Nicholas Pergola

Patent Trials and Appeals Board

Oct 3, 2019

12268247 - (D) (P.T.A.B. Oct. 3, 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.
12/268,247 11/10/2008 NICHOLAS PERGOLA 5441-005 7839
111614 7590 10/03/2019
Pilloff & Passino LLP
2000 Duke Street
Suite 300
Alexandria, VA 22314
EXAMINER
REDDY, SUNITA
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
10/03/2019 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 NICHOLAS PERGOLA
___________

Appeal 2018-002199
Application 12/268,247
Technology Center 3700
____________

Before BRETT C. MARTIN, ANNETTE R. REIMERS, and
LEE L. STEPINA, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1,2
Appellant3 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–8, 14–19, 22, 23, 29, 31–40, and 42–50. Claims

1 The Examiner has withdrawn the 35 U.S.C. § 112, second paragraph,
rejection of claims 47, 48, and 50 for indefiniteness. See Examiner’s Answer
(“Ans.”) 3, dated Oct. 20, 2017; see also Final Office Action (“Final Act.”)
4–6, dated May 13, 2016.
2 The Examiner has objected to claims 22, 36, 39, and 47 as being dependent
upon a rejected base claim, but allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening claims.
See Final Act. 23–26.
3 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Cochlear Limited.
Appeal 2018-002199
Application 12/268,247

2
9–13, 20, 21, 24–28, 30, and 41 have been canceled. An Oral Hearing in
accordance with 37 C.F.R. § 41.47 was held on September 24, 2019. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
The claimed subject matter “relates to an apparatus . . . for interfacing
an implantable hearing instrument with a patient’s auditory system.” See
Spec. 1:9–10, Figs. 2, 4. Claims 1, 17, and 23 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A connector for transmitting movement of a hearing
implant actuator to an auditory component of a patient, the
connector comprising:
an elongate body having:
a first end adapted for fixed attachment to a
supporting structure; a second end adapted to
engage an auditory component;
wherein said elongate body extends between said
first and second ends and at least a portion of said elongate
body is offset from a reference line extending between said
first and second ends.

REJECTIONS
I. Claims 44 and 45 stand rejected under 35 U.S.C. § 112, first
paragraph, for lack of written description.
II. Claims 5, 6, 33, 34, and 38 stand rejected under 35 U.S.C. § 112,
second paragraph, for indefiniteness.
III. Claims 29, 35, and 38 stand rejected under 35 U.S.C. § 101 for

Appeal Br. (“Appeal Br.”) 2, filed Mar. 20, 2017.
Appeal 2018-002199
Application 12/268,247

3
encompassing a human organism.
IV. Claims 1‒6, 8, 14, 15, 29, 31‒33, 40, 42, 44‒46, and 49 stand rejected
under 35 U.S.C. § 102(b) as anticipated by Kroll (US 6,540,662 B2, issued
Apr. 1, 2003).
V. Claims 17, 34, 35, 43, and 48 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Bushek (US 6,325,755 B1, issued Dec. 4, 2001).
VI. Claims 23, 37, and 38 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Ball (US 6,139,488, issued Oct. 31, 2000).
VII. Claims 7 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kroll and aWengen (US 2007/0021833 A1, published Jan.
25, 2007).
VIII. Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bushek.
IX. Claim 50 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Ball.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellant made.
Arguments Appellant could have made, but chose not to make in the Briefs,
are deemed waived. See 37 C.F.R. § 4I.37(c)(l)(iv). (“The arguments [in
the appeal brief] shall explain why the examiner erred as to each ground of
rejection contested by appellant.”); see also In re Hyatt, 211 F.3d 1367,
1373 (Fed. Cir. 2000) (noting that an argument not first raised in the brief to
the Board is waived on appeal).
Appeal 2018-002199
Application 12/268,247

4
Written Description
Claims 44 and 45
Claim 45 depends from claim 44. Appeal Br. 234 (Claims App.). As
to claim 44, the Examiner determines that “[t]here is no disclosure [in the
Specification] of an electrical wire that is different and separate from the
mechanical actuator output shaft and completely spaced away from the
mechanical actuator output shaft that extends from the mechanical actuator”
and that “since the actuator is recited as a mechanical actuator, it is unclear
as to what role the electrical wire extension plays [] or why it is required.”
Final Act. 2–3. Appellant does not present arguments directed to the
rejection, and thus, has waived any such arguments. See Appeal Br.,
generally; see also Ans. 14.
Accordingly, we summarily affirm the Examiner’s rejection of claims
44 and 45 for lack of written description.

Indefiniteness
Claims 5 and 6
Claim 6 depends from claim 5, and claim 5 depends from claim 1.
Appeal Br. 229 (Claims App.). Claim 5 recites “at least a portion of said
elongate body.” Id. The Examiner determines that “it is unclear as to
whether claim 5 ‘at least a portion of said elongate body’ is the same as or
different than or in addition to ‘at least a portion of said elongate body’” of
claim 1. Final Act. 4; see also Ans. 4–5.
Claim 1 recites “at least a portion of said elongate body . . . extend[s]
between said first and second ends.” Appeal Br. 229 (Claims App.). Upon
review of claims 1 and 5, a skilled artisan would recognize that the “at least
Appeal 2018-002199
Application 12/268,247

5
a portion of said elongate body between said first and second ends” of claim
5 is in reference to the “elongate body” of claim 1.
Accordingly, we do not sustain the Examiner’s rejection of claims 5
and 6 for indefiniteness.
Claims 33 and 34
Claim 34 depends from claim 33. Appeal Br. 232 (Claims App.).
Claim 33 recites “displacing the center portion of the elongate body.” Id.
The Examiner determines that “it is unclear as to what constitutes ‘the center
portion’ as ‘portion’ lends itself to multiple interpretations because ‘a center
portion’ could be the center or encompass a much larger part in the
proximity of the center or some such intermediate area.” Final Act. 4; see
also Ans. 5–6.
In this case, upon review of claim 33, we agree with Appellant that a
skilled artisan would understand “what is meant by ‘the center portion’” of
the elongate body. Appeal Br. 22–23.
Accordingly, we do not sustain the Examiner’s rejection of claims 33
and 34 for indefiniteness.
Claim 38
Claim 38 recites “the first end is interconnected with structure of the
middle ear.” Appeal Br. 232–233 (Claims App.). The Examiner determines
that “[i]t is unclear if this is the same as or different than ‘a stationary middle
ear structure’ recited [in] claim 23, from which claim 38 depends.” Final
Act. 5. Here, the Examiner acknowledges that “as recited a broad yet
reasonable interpretation of ‘structure of the middle ear’ would encompass
both ‘stationary middle ear structure’ and ‘non-stationary or moving middle
ear structures.” Final Act. 28; see also Ans. 6. We agree with Appellant
Appeal 2018-002199
Application 12/268,247

6
that “[b]ased on this clarification, . . . claim 38 is broad enough to connect to
stationary and non-stationary portions of the middle ear” and that the
Examiner’s interpretation relates to the breadth, and not the indefiniteness,
of the claim. Appeal Br. 23–24; See SmithKline Beecham Corp. v. Apotex
Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005) (breadth is not indefiniteness).
Accordingly, we do not sustain the Examiner’s rejection of claims 38
for indefiniteness.

Human Organism
Claims 29, 35, and 38
Claim 29 recites “the first end is attached to structure of the middle
ear” and “the second end is attached to the auditory component,” claim 35
recites “the first end of the first linkage member is fixedly engaged with
structure of the middle ear” and “the first end of the second linkage member
is fixedly engaged to the auditory component,” and claim 38 recites “the first
end is interconnected with structure of the middle ear” and “the second end
is interconnected to the auditory component.” Appeal Br. 231–233 (Claims
App.). The Examiner determines that “[t]hese limitations positively recite
and are directed to or encompass portions of the human organism.” Final
Act. 7.
We disagree with the Examiner’s position that claims 29, 35, and 38
are directed to non-statutory subject matter under 35 U.S.C. § 101. Rather,
“the claims relate only to the correct placement of the device in the human
patient, and as a whole, do not encompass a human organism.” See Ex parte
Bray, Appeal No. 2011-013427, 2013 WL 3293616, at *3 (PTAB June 3,
2013); see also Appeal Br. 36 (“Claims 29, 35, and 38 are not claiming the
Appeal 2018-002199
Application 12/268,247

7
structure of the middle ear. These claims do not claim the recipient. These
claims claim something that can only be infringed when interacting with
tissue of the recipient.”). Further, “[t]here is nothing in the statute, and we
are unaware of any case, that categorically excludes such devices.” See Ex
parte Bray, 2013 WL 3293616, at *3.
Accordingly, for these reasons, we do not sustain the Examiner’s
rejection of claims 29, 35, and 38 for encompassing a human organism.

Anticipation by Kroll
Claim 1
The preamble of claim 1 recites “[a] connector for transmitting
movement of a hearing implant actuator to an auditory component of a
patient.” Appeal Br. 229 (Claims App.). The Examiner does not give
patentable weight to the phrase “for transmitting movement of a hearing
implant actuator to an auditory component of a patient” and finds that it
merely recites the purpose or the intended use of the connector. Final Act. 9.
Appellant contends that because a number of dependent claims
“affirmatively recite the actuator in the body of the claim, they force the ‘for
transmitting movement of a hearing implant actuator to an auditory
component of a patient’ of claim 1 to be treated as a limitation [and] negate
any assertion that the preamble is not a limitation.” Appeal Br. 46.
In general, a preamble limits the claimed invention “if it recites
essential structure or steps, or if it is ‘necessary to give life, meaning, and
vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). The preamble limits
Appeal 2018-002199
Application 12/268,247

8
claim scope when it is essential to understand limitations or terms in the
claim body. Id. Conversely, a preamble is not limiting where a structurally
complete invention is defined in the claim body and the preamble only states
a purpose or intended use for the invention. Id.
Claim 1 is directed to a “connector.” Appeal Br. 229 (Claims App.).
We construe the preamble phrase “for transmitting movement of a hearing
implant actuator to an auditory component of a patient” to be merely a field
of use phrase, with none of the words recited in this phrase being also
incorporated into the remainder of the claim (i.e., the claim body) so as to
breathe life and breath into the claim. Field of use recitations are typically
found in the preamble of claims, and the weight given them largely depends
on how the recitation is subsequently used in the body of the claim. Pitney
Bowes, 182 F.3d at 1306. In other words, “if the preamble merely state[s] a
purpose or intended use and the remainder of the claim completely defines
the invention independent of the preamble,” it does not constitute a
limitation. Lipscomb’s Walker on Patents, 3rd Edition, Vol. 3, § 11.11 at p.
361 (citing Marston v. J.C. Penney Co., 353 F.2d 976, 986 (4th Cir. 1965));
see also, Rowe v. Dror, 112 F.3d 473,478 (Fed. Cir. 1997); Corning Glass
Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989).
In this case, the remainder of the claim (i.e., the claim body)
completely defines the invention by setting forth structural limitations of the
“connector” independent of the preceding preamble language. Moreover, it
is well established that “[a]n intended use or purpose usually will not limit
the scope of the claim because such statements usually do no more than
define a context in which the invention operates.” Boehringer Ingelheim
Vetmedica v. Schering-Plough Corp., 320 F.3d 1339, 1345, (Fed. Cir. 2003).
Appeal 2018-002199
Application 12/268,247

9
We conclude that identifying the “connector” as being “for transmitting
movement of a hearing implant actuator to an auditory component of a
patient” does no more than define the context in which the connector
operates. Therefore, the Examiner’s treatment of the preamble language
“for transmitting movement of a hearing implant actuator to an auditory
component of a patient” as an intended use limitation is proper. Final Act.
9; See Rowe v. Dror, 112 F.3d at 478 (“[W]here a patentee defines a
structurally complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention, the preamble is not a
claim limitation.”) (citations omitted).
Appellant contends that even if the preamble is not treated as a
limitation, Kroll fails to disclose the connector of claim 1. See Appeal Br.
67. Specifically, Appellant contends that “the Examiner is using the actuator
of Kroll as the connector in general, and the elongate body in particular.
That is, the broadest reasonable interpretation of ‘connector’ and ‘elongate
body’ must encompass a transducer / actuator of Kroll.” Id.; see also id. at
68–85.
Here, the Examiner finds that Kroll discloses a connector “including
an elongate body (see106/108, 136/138, or 156/158 for example).” Final
Act. 9. Elements 106, 136, and 156 of Kroll represent embodiments of
“transducers” and elements 108, 138, and 158 of Kroll represent
embodiments of a “frame assembly.” See Kroll 4:39–41, 6:18–20, 54–55.
Appellant contends that the transducer of Kroll (i.e., elements 106, 138, and
158 of Kroll) constitutes an “actuator.” See Appeal Br. 68 (“Element 106
[of Kroll] is an actuator.”). However, we note that Appellant’s own
Specification differentiates between an “actuator” 112 and a “transducer”
Appeal 2018-002199
Application 12/268,247

10
108 (see Spec. 7:5–6 (“The transducer 108 includes a vibratory actuator 112
for transmitting vibrations from the transducer 108 to an auditory component
of the patient.”)) and that Kroll does not disclose an “actuator” (see Kroll,
generally). Given that a transducer and an actuator are separate elements,
we are not persuaded that Kroll’s transducer is also necessarily an
“actuator.” See Appeal Br. 69 (“Clearly elements 108 [transducer] and 112
[actuator] of the [S]pecification correspond to element 106 [transducer] of
Kroll.”) (citing Figure 2 of the subject invention and Figure 3 of Kroll).
Although Appellant’s Specification does not explicitly define the term
“connector,” Appellant directs us to page 9 line 28 through page 10 line 134
of the Specification, which describes a “spanning” connector. See Appeal
Br. 81. However, we note that claim 1 more broadly recites a “connector.”
See id. at 229 (Claims App.). Using transducer 106 and frame assembly 108
as an example, Kroll discloses that “[t]ransducer 106 is disposed within
middle ear space 24 and secured against a wall of middle ear space 24 or
within mastoid cavity 126 against mastoid bone 34 with frame assembly 108
using one or more fasteners” and that “transducer 106 is operatively
connected to stapes 46.” Kroll 4:62–66, Fig. 3. In other words, transducer
106 with frame assembly 108 serves as a “connector”5 (i.e., a link) between
stapes 46 and a wall of middle ear space 24 or mastoid bone 34.

4 Although Appellant cites to paragraph 39 of the Specification, the
Specification does not include paragraphs. See Appeal Br. 81. We consider
this a typographical error.
5 An ordinary and customary meaning of the term, “connector,” which is
consistent with Appellant’s Specification, is “[a] thing which links two or
more things together.” https://www.lexico.com/en/definition/connector (last
accessed Sept. 26, 2019).
Appeal 2018-002199
Application 12/268,247

11
In view of the claim language recited in claim 1, under the broadest
reasonable interpretation, Kroll discloses a connector including an elongate
body 106/108 having a first end adapted for fixed attachment via a fastener
to a supporting structure (e.g., mastoid bone 34); a second end adapted to
engage via an operative connection an auditory component (e.g., stapes 46);
wherein said elongate body 106/108 extends between said first and second
ends and at least a portion of said elongate body is offset (i.e., at the joint)
from a reference line extending between said first and second ends. See the
Board’s annotated version of Figure 3 of Kroll below.

Figure 3 of Kroll, illustrated above, “is a sectional view of an auditory
system of a human subject incorporating a first embodiment of an
implantable hearing system of the present invention.” Kroll 2:59–61.
Appeal 2018-002199
Application 12/268,247

12
Based on Kroll’s disclosure, we agree with the Examiner that Kroll
discloses the connector of claim 1. Accordingly, we sustain the Examiner’s
rejection of claim 1 as anticipated by Kroll.
Claims 2–4
Claim 2 recites, “[t]he connector of claim 1, further comprising: an
actuator engagement surface disposed along said elongate body between said
first and second ends for engaging an actuator of an implantable hearing
instrument.” Appeal Br. 229 (Claims App.). We agree with Appellant that
an actuator is a device that actuates or moves something and a skilled artisan
would not interpret the internal signal processor 104 of Kroll to constitute an
“actuator,” as proposed by the Examiner. See Final Act. 10; see also Appeal
Br. 87–88. Accordingly, we do not sustain the Examiner’s rejection of
claims 2–4 as anticipated by Kroll.
Claims 5 and 6
Claim 5 recites, “[t]he connector of claim 1, wherein at least a portion
of said elongate body between said first and second ends is arcuate, defining
an arcuate portion of said elongate body.” Appeal Br. 229 (Claims App.).
The Examiner cites to Figures 8 and 9 of Kroll for this limitation. See Final
Act. 10. We agree with Appellant that, at best, “there are right angles to
elements 106 and 108.” See Appeal Br. 93; see also Kroll, Fig. 8. We also
agree with Appellant that the Examiner’s finding is entirely speculative, and
does not find support in the disclosure of the reference. See id.at 93–95.
Accordingly, we do not sustain the Examiner’s rejection of claims 5 and 6 as
anticipated by Kroll.

Appeal 2018-002199
Application 12/268,247

13
Claim 8
Claim 8 recites, “[t]he connector of claim 1, wherein application of a
force to said at least a portion of said body in a first direction displaces said
second end in a second direction that is at least partially transverse to the
first direction.” Appeal Br. 230 (Claims App.). The Examiner finds that
“application of a force to at least a portion of the elongate body of Kroll in a
first direction will displace the second end in a second direction that is at
least partially transverse to the first direction due to the presence of universal
joint (210).” Final Act. 10; see also Kroll 7:41–48, 8:8–15, Figs. 3, 7C.
Appellant does not provide persuasive evidence or argument apprising us of
Examiner error. See Appeal Br. 96–98; see also Reply Br. 59–60.6
Accordingly, we sustain the Examiner’s rejection of claim 8 as anticipated
by Kroll.
Claim 14
Kroll discloses the elements of claim 14. See the Board’s annotated
version of Figure 3 of Kroll above. In addition, Kroll discloses that Figure 3
“show[s] a mounting bracket []108” and that Figure 7C “show[s] a bracket
system 200 having a transducer 202 attached to the single bracket support
204.” Kroll 7:41–48, Figs. 3, 7C. Kroll further discloses:
FIG. 7C shows an embodiment having a universal connector 210
placed between the transducer 202 and the single bracket support
204. The universal connector 210 may also be placed between
the two portions of the single bracket support 204. The universal
connector 210, such as a ball and socket joint, allows further
adjustability and 360-degree movement to position the
transducer 202 against respective auditory elements 42 and 46.

6 Reply Brief (“Reply Br.”), filed Dec. 20, 2017.
Appeal 2018-002199
Application 12/268,247

14
Kroll 8:8–15, Fig. 7C; see also Final Act. 10.
Based on Kroll’s disclosure, we agree with the Examiner that Kroll
discloses “wherein said joint permits relative movement between said first
and second linkages.” See Final Act. 10–11 (citing Kroll 8:8–15, Figs. 3–5,
8, and 9); see also the Board’s annotated version of Figure 3 of Kroll above.
Accordingly, we sustain the Examiner’s rejection of claim 14 as anticipated
by Kroll.
Claim 15
Claim 15 recites, “[t]he connector of claim 14, wherein said joint
comprises a hinge.” Appeal Br. 230 (Claims App.). The Examiner finds
that “the joint (210) of Kroll may be considered a hinge.” Final Act. 11. We
agree with Appellant that the Examiner provides “no support for this
assertion.” Appeal Br. 104. Indeed, the section of Kroll that describes joint
210 states “a ball and socket” joint. See Kroll 8:12–13. Accordingly, we do
not sustain the Examiner’s rejection of claim 15 as anticipated by Kroll.
Claim 29
In citing to Figures 3–5, 8, and 9 of Kroll, the Examiner fails to
establish that Kroll discloses that the “first end” of claim 1 “is attached to
structure of the middle ear of a recipient of the connector at a location just
above the tympanic membrane.” See Final Act. 11; see also Appeal Br. 231
(Claims App.) (emphasis added). Accordingly, we do not sustain the
Examiner’s rejection of claim 29 as anticipated by Kroll.
Claim 31
We agree with the Examiner that Kroll discloses “wherein the
elongate body includes a joint located between the first end and the second
end.” See Final Act. 10–11; see also the Board’s annotated version of
Appeal 2018-002199
Application 12/268,247

15
Figure 3 of Kroll above. Accordingly, we sustain the Examiner’s rejection
of claim 31 as anticipated by Kroll.
Claim 32
We agree with Appellant that an actuator is a device that actuates or
moves something and a skilled artisan would not interpret the internal signal
processor 104 of Kroll to constitute an “actuator,” as proposed by the
Examiner. See Final Act. 10; see also Appeal Br. 86–88. Accordingly, we
do not sustain the Examiner’s rejection of claim 32 as anticipated by Kroll.
Claim 33
We disagree with the Examiner that claim 33 is “a recitation of an
intended use.” See Final Act. 11–12 (emphasis omitted). In this case, we
agree with Appellant that the “active ear implant” of claim 33 is a structural
feature having functional claim limitations and that the Examiner does not
provide sufficient evidence or technical reasoning to establish the
reasonableness of a belief that the elements of claim 33 are an inherent
characteristic of Kroll. See Appeal Br. 107–119; see also Final Act. 11–12;
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971); In re Rijckaert, 9 F.3d
1531, 1534 (Fed. Cir. 1993). Accordingly, we do not sustain the Examiner’s
rejection of claim 33 as anticipated by Kroll.
Claim 40
We agree with Appellant that an actuator is a device that actuates or
moves something and a skilled artisan would not interpret the internal signal
processor 104 of Kroll to constitute an “actuator” as proposed by the
Examiner. See Final Act. 12; see also Ans. 18; Appeal Br. 86–88, 120.
Accordingly, we do not sustain the Examiner’s rejection of claim 40 as
anticipated by Kroll.
Appeal 2018-002199
Application 12/268,247

16
Claim 42
We agree with the Examiner that the first end linkage is configured
such that its respective length is fixed via a fastener. See Final Act. 12; see
also the Board’s annotated version of Figure 3 of Kroll above. However, in
citing to Figures 3–5, 8, and 9 of Kroll, the Examiner fails to establish by
sufficient evidence or technical reasoning that the “second end linkage” is
configured such that “its respective length is fixed.” See Final Act. 12; see
also Appeal Br. 128; id. at 233 (Claims App.). Accordingly, we do not
sustain the Examiner’s rejection of claim 42 as anticipated by Kroll.
Claims 44–46 and 49
We agree with Appellant that a skilled artisan would not interpret the
universal joint 222 of Kroll to constitute the “actuator” as claimed. See
Final Act. 12–14; see also Ans. 18; Appeal Br. 129–141; id. at 233–235
(Claims App.). Accordingly, we do not sustain the Examiner’s rejection of
claims 44–46 and 49 as anticipated by Kroll.

Anticipation by Bushek
Claims 17, 34, 35, 43, and 48
Claim 17 recites that “when an active ear implant applies a first
stimulus to one of the linkage members or the joint in a first direction, a
second stimulus is applied to the first end of the second linkage member in a
second direction that is at least partially transverse to the first direction.”
Appeal Br. 230 (Claims App.). Here, we disagree with the Examiner that
“an active ear implant” is not “positively recited, but merely [is] an intended
result.” See Final Act. 15. Rather, the active ear implant of claim 17 is a
structural feature that functionally “applies a first stimulus to one of the
Appeal 2018-002199
Application 12/268,247

17
linkage members or the joint in a first direction.” See Appeal Br. 230
(Claims App.). We further disagree with the Examiner that the “whereby”
clause of claim 17 is conditional. See Final Act. 34–35; see also Ans. 20–
21; Appeal Br. 151–152. The “whereby” clause of claim 17 is not a
situation where a condition must be met (i.e., an if/then clause) for the
structure to perform a function. See Ex parte Schulhauser (Appeal No.
2013-007847 (PTAB April 28, 2016) (precedential)). Stated differently,
claim 17 recites “when an active ear implant applies a first stimulus to one of
the linkage members or the joint in a first direction,” then “a second stimulus
is applied to the first end of the second linkage member in a second direction
that is at least partially transverse to the first direction,” this describes the
structural arrangement required by the claim. See Appeal Br. 230 (Claims
App.).
In this case, as the Examiner considers the “active ear implant” to be
“an intended result” and not a “structural feature” as required by claim 17,
the Examiner does not apprise us as to what element of Figure 14 of Bushek
constitutes the “active ear implant.” See Final Act. 15. Additionally, we
agree with Appellant that “[r]otation is rotation” and a skilled artisan in the
medical arts would not consider “rotation” of locking screw 270 of Bushek
to constitute “a first stimulus” applied in a first direction, as required by
claim 17. See Appeal Br. 156 (“Rotation is not stimulus in a first
direction.”); see also Final Act. 15. For these reasons, the Examiner fails to
establish by a preponderance of the evidence that the teachings of Bushek
anticipate claim 17. Accordingly, we do not sustain the Examiner’s
rejection of claims 17, 34, 35, 43, and 48 as anticipated by Bushek.

Appeal 2018-002199
Application 12/268,247

18
Anticipation by Ball
Claims 23, 37, and 38
Claim 23 recites an actuator physically engaging an elastic member,
the actuator “being operative to move in at least a first direction to apply a
biasing force to said elastic member, wherein said second end of said elastic
member moves in a second direction in response to said biasing force,
wherein said first and second directions are at least partially transverse.”
Appeal Br. 231 (Claims App.). The Examiner finds that Ball discloses “an
actuator (510) physically engaging said elastic member (560) (Fig. 9).”
Final Act. 18. The Examiner further finds:
[The] actuator being operative to move in at least a first direction
to apply a biasing force to said elastic member (due to bending
of piezoelectric strips - col. 9, lines 23-40), wherein said second
end of said elastic member moves in a second direction in
response to said biasing force, wherein said first and second
directions are at least partially transverse (as a force transferred
through coiled spring 560 would travel in a direction
perpendicular or transverse to the first direction at several points
through the spring).

Id. at 18–19.

In this case, we agree with Appellant that the Examiner fails to
establish by sufficient evidence or technical reasoning that the “second end”
of elastic member 560 (i.e., the end of 560 connected via mechanical
coupling 580 to stapes HH (see Ball 9:47–48)) necessarily moves in a
second direction in response to the biasing force applied by actuator 510 to
elastic member 560. See Final Act. 18–19; see also Appeal Br. 186–187
(“Claim 23 recites that the second end of said elastic member moves in a
second direction. There is absolutely no support or evaluation of the prior
Appeal 2018-002199
Application 12/268,247

19
art as to why Ball expressed [sic] inherently discloses this feature.”). The
Examiner does not address Appellant’s contention in the Answer and merely
repeats what was already stated in the Final Office Action. Compare Ans.
12–13 with Final Act. 18–19. As such, the Examiner fails to establish by a
preponderance of the evidence that the teachings of Ball anticipate claim 23.
Accordingly, we do not sustain the Examiner’s rejection of claims 23, 37,
and 38 as anticipated by Ball.

