Oliver John. Ridler et al.Download PDFPatent Trials and Appeals BoardJan 3, 202014807473 - (D) (P.T.A.B. Jan. 3, 2020) 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. 14/807,473 07/23/2015 Oliver John Ridler CID02238USCO1/23USU1 1255 106936 7590 01/03/2020 Merchant & Gould Cochlear P.O. Box 2903 Minneapolis, MN 55402 EXAMINER STICE, PAULA J ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 01/03/2020 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): USPTO106936@merchantgould.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte OLIVER JOHN RIDLER, ADAM MUJAJ, and THOMAS COONEY ____________________ Appeal 2018-002612 Application 14/807,473 Technology Center 3700 ____________________ Before MICHAEL L. HOELTER, JEREMY M. PLENZLER, and FREDERICK C. LANEY, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1–8 and 16–19 (entered Apr. 12, 2017, “Final Act.”).2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Cochlear Limited as the real party in interest. Appeal Br. 3. 2 Claims 9–15 and 20–25 have been cancelled. Id. at 5. Appeal 2018-002612 Application 14/807,473 2 THE CLAIMED SUBJECT MATTER Appellant’s Specification describes the invention as relating “to systems and apparatuses that are used to transmit data between external and internal portions of medical devices.” Spec. ¶ 2. Claims 1 and 16 are independent. Claim 1 is reproduced below and is illustrative of the claimed subject matter. 1. An apparatus comprising: an annular coil comprising an inner coil diameter and a coil center point; an annular ferrite shield comprising an inner shield diameter and a shield center point, wherein the coil center point and the shield center point are substantially aligned, wherein the annular ferrite shield comprises a first magnetic flux permeability, and wherein the inner coil diameter and the inner shield diameter at least partially define a cylindrical volume; a magnet at least partially disposed within the cylindrical volume; and a gas disposed within the cylindrical volume, wherein the gas comprises a second magnetic flux permeability less than the first magnetic flux permeability. REJECTIONS References Basis 35 U.S.C. Claims Rejected Written Description § 112(a) 1–8, 16–19 Indefiniteness § 112(b) 16–193 Nyberg4 § 102 16–19 3 The Examiner has withdrawn the rejection of claims 1–8 under 35 U.S.C. § 112(b). Ans. 2. 4 US 2015/0025613 A1, pub. Jan. 22, 2015 (“Nyberg”). Appeal 2018-002612 Application 14/807,473 3 References Basis 35 U.S.C. Claims Rejected Nyberg, Conn5 § 103 1, 2, 4–8 Nyberg, Conn, Leigh6 § 103 3 ANALYSIS I. Section 112(a) Rejection The Examiner rejects claims 1–8 and 16–19 under 35 U.S.C. § 112(a) because the preamble of independent claims 1 and 16 recite generically “An apparatus comprising:,” which “could necessary include any type of device with an annular coil, ferrite shield, and magnet.” Final Act. 5. The Examiner states, “[t]his extreme breadth is not supported by the [Appellant’s] disclosure.” Id. Appellant argues that the Examiner “appears to focus solely on the use of the word ‘apparatus’ in the preamble and does not appear to contend that any of the other claim recitations are not enabled by the application.” Appeal Br. 14. The rejection, Appellant argues, “focused on the supposed breadth of the preamble alone and ignores the other factors, including the specificity of the rest of the claim.” Id. at 16. Moreover, “[t]he rejection’s singular focus on the preambles’ recitation of ‘apparatus’ misses the specificity of the claim as a whole and fails to form a proper rejection under Section 112.” Id. We find Appellant’s argument persuasive. The U.S. Patent and Trademark Office (USPTO) bears the initial burden of presenting a prima facie case of unpatentability. In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 5 US 2009/0240099 A1, pub. Sept. 24, 2009 (“Conn”). 6 US 2014/0155685 A1, pub. June 5, 2014 (“Leigh”). Appeal 2018-002612 Application 14/807,473 4 2002). The burden regarding the written description requirement is described in In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996) (parallel citations omitted): Insofar as the written description requirement is concerned, that burden is discharged by “presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.” Wertheim, 541 F.2d at 263. . . . Thus, the burden placed on the examiner varies, depending upon what the applicant claims. If the applicant claims embodiments of the invention that are completely outside the scope of the specification, then the examiner or Board need only establish this fact to make out a prima facie case. Id. at 263–64. . . . If, on the other hand, the specification contains a description of the claimed invention, albeit not in ipsis verbis (in the identical words), then the examiner or Board, in order to meet the burden of proof, must provide reasons why one of ordinary skill in the art would not consider the description sufficient. Id. at 264. Once the examiner or Board carries the burden of making out a prima facie case of unpatentability, “the burden of coming forward with evidence or argument shifts to the applicant.” Oetiker, 977 F.2d at 1445. . . . However, the Examiner here does not find that the Specification fails to disclose the invention defined by the body of claims 1 and 16, but that the use of the term “apparatus” in the preamble unbounds the claimed invention from any particular application disclosed in the Specification. Ans. 2–3. The Examiner states, “[t]he [S]pecification only provides support for a cochlear implant system, the specification does not provide any support what-so-ever for devices outside the realm of cochlear implants . . . which would necessarily be covered by the broad language of ‘an apparatus’ in that they are all clearly apparatuses.” Id. at 3. Although the invention claimed is not limited to a cochlear implant system, the Examiner fails to explain why Appeal 2018-002612 Application 14/807,473 5 this particular application is a necessary part of the invention, as defined by the claims and supported by the Specification. Claims 1 and 16 recite a specific assembly of elements having various defined characteristics. Appeal Br. 29, 30 (Claims App.). The Examiner does not present any evidence or reasons why persons skilled in the art would not understand the scope of the recited elements and characteristics outside the context of being a part of a cochlear implant system. For example, the Examiner does not provide any basis to believe a skilled artisan must first know the application of the claimed apparatus to understand the boundaries of the recited elements and characteristics. The Examiner notes, “it is unclear what the quantity of experimentation would even be to modify the disclosed cochlear implant into other working apparatuses.” Ans. 3. But it is unclear why this is relevant because neither claim 1 nor claim 16 recite causing a particular result beyond those associated with the recited elements. See, e.g., Appeal Br. 29, 30 (describing: a coil and shield that must share a common center, a coil and shield with inner diameters defining a cylindrical volume, a shield that must redirect a magnetic flux generated by the coil (claim 16) or a shield that must have a magnetic flux permeability that is greater than a gas disposed within the cylindrical volume (claim 1)). Claims 1 and 16 define an apparatus in terms that are independent of its ultimate integration into a larger working apparatus. The claims recite specific structures, specific configurations for these structures, and particular functional characteristics of these structures; none of which the Examiner suggests is not supported by the Specification. Therefore, on this record, we are not persuaded the Examiner has established a prima facie case that claims 1–8 and 16–19 fail to satisfy the Appeal 2018-002612 Application 14/807,473 6 requirements of 35 U.S.C. § 112(a) and, as a result, we do not sustain this rejection. II. Section 112(b) Rejection The Examiner rejects claims 16–19 because the “term ‘substantially’ is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.” Final Act. 6. Appellant counters that, in view of the Specification, a skilled artisan would understand that “substantially” connotes that the claimed invention allows for minor variations from the recited limitation. Appeal Br. 17–20 (citing Spec. ¶¶ 14, 17, 19, 20, 25, 26). We agree with Appellant. A claim is properly rejected as being indefinite under 35 U.S.C. § 112(b) if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim “contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014). Over the years, the Federal Circuit has consistently maintained that a term of approximation, such as “substantially,” is a descriptive term “commonly used in patent claims ‘to avoid a strict numerical boundary to the specified parameter.”’ Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1310–11 (Fed. Cir. 2003); see also Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001), Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995). In this case, the Examiner has not persuasively demonstrated that the use “substantially” creates any ambiguities beyond those inherently sanctioned by allowing an invention to be defined without providing strict numerical boundaries to a specified parameter. Appeal 2018-002612 Application 14/807,473 7 For example, claim 19 recites, “wherein the coil comprises an inner coil diameter comprising a shape that is at least one of round, substantially round, oval, substantially oval, and D-shaped.” Appeal Br. 31 (Claims App.). A skilled artisan would certainly be able to recognize a round shape, oval shape, or D-shape and “substantially” simply broadens these shapes beyond their strict definitions to include objects that a skilled artisan would still consider round, oval, or D-shaped, even if minor aspects of the objects are not within the strict meaning. Similarly, “wherein the volume is characterized by properties that do not substantially redirect a magnetic flux generated by the magnet,” as recited in claim 16, “substantially” is used to indicate minor deviations are still within the scope of the invention. The Examiner states, “[m]agnetic flux is a measure of a magnetic field which passes through a given area, often field lines are used to describe the magnetic flux and is measured with a magnometer.” Ans. 4. The Examiner finds, “no clear guidance [is given in the Specification] as to what or how the volume is altered or otherwise characterized to not redirect a magnetic flux.” Id. However, as Appellant points out, paragraph 20 of the Specification describes this volume as being devoid of any material that would cause substantial redirection of the magnetic flux. Spec. ¶ 20. In addition, paragraph 20 of the Specification further suggests that the inner volume is devoid of “any material proximate the magnet (e.g., above the magnet 318) to alter or redirect the magnetic flux thereof.” The Examiner has not shown sufficiently why, in view of the teachings of the Specification, a skilled artisan would not understand when the recited volume has properties that “do not substantially redirect a magnetic flux generated by the magnet.” Appeal 2018-002612 Application 14/807,473 8 Therefore, we do not sustain the Examiner’s rejection of claims 16–19 under 35 U.S.C. § 112(b). III. Section 102 Rejection The Examiner finds that Nyberg discloses each of the recited elements of claims 16–19. Final Act. 6–7. In particular, the Examiner finds that Nyberg discloses “an annular ferrite shield 325/335” that “is considered to be configured to redirected magnetic flux,” as recited by claim 16. Final Act. 6. Appellant argues that this finding lacks sufficient factual support. Appeal Br. 22. We agree. With respect to core factual findings in a determination of patentability, an Examiner cannot establish a prima facie case based on conclusions simply deemed to be basic knowledge or common sense. In re Zurko, 258 F.3d 1379, 1385–86 (Fed. Cir. 2001). Rather, the Examiner “must point to some concrete evidence in the record in support of [those] findings.” Id. Although in the Examiner identifies Nyberg as disclosing shields 325/335 may be formed using a trace amount of a material that can redirect a magnetic flux, the Examiner provides no basis to find Nyberg discloses shields 325/335 that are configured to redirect magnetic flux. Ans. 4–5. While it may be correct that Nyberg discloses using a material for shields 325/335 that has proprieties capable of redirecting magnetic flux, the Examiner provides no support for the proposition that the trace amounts used in the configuration Nyberg discloses would be recognized by a skilled artisan to actually redirect magnetic flux. In other words, the Examiner identifies evidence that Nyberg discloses using a material that could be configured to redirect magnetic flux, but offers nothing to show it is configured to do so. The above finding by Appeal 2018-002612 Application 14/807,473 9 the Examiner that the shield 325/335 in Nyberg “is considered to be configured to redirect[] magnetic flux,” is not based on any evidence in the record and, therefore, lacks evidentiary support and has little, if any, probative value. Therefore, we do not sustain the Examiner’s rejection that Nyberg anticipates claims 16–19. IV. Section 103 Rejections For independent claim 1, the Examiner finds that the combined teachings of Nyberg and Conn disclose all of the recited limitations assembled in the manner claimed. Final Act. 8–9. In particular, the Examiner finds that elements 325/335 in Figure 3 of Nyberg disclose “an annular ferrite shield.” Id. at 8. The Examiner does not suggest Conn discloses this element. See id. Appellant contends that, when properly construed, shield 325/335 in Nyberg cannot properly be relied upon to show the claimed “annular ferrite shield” because it is formed by a number of discrete traces that are split into two halves. Appeal Br. 23–24. We agree. The plain meaning of “annular” is “forming a ring.” See Annular Definition, Merriam-Webster.com, https://www.merriam- webster.com/dictionary/annular (last visited on Dec. 20, 2019). Consistent with this understanding, the Specification states element 312 in Figure 3 shows an annular shield. Spec. ¶ 18, Fig. 3. Therefore, “an annular ferrite shield,” as used in claim 1, is properly understood to mean a ferrite shield that forms a ring. Nyberg teaches that “[t]he shield is made up of two separate segments (325, 335)” and each segment is separately connected to separate terms 355. Nyberg ¶ 28, Fig. 3. Although at first glance shield segments 325 and 335 may look like a ring, the description in Nyberg makes it clear that these are Appeal 2018-002612 Application 14/807,473 10 two separate segments. The Examiner fails to explain why a skilled artisan would view these segments as “forming a ring” in view of the fact that Nyberg describes them as structurally separate with separate independent connectors. Nor does the Examiner provide a reasonable basis to construe “an annular ferrite shield” broadly enough to encompass these two structures. As a result, we agree with Appellant that the Examiner has failed to show Nyberg discloses “an annular ferrite shield,” as recited in claim 1, and that the Examiner’s determination that claim 1 would have been obvious in view of Nyberg and Conn is flawed. Therefore, because the Examiner’s determination that claims 2–8 are unpatentable depends also on the Examiner’s erroneous factual that Nyberg discloses “an annular ferrite shield,” we do not sustain the Examiner’s rejections of claims 1–8. DECISION The Examiner’s rejections of claims 1–8 and 16–19 are reversed. In summary: Claims Rejected Basis 35 U.S.C. Reference(s) Affirmed Reversed 1–8, 16– 19 § 112(a) Written Description 1–8, 16–19 16–19 § 112(b) Indefiniteness 16–19 16–19 § 102 Nyberg 16–19 1, 2, 4–8 § 103 Nyberg, Conn 1, 2, 4–8 3 § 103 Nyberg, Conn, Leigh 3 Overall Outcome 1–8, 16–19 REVERSED Copy with citationCopy as parenthetical citation