Göran Björn et al.Download PDFPatent Trials and Appeals BoardOct 16, 201913270691 - (D) (P.T.A.B. Oct. 16, 2019) Copy Citation 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. Appeal 2018-001567 Application 13/270,691 2 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. Appeal 2018-001567 Application 13/270,691 3 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). Appeal 2018-001567 Application 13/270,691 4 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). Appeal 2018-001567 Application 13/270,691 5 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. Appeal 2018-001567 Application 13/270,691 6 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). Appeal 2018-001567 Application 13/270,691 7 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. Appeal 2018-001567 Application 13/270,691 8 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. Appeal 2018-001567 Application 13/270,691 9 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. Appeal 2018-001567 Application 13/270,691 10 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. Appeal 2018-001567 Application 13/270,691 11 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. Appeal 2018-001567 Application 13/270,691 12 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. Appeal 2018-001567 Application 13/270,691 13 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.”). Appeal 2018-001567 Application 13/270,691 14 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. Appeal 2018-001567 Application 13/270,691 15 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. Appeal 2018-001567 Application 13/270,691 16 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. Appeal 2018-001567 Application 13/270,691 17 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. Appeal 2018-001567 Application 13/270,691 18 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. Appeal 2018-001567 Application 13/270,691 19 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. Appeal 2018-001567 Application 13/270,691 20 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. Appeal 2018-001567 Application 13/270,691 21 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. Appeal 2018-001567 Application 13/270,691 22 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. Appeal 2018-001567 Application 13/270,691 23 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. Appeal 2018-001567 Application 13/270,691 24 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. Appeal 2018-001567 Application 13/270,691 25 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. Appeal 2018-001567 Application 13/270,691 26 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). Appeal 2018-001567 Application 13/270,691 27 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. Appeal 2018-001567 Application 13/270,691 28 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. Appeal 2018-001567 Application 13/270,691 29 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. Appeal 2018-001567 Application 13/270,691 30 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. Appeal 2018-001567 Application 13/270,691 31 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. Appeal 2018-001567 Application 13/270,691 32 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. Appeal 2018-001567 Application 13/270,691 33 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. Appeal 2018-001567 Application 13/270,691 34 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. Appeal 2018-001567 Application 13/270,691 35 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). Appeal 2018-001567 Application 13/270,691 36 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. Appeal 2018-001567 Application 13/270,691 37 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. Appeal 2018-001567 Application 13/270,691 38 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. Appeal 2018-001567 Application 13/270,691 39 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. Appeal 2018-001567 Application 13/270,691 40 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 Copy with citationCopy as parenthetical citation