Obviousness over Kroll and aWengen
Claim 7
The Examiner finds that Kroll “fails to disclose explicitly that the
elongate body is elastically deformable as recited in Claim 7” and relies on
the teachings of aWengen for the limitations of claim 7. Final Act. 21.
Appellant does not present arguments directed to this rejection, and thus, has
waived any such arguments. See Appeal Br., generally. Accordingly, we
summarily affirm the Examiner’s rejection of claim 7 as unpatentable over
Kroll and aWengen.
Claim 16
Claim 16 depends from claim 15 and recites “[t]he connector of claim
15, wherein said hinge comprises a living hinge.” Appeal Br. 230 (Claims
App.). As noted above for the anticipation rejection, the Examiner provides
no support for the finding that “the joint (210) of Kroll may be considered a
hinge.” See Final Act. 11. Indeed, the section of Kroll that describes joint
210 states “a ball and socket” joint. See Kroll 8:12–13. As the section of
aWengen cited by the Examiner (i.e., aWengen ¶ 17) also discloses a “ball
and socket” joint, aWengen does not cure this deficiency of Kroll. See Final
Appeal 2018-002199
Application 12/268,247

20
Act. 21. Accordingly, we do not sustain the Examiner’s rejection of claim
16 as unpatentable over Kroll and aWengen.

Obviousness over Bushek
Claims 18 and 19
Claims 18 and 19 ultimately depend from claim 17. See Appeal Br.
230–231 (Claims App.). The Examiner’s rejection of claims 18 and 19 is
based on the same unsupported findings discussed above with respect to
claim 17. See Final Act. 21–22. The Examiner does not rely on any
proposed modifications to Bushek to remedy the deficiencies of Bushek.
Accordingly, for reasons similar to those discussed above for claim 17, we
do not sustain the Examiner’s rejection of claims 18 and 19 as unpatentable
over Bushek.
Obviousness over Ball
Claim 50
Claim 50 depends from claim 23. See Appeal Br. 235 (Claims App.).
The Examiner’s rejection of claim 50 is based on the same unsupported
findings discussed above with respect to claim 23. See Final Act. 22–23.
The Examiner does not rely on any proposed modifications to Ball to
remedy the deficiencies of Ball. Accordingly, for reasons similar to those
discussed above for claim 23, we do not sustain the Examiner’s rejection of
claim 50 as unpatentable over Ball.

DECISION
We AFFIRM the Examiner’s decision to reject claims 44 and 45
under 35 U.S.C. § 112, first paragraph, for lack of written description.
Appeal 2018-002199
Application 12/268,247

21
We REVERSE the Examiner’s decision to reject claims 5, 6, 33, 34,
and 38 under 35 U.S.C. § 112, second paragraph, for indefiniteness.
We REVERSE the Examiner’s decision to reject claims 29, 35, and
38 under 35 U.S.C. § 101 for encompassing a human organism.
We AFFIRM the Examiner’s decision to reject claims 1, 8, 14, and 31
under 35 U.S.C. § 102(b) as anticipated by Kroll.
We REVERSE the Examiner’s decision to reject claims 2‒6, 15, 29,
32, 33, 40, 42, 44‒46, and 49 under 35 U.S.C. § 102(b) as anticipated by
Kroll.
We REVERSE the Examiner’s decision to reject claims 17, 34, 35,
43, and 48 under 35 U.S.C. § 102(b) as anticipated by Bushek.
We REVERSE the Examiner’s decision to reject claims 23, 37, and
38 under 35 U.S.C. § 102(b) as anticipated by Ball.
We AFFIRM the Examiner’s decision to reject claim 7 under 35
U.S.C. § 103(a) as unpatentable over Kroll and aWengen.
We REVERSE the Examiner’s decision to reject claim 16 under 35
U.S.C. § 103(a) as unpatentable over Kroll and aWengen.
We REVERSE the Examiner’s decision to reject claims 18 and 19
under 35 U.S.C. § 103(a) as unpatentable over Bushek.
We REVERSE the Examiner’s decision to reject claim 50 under 35
U.S.C. § 103(a) as unpatentable over Ball.
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