested that a dental
implant is a bone conduction implant. Rather, the bone fixtures
and abutments used to secure dental implants into bone could
also be used to secure a bone conduction implant to bone. . . .
[T]he claims of this application are only directed to the bone
fixture and abutment for securing the bone conduction implant,
there are no limitations directed to the actual vibratory
component of the device or any structural or functional
limitations specific to a device for outputting vibrations for
bone conduction or evoking hearing that would differentiate the
claimed device from a fixture for a dental implant or a bone
fixture for any other type of implant. Appellant submits that
the prior art references are not capable of securing a vibrator to
the skull for conducting sound to the ear. The Office notes that
this function is not recited in the claims.

Ans. 5–6.
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Even where the Examiner interpreted the preamble “as a limitation in
that the implant must be suitable for use in bone conduction” the Examiner
emphasized that “this limitation does not connote any additional structure.”
Id. at 9. Then, the Examiner clarified that “[t]he cited prior art devices are
capable of being used as bone conduction implants by coupling to a bone
conduction implant.” Id. This latter interpretation must be understood in
light of the Examiner’s findings that the prior art anticipated various features
of the dependent claims that recited additional structure of the abutment that
is used to connect the bone conduction implant (bone fixture and abutment)
recited in the independent claims to a coupling adapter of a bone conduction
device as discussed above, e.g., in relation to claims 12, 19, 20, and 30.
Regarding arguments that the Examiner failed to establish a prima
facie case of anticipation, when the Examiner found that the prior art is
capable of performing the claimed functions because it discloses all of the
structure recited in the claims, the Examiner established a prima facie case
of anticipation and the burden shifted to Appellant to show that the prior art
structure did not inherently possess the functional limitations of the claimed
apparatus as discussed above. See Schreiber, 128 F.3d at 1478. Even if the
Examiner failed to make a prima facie case, Appellant is required to identify
alleged error in the rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011); 37 C.F.R. § 41.37(c)(1)(iv). Appellant has not done so.
Furthermore, 35 U.S.C. § 132 does not require an examiner to make a
formal claim construction of every term in a rejected claim to make out a
prima facie rejection. Jung, 637 F.3d at 1363. Appellant’s detailed briefs
spanning 185 pages in the Appeal Brief and 123 pages in the Reply Brief
indicate that Appellant had sufficient notice of the basis of the rejections.
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CONCLUSION
In summary:
Claims
Rejected
Basis
35 U.S.C. §  
Affirmed Reversed
34, 38 101 34, 38
1–6, 8, 9, 11,
31, 32
102b Shepard  1–6, 8, 9, 31, 32 11
1, 4, 7, 13–17 102b Al-Attar

1, 4, 13–17 7
1, 8, 10 102b Lazzara 1 8, 10
19, 20, 25, 26 102b D’Alise 19, 20, 25, 26
28, 29 102b Niznick 28, 29
31, 33–38 102b
Westerkull
31, 33–38
12 103 Shepard,
Parker
12
23, 24 103 Al-Attar,
König
23, 24
27 103 D’Alise,
Shepard
27
30 103 Parker,
Niznick
30
Overall
Outcome
1–6, 8, 9, 13–17,
19, 20, 23–38
7, 10–12
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART