Peter B.J. Van Gerwen

Patent Trials and Appeals Board

Oct 2, 2019

12957085 - (D) (P.T.A.B. Oct. 2, 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.
12/957,085 11/30/2010 Peter B.J. Van Gerwen 5441-366 1511
111614 7590 10/02/2019
Pilloff & Passino LLP
2000 Duke Street
Suite 300
Alexandria, VA 22314
EXAMINER
KUHLMAN, CATHERINE BURK
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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 PETER B.J. VAN GERWEN
____________________

Appeal 2017-0086021
Application 12/957,085
Technology Center 3700
____________________

Before JAMES P. CALVE, WILLIAM A. CAPP, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

FINAMORE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 4, 5, 9–15, 17, 20, 22, 23, and 25–41.
An oral hearing was held on April 25, 2019.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART.

1 We reference herein the Specification filed November 30, 2010 (“Spec.”),
Final Office Action mailed July 15, 2015 (“Final Act.”), Appeal Brief filed
March 2, 2016 (“Appeal Br.”), Examiner’s Answer mailed August 29, 2016
(“Ans.”), and Reply Brief filed March 17, 2017 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Cochlear Limited. Appeal Br. 2.
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SUBJECT MATTER ON APPEAL
The invention “relates generally to hearing prostheses, and more
particularly, to hearing prostheses having a flexible elongate energy transfer
mechanism.” Spec. ¶ 1. Claims 1, 13, and 31, reproduced below, are the
independent claims on appeal, and are illustrative of the claimed subject
matter.
1. A hearing prosthesis for delivering sound vibrations
to a component of a recipient’s ear, the hearing prosthesis
comprising:
an implantable actuator configured to generate the sound
vibrations; and
a longitudinally-rigid and laterally-flexible elongate
flexible conductor adapted to be connected to the actuator and
adapted to be coupled to the ear component, wherein the
conductor is adapted to transport the sound vibrations from the
actuator to an interior component of the ear.

13. A method comprising:
implanting a flexible conductor in a recipient, wherein the
flexible conductor is longitudinally rigid and laterally flexible;
coupling a first end of the flexible conductor to a
component of an ear of the recipient; and
coupling a second end of the flexible conductor to an
actuator configured to generate sound vibrations representative
of an acoustic signal, such that the flexible conductor is
configured to transport energy from an energy source to the ear
component.

31. A hearing prosthesis for delivering sound vibrations
to a component of a recipient’s ear, the hearing prosthesis
comprising:
an implantable actuator configured to generate the sound
vibrations; and
elongate flexible conductor body adapted to be
vibrationally connected to the actuator and adapted to be
vibrationally coupled to the ear component and thus vibrationally
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couple the actuator to the ear component, and also thus
vibrationally conduct mechanical vibrations from the actuator to
the ear component.
Appeal Br., Claims App.

REJECTIONS3
The Examiner rejects the claims on appeal as follows:
claim 35 under 35 U.S.C. § 112, second paragraph, as indefinite;
claims 31–38 and 41 stand under 35 U.S.C. § 102(b) as anticipated by
Ball4;
claims 1, 39, and 40 under 35 U.S.C. § 103(a) as unpatentable over
Ball, as evidenced by Saadat5;
claim 22 under 35 U.S.C. § 103(a) as unpatentable over Ball, as
evidenced by Saadat, and Schaefer6;

3 The Examiner has withdrawn the rejection of claim 27 under 35 U.S.C.
§ 112, first paragraph, and the rejection of claims 1, 4, 5, 9–15, 17, 20, 22,
23, and 25–30 under 35 U.S.C. § 112, second paragraph. Ans. 2. In
withdrawing the rejection under 35 U.S.C. § 112, second paragraph, the
Examiner lists claim 35, but explains the withdrawn rejection is based on the
recitation of “longitudinally-rigid and laterally-flexible.” Id. Claim 35 does
not include such a recitation. Moreover, the Examiner’s rejection of
claim 35 under 35 U.S.C. § 112, second paragraph, is based on different
claim language. Final Act. 4; Ans. 2–3. Accordingly, we understand the
Examiner has not withdrawn the rejection of claim 35 under 35 U.S.C.
§ 112, second paragraph, and we consider the Examiner’s reference to
claim 35 in withdrawing the rejection to be a harmless oversight.
4 US 6,139,488, issued Oct. 31, 2000.
5 US 6,051,008, issued Apr. 18, 2000.
6 US 4,729,366, issued Mar. 8, 1988.
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claims 1, 4, 5, 9–11, 13–15, 17, 20, 23, and 25–30 under 35 U.S.C.
§ 103(a) as unpatentable over Gilman7 and Hortmann8; and
claim 12 under 35 U.S.C. § 103(a) as unpatentable over Gilman,
Hortmann, and Leysieffer9.

ANALYSIS
Prima Facie Case
For each ground of rejection, Appellant argues the Examiner fails to
make a prima facie case. See, e.g., Appeal Br. 6–11 (listing the issues on
appeal and identifying every issue as whether a prima facie case has been
established). Appellant, however, imposes a heightened requirement for a
prima facie case, and we disagree with Appellant that each of the
Examiner’s rejections fails to set forth a prima facie case.
“The prima facie case is merely a procedural device that enables an
appropriate shift of the burden of production.” In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011) (citations omitted) (quoting Hyatt v. Dudas, 492 F.3d
1365, 1369 (Fed. Cir. 2007)). An examiner establishes a prima facie case
when a “rejection satisfies 35 U.S.C. § 132, in ‘notify[ing] the
applicant ... [by] stating the reasons for [its] rejection, or objection or
requirement, together with such information and references as may be useful
in judging of the propriety of continuing the prosecution of [the]
application.’” Id. (alterations in original) (quoting § 132). Section 132 does
not require a prima facie case to include an express claim construction or to

7 US 5,176,620, issued Jan. 5, 1993.
8 US 5,411,467, issued May 2, 1995.
9 US 2001/0031996 A1, published Oct. 18, 2001.
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explicitly preempt every possible response to a rejection; rather, all that is
required of the Office is to set forth the statutory basis of the rejection in a
sufficiently articulate and informative manner. Id. at 1363; see also Chester
v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (“Section 132 is violated
when a rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection.”).
The Examiner’s rejections clearly convey the reasons for rejecting the
claims under 35 U.S.C. §§ 112, second paragraph, 102(b) and 103(a).
Appellant’s understanding of the rejections is manifested in its numerous
arguments against the substance of the rejections, which we address below.
Accordingly, each of the Examiner’s rejections satisfies the notice
requirement of § 132 and sets forth a prima facie case, thereby shifting the
burden of production to Appellant to show otherwise.

Official Notice
Throughout its briefs, Appellant contends that the Examiner is taking
Official Notice, and that the Examiner fails to meet the requirements for
taking Official Notice. Appeal Br. 85–87, 90–92; Reply Br. 134–137,
140–141. The Examiner’s rejections, however, do not rely on Official
Notice. Consequently, any alleged deficiency in taking Official Notice is
not persuasive of error.

Broadest Reasonable Interpretation
Appellant contends the Examiner’s rejections do not set forth the
broadest reasonable interpretation of the claim language pursuant to proper
procedure. Appeal Br. 26–34, 38–39, 45, 48–49, 57–58, 63–64, 77, 79–80,
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83, 92, 101–102, 110, 112–113, 116–118, 132, 140; Reply Br. 18–20,
27–28, 38, 44–45, 49, 61–62, 70, 90, 92–93, 98, 113–114, 125–127,
141–142, 144–145, 149–150, 152–155, 174–175, 180–182. As set forth
above, however, the Examiner does not have to expressly construe the claim
language to make a prima facie case. In re Jung, 637 F.3d at 1363 (“There
has never been a requirement for an examiner to make an on-the-record
claim construction of every term in every rejected claim . . . in order to make
out a prima facie rejection. This court declines to create such a burdensome
and unnecessary requirement.”). Thus, the absence of an express claim
construction, without more, is not persuasive of error. To the extent an
explicit construction is necessary to resolve an issue on appeal, we address
this below with respect to the specific rejections.

Request to Consider “Rewritten” Claims
Throughout its briefs, Appellant asks the Office to construe and
examine claims that Appellant has rewritten pursuant to its understanding of
how the Examiner is construing them. Appeal Br. 34–35 (“Appellant asks
the USPTO to explain how it would have construed claim 35 if Appellant
had written . . . . Appellant also asks the USPTO to state, with a yes or no
answer, that the above is anticipated by Ball.”), 39, 45–46, 49–50, 58, 64;
Reply Br. 28, 38–39, 45–46, 49–50, 62–63, 71, 182–183. As these claims
are not part of pending application, they are not before us on appeal.

Indefiniteness
Claim 35 depends from independent claim 31 and recites “the hearing
prosthesis is configured such that the conducted mechanical vibrations from
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the actuator to the ear component are conducted from the actuator to the ear
component with the conductor body static relative to a mastoid bone of the
recipient.” Appeal Br., Claims App. The Examiner determines claim 35 is
indefinite because it is unclear how the conductor can be static while
conducting vibrations. Final Act. 4; Ans. 2–3. According to the Examiner,
“[t]he definition of static is ‘characterized by a fixed or stationary condition’
or ‘lacking movement[.’]” Ans. 2. The Examiner further explains “[e]ven if
vibrations transmitted through a conductor are not obviously visible to the
naked eye, the conductor is still transferring mechanical movement and is
not static.” Id. at 3.
At the outset, Appellant argues the Examiner conflates enablement
with indefiniteness. Appeal Br. 18; Reply Br. 14. Per Appellant,
“[i]ndefiniteness is not established simply because an Examiner cannot
figure out how an invention works.” Appeal Br. 18; Reply Br. 14.
Appellant’s argument is not convincing. A claim is indefinite when it
contains words or phrases whose meaning is unclear to a person of ordinary
skill in the art. Ex parte McAward, 2017 WL 3669566 at *5 (PTAB
Aug. 25, 2017) (citations omitted). The Examiner determines the language
of claim 35, which, notably, describes how the device works, is unclear.
That this uncertainty may also raise a question of enablement does not show
a deficiency in the Examiner’s indefiniteness rejection.
Additionally, Appellant contends the rejection is conclusory because
its sole basis is the unsupported assertion that something cannot vibrate and
be static relative to something else. Appeal Br. 18–19; Reply Br. 14–15.
Appellant also asserts the Examiner has not addressed the requirements for
indefiniteness set forth in MPEP 2173.01, namely evaluating the claim
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language in light of: (A) the Specification; (B) the teachings of the prior art;
and (C) the interpretation by one of ordinary skill in the art at the time of the
invention. Appeal Br. 19–21; Reply Br. 15. Appellant further argues
claim 35 is not indefinite because a structure can be static despite conducting
vibrations, such as a railroad track being static to the ground even though a
person can hear the train from miles away due to the vibrations conducted by
the rail. Appeal Br. 22–25; Reply Br. 16–17. According to Appellant: “To
assert that the definition of ‘static’ excludes a compilation of matter that is
vibrating would basically render meaningless that term as the term is used in
the technology. Indeed, the molecules of any substance at a temperature
above absolute zero are moving.” Appeal Br. 23.
Appellant ostensibly acknowledges conducting vibrations is
movement, but maintains the Examiner’s interpretation of “static” to require
the absence of this type of movement is unreasonably broad. The question
of indefiniteness, therefore, turns on the construction of “static.”
When construing claims,
the PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art,
taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). If the specification does
not assign or suggest a particular definition to a claim term, it is appropriate
to consult a general dictionary definition of the word for guidance in
determining the ordinary and customary meaning of the claim term as
viewed by a person of ordinary skill in the art. Comaper Corp. v. Antec,
Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010).
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It is the use of the words in the context of the written description and
as customarily used by those of skill in the relevant art that accurately
reflects both the ‘ordinary’ and ‘customary’ meaning of the terms in the
claims.” Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v.
Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003). Consequently,
construing claim terms without considering the context in which those terms
appear is not reasonable. Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062
(Fed. Cir. 2016). Therefore, in construing the term “static,” we are mindful
that the overall context of the invention is transmitting acoustic energy
through a medium.
Appellant’s Specification is devoid of the term “static,” and provides
no guidance as to its intended meaning. In the absence of insight from the
Specification, we turn to the dictionary definition of “static,” which is “not
active or moving; stationary.” Static, Collins English Dictionary – Complete
and Unabridged (12th ed. 2014).
Appellant maintains a person of ordinary skill in the art would
understand the movement associated with conducting vibrations is not
indicative of whether the conductor is static or not, but Appellant does not
provide any support for this alleged understanding in the art. Furthermore,
this is not a case where a broad interpretation of a term ignores an otherwise
different description of the term in the specification, as there is no recitation
of “static” in the Specification. Cf. In re Smith, 871 F.3d 1375, 1383
(Fed. Cir. 2017) (“[G]iving the term ‘body’ such a strained breadth in the
face of the otherwise different description in the specification was
unreasonable.”).
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In view of the foregoing, the broadest reasonable interpretation of
“static” is lacking movement. In view of this interpretation, it is unclear
how a conductor body conducting mechanical vibrations, i.e., moving, is
static, as claim 35 recites. We, therefore, sustain the indefiniteness rejection
of claim 35.

Anticipation by Ball
Independent claim 31
Appellant challenges the Examiner’s finding that Ball’s compliant
connecting member 225B discloses a “elongate flexible conductor body
adapted to be vibrationally connected to the actuator and adapted to be
vibrationally coupled to the ear component, and also thus vibrationally
conduct mechanical vibrations from the actuator to the ear component,” as
recited in independent claim 31. Appeal Br. 64–65; Reply Br. 72–78;
Final Act. 5 (citing Ball 2:54–55, 4:49–51, 6:59–7:24, Figs. 4–5); Ans. 6
(citing Ball 2:27–30, 3:24–38, 51–55, 4:48–51, 6:38–40). According to
Appellant, Ball’s connecting member moves back and forth to impart
vibrations to the oval window of the cochlea, thereby imparting force, not
conducting vibrations. Reply Br. 72–78.
Regardless of whether Ball’s connecting member moves back and
forth, Ball nonetheless discloses that compliant connecting member 225B,
which replaces wire 25B, communicates mechanical vibrations from output
transducer 24 to stapes 34, which in turn transmits these vibrations to oval
window 36 of the inner ear. Id. at 3:29–34, 6:60–62. Given that Ball’s
compliant connecting member 225B communicates vibrations from the
output transducer to the stapes, Appellant does not apprise of us error in the
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Examiner’s finding that Ball’s compliant connecting member 225B discloses
the elongated flexible conductor body recited in independent claim 31. We,
therefore, sustain the rejection of independent claim 31.
Claims 32 and 33
Claims 32 and 33 depend from independent claim 31. Appeal Br.,
Claims App. Appellant does not make arguments for claims 32 and 33 apart
from independent claim 31. Accordingly, we sustain the rejection of
claims 32 and 33 for the same reasons as independent claim 31.
Claims 34 and 41
Claim 34 depends from independent claim 31, and recites “the hearing
prosthesis is configured such that the conducted mechanical vibrations from
the actuator to the ear component are conducted from the actuator to the ear
component without the vibrations passing through a looped portion.”
Appeal Br., Claims App. (emphasis added). The Examiner finds Ball’s
embodiment using compliant connecting member 600 or 700 anticipates
claim 34. Final Act. 5; Ans. 5. As shown in Figures 7 and 8, each of
compliant connecting members 600 and 700 includes a looped portion,
namely spring 630 and 740, respectively. The Examiner finds the spring is
used to compensate for relatively slow physical movements, such as position
shifting and pressure changes, and is not part of the conducting pathway
such that the conducted vibrations do not pass through a looped portion.
Final Act. 5 (citing Ball 4:1–32); Ans. 5–6 (citing Ball 4:2–18, 6:22–41).
Appellant argues there is no disclosure that Ball’s springs are
vibrationally isolated. Appeal Br. 61; Reply Br. 65–69. Appellant’s
argument is persuasive.
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Ball does not describe any conductive pathway for the compliant
connecting member 600 or 700. Ball does disclose the compliant connecting
member combines the physical properties of a damper and a spring to
compensate for relatively slow physical movements, i.e., have relatively
high dampening at low frequencies, while transmitting audible vibrations,
i.e., have relatively low dampening at audio frequencies, thereby
maintaining acceptable sound reproduction. Ball 6:32–41. This disclosure,
however, is not limited to compliant connecting members 600 or 700, but
instead applies to the compliant connecting member generally. The
Examiner acknowledges the compliant connecting member of each of the
embodiments shown in Figures 4 and 5 uses the spring to conduct vibrations
while dampening. Ans. 5 (“Figs. 4 and 5 illustrate the elastic component as
part of the conducting pathway.”). For these reasons, the Examiner has not
shown persuasively that Ball discloses a hearing prosthesis that is configured
to conduct mechanical vibrations from the actuator to the ear component
without the vibrations passing through a looped a portion, as claim 34
requires. We, therefore, do not sustain the rejection of claim 34.
Claim 41 depends from independent claim 31, and includes a similar
limitation to claim 34, namely “the hearing prosthesis is configured such that
the conducted mechanical vibrations from the actuator to the ear component
are conducted from the actuator to the ear component without the vibrations
passing through a spring portion.” Appeal Br., Claims App. (emphasis
added). The Examiner’s rejection of claim 41 suffers from the same
deficiency as the rejection of claim 34. Final Act. 5; Ans. 5–6.
Accordingly, we similarly do not sustain the rejection of claim 41.

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Claim 35
In view of our determination that claim 35 is indefinite, we cannot
sustain the prior art rejection of this claim because to do so would require
speculation as to the scope of the claim. See In re Steele, 305 F.2d 859,
862–63 (CCPA 1962) (holding that the Examiner and the Board were wrong
in relying on what, at best, were speculative assumptions as to the meaning
of the claims and in basing a prior-art rejection thereon). Our decision in
this regard is pro forma and based solely on the indefiniteness of the claim,
and does not reflect on the adequacy of the prior art evidence applied in
support of the rejection.
Claim 36
Claim 36 depends from independent claim 31, and recites “the hearing
prosthesis is configured such that the conducted mechanical vibrations from
the actuator to the ear component are conducted from the actuator to the ear
component with the conductor body fixed to a mastoid bone of the
recipient.” Appeal Br., Claims App. (emphasis added). The Examiner finds
Ball’s compliant connecting member 225B is attached to the mastoid bone
via housing 10 and therefore conducts vibrations from the output transducer
to the ear component with the compliant connecting member fixed to the
mastoid bone. Final Act. 5 (citing Ball, Fig. 4). The Examiner further finds
Ball’s compliant connecting member 225 is fixed to output transducer 24
within housing 10 which is implanted or embedded within mastoid bone 14.
Ans. 4 (citing Ball 5:14–15, 8:13).
In contrast, Appellant argues the Examiner has not shown Ball
discloses a conductor body fixed to the mastoid bone, as claim 36 requires.
Appeal Br. 40–42; Reply Br. 31–37, 40–41. In particular, Appellant
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contends compliant connecting member 225B, on which the Examiner relies
for disclosing the recited conductor body, is not fixed to the mastoid bone,
but instead moves back and forth to evoke a hearing precept. Appeal Br. 40,
42; Reply Br. 40. This argument, however, is misaligned with the
Examiner’s rejection. The rejection is not based on compliant connecting
member 225B not moving. Rather, the Examiner finds Ball discloses a
conductor body fixed to a mastoid bone because Ball’s compliant connecting
member 225B is attached to actuator 24 within housing 10, which is
imbedded into a mastoid bone. Ans. 4.
Appellant further contends the Examiner has not established
housing 10 is fixed to the mastoid bone. Appeal Br. 41; Reply Br. 32–37.
We disagree. The cited portions of Ball disclose implanting and imbedding
an implantable hearing device into a mastoid bone, i.e., fixing an
implantable hearing device to a mastoid bone. Ball 5:14–15, 8:13. Ball
further discloses implantable hearing device 10 includes output
transducer 24 to which compliant connecting member 225B is attached. Id.
at 2:60–62, 6:59–7:1, Fig. 4. Given that Ball’s compliant connecting
member 225B is attached to output transducer 24 which is part of
implantable hearing device 10 fixed to the mastoid bone, Appellant does not
apprise us of error in the Examiner’s finding that Ball discloses a conductor
body fixed to a mastoid bone, as recited in claim 36. We, therefore, sustain
the rejection of claim 36.
Claim 37
Claim 37 depends from independent claim 31, and recites “the
flexible body is configured to have an impedance mismatch with
surrounding tissues when implanted in the recipient.” Appeal Br.,
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Claims App. The Examiner relies on Ball’s teaching of coating the
compliant connecting member with silicone for disclosing the recited
impedance mismatch. Final Act. 6 (citing Ball 7:29–35). According to the
Examiner, “Appellant discloses silicone is an appropriate material for
decoupling the flexible connector from surrounding tissues and for providing
an impedance mismatch with surrounding tissues.” Ans. 4 (citing Spec.
¶ 48).
Appellant argues the Examiner proffers no evidence or technical
reasoning to support the finding that Ball’s silicone coating discloses the
recited impedance mismatch. Appeal Br. 42–44, 46–48; Reply Br. 41–44,
46–48. In particular, Appellant contends the Examiner impermissibly
conflates Appellant’s description of a configuration that uses silicone with
evidence that the prior art structure discloses the claimed subject matter.
“A patent applicant is free to recite features of an apparatus either
structurally or functionally. Yet, choosing to define an element functionally,
i.e., by what it does, carries with it a risk.” In re Schreiber, 128 F.3d 1473,
1478 (Fed. Cir. 1997) (internal citation omitted). Namely,
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic
of the prior art, it possesses the authority to require the applicant
to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.
Id. (quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)).
Claim 37 defines the flexible conductor body in terms of its function,
i.e., “hav[ing] an impedance mismatch with surrounding tissues when
implanted in the recipient.” Appeal Br., Claims App. Appellant’s
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Specification explains sufficient impedance mismatch between the flexible
conductor and surrounding tissue facilitates the efficient transfer of sound
vibrations from the actuator to an ear component. Spec. ¶ 25. The
Specification further explains that the flexible conductor may include a
sheath to provide an impedance mismatch. Id. ¶ 48 (“Each sheath 206 may
alter the acoustic impedance of the flexible conductor 131 in the regions
where the sheath is located. Thus, different shapes and materials for the
sheaths may be used to provide the flexible conductor 131 with different
acoustic impedances along its length.”). According to the Specification,
sheath 206 may be a coating or sleeve placed around flexible conductor
core 202 of the flexible conductor and may be made of silicone. Id.
Like Appellant’s flexible conductor, Ball’s compliant connecting
member conducts sound vibrations from an actuator to a component of the
ear. Id. at 3:29–34, 6:60–62. Ball discloses “[a]lthough the characteristics
of a compliant connecting member may vary widely while still providing
acceptable performance, certain materials and parameters are preferable in
the design of an implantable hearing aid according to the present invention.”
Id. at 7:25–29. Specifically, Ball discloses the compliant connecting
member has a silicone coating. Id. at 7:32–35.
In view of the similarities in function and structure between
Appellant’s flexible body and Ball’s compliant connecting member, the
Examiner has reason to believe the recited function may be an inherent
characteristic of Ball’s compliant connecting member and has the authority
to require Appellant to show otherwise. Appellant makes no such showing.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner’s rejection of claim 37. Consequently, we sustain the rejection.
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Claim 38
Claim 38 depends from independent claim 31, and recites that the
hearing prosthesis further comprises “a sheath disposed over the flexible
body, the sheath adapted to acoustically decouple the conductor body, when
implanted in the recipient, from tissue interior to the recipient and proximal
to the conductor body.” Appeal Br., Claims App. The Examiner relies on
Ball’s teaching of coating the compliant connecting member with silicone
for disclosing the recited sheath. Final Act. 6 (citing Ball 7:29–35).
Appellant argues the broadest reasonable interpretation of “sheath”
does not encompass Ball’s coating. Appeal Br. 51–52. Appellant’s
argument is unpersuasive because Appellant’s Specification describes
“sheath” as a “coating or sleeve.” Ans. 4; Spec. ¶ 48.
Appellant also argues Ball’s silicone coating does not expressly or
inherently disclose the “acoustically decouple” limitation.
Appeal Br. 52–53; Reply Br. 50–56. Appellant does not apprise us of error
in the Examiner’s finding that Ball’s silicone coating discloses this
functional limitation.
As set forth above with respect to claim 37, Appellant’s flexible
conductor and Ball’s compliant connecting member conduct sound
vibrations from an actuator to an ear component. Spec. ¶ 25; Ball 3:29–34,
6:60–62. Appellant’s Specification explains that the flexible conductor may
include a silicone coating to decouple the flexible connector from the
surrounding tissues. Spec. ¶ 48 (“Sheath 206A and sheath 206B may be, for
example, a coating or sleeve placed around flexible conductor core 202 and
may be formed of any appropriate material (e.g., silicone) serving to
decouple the flexible connector from the surrounding tissues.”). Similarly,
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Ball’s compliant connecting member includes a silicone coating.
Ball 7:32–35. Consequently, the Examiner has reason to believe the recited
function of acoustically decoupling the conductor body may be an inherent
characteristic of Ball’s silicone coating, and Appellant does not show
otherwise.
For these reasons, Appellant does not apprise us of error in the
Examiner’s rejection of claim 38. We sustain the rejection.

Obviousness Based on Ball, as Evidenced by Saadat
Independent claim 1
The Examiner finds that Ball’s output transducer 24 discloses an
implantable actuator configured to generate sound vibrations, and that Ball’s
compliant connecting member 225 or 325 discloses an elongate flexible
conductor adapted to be connected to the actuator and to transport sound
vibrations from the actuator to the ear component. Final Act. 11 (citing Ball
2:54–55, 4:49–51, 6:59–7:24, Figs. 4–5). The Examiner further finds that
Ball’s conductor is made of stainless steel wire, and that Saadat teaches
stainless steel wire is resilient in nature and holds a particular shape when
not subjected to a holding force. Id. (citing Saadat 15:8–18). The Examiner
determines it would have been obvious that “the stainless steel conductor of
Ball is also longitudinally-rigid since stainless steel wire is resilient in nature
and thus will maintain a longitudinal shape in the absence of an external
bending force, as evidenced by Saadat.” Id. The Examiner also determines
“a conductor/wire of a resilient or bendable nature which maintains a
determined shape in the absence of an external holding force is considered to
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be longitudinally rigid and laterally flexible[].” Ans. 11 (quoting
Final Act. 4).
At the outset, we are unpersuaded of error by Appellant’s contention
that the Examiner has not considered the “laterally-flexible” limitation of
independent claim 1. Appeal Br. 124–126; Reply Br. 163–167. The
Examiner relies on Ball’s compliant connecting member 225 or 325 for
disclosing the recited elongate flexible conductor. Final Act. 11. In the
Answer, the Examiner explains that Ball’s compliant connecting member is
laterally flexible because “this is the only direction in which an elongate
wire conductor could flex.” Ans. 11.
Appellant also argues the Examiner has not shown Saadat evidences
that a stainless steel wire is longitudinally rigid as independent claim 1
requires. Appeal Br. 127–128, 132–133; Reply Br. 167–168, 175–176. In
particular, Appellant alleges the Examiner does not explain how a stainless
steel wire that is resilient in nature and holds a particular shape when not
subject to a holding force is longitudinally rigid. Appeal Br. 127;
Reply Br. 167–168. Appellant further alleges that “resilient” is not
concomitant with rigidity, and that Saadat essentially discloses the opposite
of a longitudinally rigid wire. Appeal Br. 133; Reply Br. 175–176.
Appellant’s allegations, however, are not commensurate with the scope of
independent claim 1.
Independent claim 1 recites a “longitudinally-rigid and
laterally-flexible elongate flexible conductor.” Appeal Br., Claims App.
The claim requires a conductor that is both rigid and flexible, namely rigid
in the longitudinal direction and flexible in the lateral direction.
Independent claim 1 does not preclude any resiliency, but instead requires
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flexibility in the lateral direction. The Examiner explains that Saadat’s
resilient stainless steel wire is longitudinally rigid and laterally flexible
because “it can be bent and it will also hold a longitudinal shape.” Ans. 11.
Appellant does not apprise us of error in this finding that stainless steel wire
is longitudinally rigid and laterally flexible.
Appellant further asserts the Examiner has not shown Saadat
evidences that the stainless steel wire of Ball is longitudinally rigid.
Appeal Br. 128–130; Reply Br. 168–173. In particular, Appellant contends
Saadat and Ball both disclosing stainless steel wires does not mean Ball’s
wire is longitudinally rigid like Saadat’s wire. Appeal Br. 129;
Reply Br. 168–171. According to Appellant, “there are scores of types of
stainless steel.” Appeal Br. 129; Reply Br. 170. Appellant also argues that
Ball’s wire is looped, whereas Saadat’s wire is folded. Appeal Br. 129–130
(citing Ball, Figs. 4–5; Saadat, Fig. 20B); Reply Br. 171–173.
Appellant ostensibly maintains that the Examiner must show the prior
art teachings would have resulted in the claimed invention. There is no such
requirement for obviousness. “Obviousness does not require absolute
predictability of success.” In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir.
1988). Rather, “all that is required is a reasonable expectation of success”
that the prior art teachings would have resulted in the claimed invention. Id.
at 904 (citations omitted). The Examiner reasons that Ball’s wire is
longitudinally rigid because it is made from stainless steel, like Saadat’s
wire, which is longitudinally rigid. Final Act. 11; Ans. 11. Appellant argues
Ball’s wire may not be longitudinally rigid, but makes no showing that it is
not. In view of the foregoing, the Examiner has demonstrated a reasonable
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expectation of success that teachings of Ball and Saadat would have resulted
in the claimed invention, including the longitudinally-rigid conductor.
Additionally, Appellant argues the Examiner has not shown Ball
discloses a conductor “adapted to transport the sound vibrations from the
actuator to an interior component of the ear,” as recited in independent
claim 1. Appeal Br. 131, 134–137; Reply Br. 173–174, 176–177.
According to Appellant, Ball’s compliant connecting member 225B is a
spring, which is a notoriously well-known vibration isolator device.
Appeal Br. 134 (citing the Mechanical Engineering Reference Manual for
the PE Exam10).
Ball, however, does not describe compliant connecting member 225B
as a spring. Rather, Ball discloses compliant connecting member 225B
includes spring 228B. Ball 6:62–7:1. Ball further discloses the compliant
connecting member combines the physical properties of a damper and a
spring to compensate for relatively slow physical movements and maintain
acceptable sound reproduction. Id. at 6:32–41. Although the compliant
connecting member dampens low frequencies, it also transmits audio
frequencies from output transducer 24 to the stapes of the ear. Id. at
3:29–34, 6:32–41, 60–62. Accordingly, Appellant does not apprise of us
error in the Examiner’s finding that Ball’s compliant connecting
member 225B is adapted to transport sound vibrations from the actuator to
an interior component of the ear.
We are similarly unpersuaded of error by Appellant’s assertion that, in
view of Ball’s disclosure of a spring, which is a vibration isolator device, to

10 Michael R. Lindeburg, PE, Mechanical Engineering Reference Manual
for the PE Exam 58-12–15 (10th ed. 1997).
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connect the actuator to the ear component, Ball teaches away from the
claimed invention. Appeal Br. 137–138; Reply Br. 177–179. As set forth
above, Ball discloses compliant connecting member 225B communicates
vibrations from output transducer 24 to stapes 34. Ball 3:29–34, 6:60–62.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner’s rejection of independent claim 1. We, therefore, sustain the
rejection.
Claim 39
Claim 39 depends from claim 9, which in turn depends from
independent claim 1. Appeal Br., Claims App. Claim 9 recites “wherein the
flexible conductor comprises a wire,” and claim 39 recites “the wire is
adapted to transport the sound vibrations from the actuator to the ear
component.” Id. The Examiner relies on Ball’s compliant connecting
member for disclosing these limitations. Final Act. 42 (citing Ball 4:49–51,
7:5–8).
Appellant argues the broadest reasonable interpretation of “the wire is
adapted to transport the sound vibrations from the actuator to the ear
component” recited in claim 39 does not encompass Ball’s compliant
connecting member 225 for four reasons. Appeal Br. 140. Per Appellant:
First, the words of the claim are different than the words of Ball.
Second, Appellant’s specification discloses a structure that is
different than the structure of Ball at issue. Third, the
prosecution history clearly evidences that the structure of Ball is
different than the structure of claim 1. Fourth, extrinsic
evidence, such as dictionary definitions, differentiate claim 1
from the teachings of Ball.
Id. Appellant’s reasons are not convincing of error.
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There is no ipsissimis verbis test for determining whether a reference
discloses a claim element, i.e., identity of terminology is not required. In re
Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Ball discloses compliant
connecting member 225B is fabricated from wire. Ball 7:2–5. Ball also
discloses compliant connecting member 225B communicates vibrations
from output transducer 24 to stapes 34. Id. at 3:29–34, 6:60–62. Ball,
therefore, discloses a wire adapted to transport sound vibrations from an
actuator to an ear component, as claim 39 requires. Being unapprised of
error in the Examiner’s rejection of claim 39, we sustain the rejection.
Claim 40
Claim 40 depends from claim 10, which depends from claim 9, which
in turn depends from independent claim 1. Appeal Br., Claims App.
Claim 10 recites that the flexible conductor comprises a wire, and that the
hearing prosthesis further includes “a sheath disposed over the wire, the
sheath adapted to acoustically decouple the wire, when implanted in the
recipient, from tissue interior to the recipient and proximal to the flexible
conductor.” Id. Claim 40 recites “the wire is adapted to transport the sound
vibrations from the actuator to the interior component of the ear.” Id.
The Examiner relies on Ball for disclosing the limitations of claims 10
and 40. Final Act. 12. In particular, the Examiner finds Ball’s compliant
connecting member discloses the recited wire. Id. (citing Ball 4:49–51,
7:5–8). The Examiner further finds Ball’s silicone coating discloses the
recited sheath. Id. (citing Ball 7:29–35).
Appellant argues the broadest reasonable interpretation of “sheath”
does not encompass Ball’s coating. Appeal Br. 145–146;
Reply Br. 184–185. Appellant’s argument is unpersuasive for the same
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reason it is unpersuasive with respect to claim 38, namely Appellant’s
Specification describes “sheath” as a “coating or sleeve.” Ans. 4; Spec.
¶ 48.
Appellant also argues Ball’s disclosure of a silicone coating is not an
express or inherent disclosure of a sheath that is adapted to acoustically
decouple the wire, as recited in claim 10 from which claim 40 depends.
Appeal Br. 146–147; Reply Br. 183–186. According to Appellant, the
Examiner impermissibly conflates Appellant’s description of a configuration
that uses silicone with evidence that the prior art structure discloses the
claimed subject matter. Reply Br. 183–184. This argument does not apprise
us of error in the Examiner’s finding that Ball’s silicone coating discloses
this functional limitation for the reasons set forth above with respect to
claim 38.
Additionally, Appellant adopts its argument for the similar limitation
of claim 39, and asserts the broadest reasonable interpretation of “the wire is
adapted to transport the sound vibrations from the actuator to the interior
component of the ear” recited in claim 40 does not encompass Ball’s
compliant connecting member 225. Appeal Br. 147–149; Reply Br. 186.
This argument is unpersuasive of error of the reasons set forth above with
respect to claim 39.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner’s rejection of claim 40. We, therefore, sustain the rejection.

Obviousness Based on Ball, as Evidenced by Saadat, and Schaefer
Claim 22 depends from independent claim 1, and recites “the flexible
conductor is a wire having a diameter of 100 microns.” Appeal Br.,
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Claims App. The Examiner finds Ball discloses a flexible conductor but is
silent as to its diameter. Final Act. 12. The Examiner also finds Schaefer
teaches a hearing prosthesis having a wire conductor with a diameter
of 127 microns. Id. (citing Schaefer 5:1–4). The Examiner determines it
would have been obvious to use a wire of a similar diameter to Schaefer’s
wire for Ball’s flexible conductor because “hearing aid conductors of this
size are known to work within the confines of the middle ear and are capable
of transmitting vibrations to middle ear components.” Id. The Examiner
further determines:
Schaefer does not disclose the exact diameter of 100 microns
recited in claim 22, however a diameter of 127 microns is on the
same order of magnitude as 100 microns and nothing in
[Appellant’s] [S]pecification indicates the claimed diameter of
100 microns is critical or solves a stated purpose or problem that
would not equally be solved by a 127 micron diameter wire.
Paragraph [0042] of [Appellant’s] [S]pecification recites the
conductor may have any diameter depending on the recipient and
the desired amount of impedance mismatch.
Id.
Appellant asserts there is no support for the Examiner’s determination
that hearing aid conductors having the diameter size recited in claim 22 are
known to work within the confines of the middle ear. Appeal Br. 107;
Reply Br. 134–135. Appellant points out that Schaefer’s wire is at least 25%
thicker than the recited wire. Appeal Br. 107; Reply Br. 134. Appellant’s
assertion, however, misconstrues the Examiner’s rejection. The Examiner
determines that hearing aid conductors having Schaefer’s diameter size
of 127 microns, not the diameter size recited in claim 22, are known to work
within the confines of the middle ear. Final Act. 12; Ans. 14. Indeed,
Schaefer teaches an implantable hearing device implanted in the mastoid
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bone and communicating with the middle ear space. Schaefer 4:57–62,
Fig. 1. More specifically, Schaefer’s connecting member 208B, which has a
diameter of 127 microns, communicates vibrations from an output
transducer to the oval window or round window of the cochlea. Id. at 5:3–4,
5:66–6:2.
Appellant also contends the Examiner uses Appellant’s disclosure in
developing the rejection, which is impermissible hindsight reasoning.
Appeal Br. 107; Reply Br. 135. Appellant’s contention does not apprise us
of error.
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other
variable within the claims. . . . [I]n such a situation, the applicant
must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results
relative to the prior art range.
In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (citations omitted).
The Examiner determines the only difference between the subject matter of
claim 22 and the prior art is the size of the diameter of the flexible
conductor. Final Act. 12. The Examiner permissibly references Appellant’s
Specification to show lack of criticality of the recited diameter size.
Ans. 14.
Appellant additionally argues that it is entirely unclear whether
Schaefer’s wire can be used as Ball’s flexible conductor because Schaefer’s
wire is used in a different arrangement than that of Ball. Appeal Br. 107;
Reply Br. 136–137. This argument, however, is premised on the physical
combination of Schaefer’s wire into Ball’s hearing device and, therefore, is
not responsive to the Examiner’s rejection which explains why the claimed
subject matter would have been obvious in view of the teachings of Ball and
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Schaefer. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.”); see also In re Nievelt, 482
F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does
not involve an ability to combine their specific structures.”).
In view of the foregoing, Appellant does not apprise us of error in the
Examiner’s rejection of claim 22. We sustain the rejection.

Obviousness Based on Gilman and Hortmann
Independent claim 1
The Examiner finds that Gilman’s electro-mechanical means 120
discloses an implantable actuator configured to generate sound vibrations,
and that Gilman’s liquid transmission means 140 discloses an elongate
flexible conductor adapted to be connected to the actuator and to transport
sound vibrations from the actuator to the ear component. Final Act. 6 (citing
Gilman 3:38–52). The Examiner acknowledges Gilman is silent as to the
conductor being longitudinally rigid. Id. The Examiner further finds
Hortmann’s tube 43 discloses a longitudinally-rigid conductor because
tube 43 “extend[s] from an actuator to an ear component [and] is surrounded
by or has embedded therein a wire 45 to allow for stable shaping of the
curvature of the tube (such that the tube will maintain the shape provided by
a surgeon).” Id. (citing Hortmann 4:42–47, Figs. 2–3). The Examiner
determines
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[i]t would have been obvious to one of ordinary skill in the art at
the time of the invention to incorporate a wire similar to that
shown by Hortmann into the conductor tube taught by Gilman in
order to maintain the conductor in a desired shape and
configuration after implantation.
Id. at 6–7.
Appellant argues Gilman does not disclose a flexible conductor, as
independent claim 1 requires. Appeal Br. 73–77; Reply Br. 83–89. We
disagree. As the Examiner explains, Gilman’s liquid transmission
means 140 is flexible because liquid filled tube 142 is made from silicone
elastomer. Ans. 7 (citing Gilman 5:21–23). As evidenced by the term
“elastomer,” a person of ordinary skill in the art would have understood an
elastomer has elastic properties. See In re Jacoby, 309 F.2d 513, 516
(CCPA 1962) (explaining that persons skilled in the art “must be presumed
to know something” about the art “apart from what the references disclose”).
Given that one of ordinary skill would have understood a silicone elastomer
to be elastic, Appellant does not apprise us of error in the Examiner’s
finding that Gilman’s liquid transmission means 140 discloses a flexible
conductor.
Appellant also contends the Examiner has not shown Hortmann
teaches a longitudinally-rigid and laterally-flexible conductor, as
independent claim 1 requires. Appeal Br. 77–82; Reply Br. 90–97.
Appellant’s criticism of Hortmann, however, does not apprise us of error in
the Examiner’s rejection, which is based on the combination Gilman and
Hortmann. See In re Keller, 642 F.2d at 426 (“[O]ne cannot show
non-obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.”).
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Contrary to Appellant’s contention, the Examiner is not relying on
Hortmann for teaching a conductor that is longitudinally rigid and laterally
flexible. Rather, the Examiner determines it would have been obvious to
incorporate Hortmann’s wire into Gilman’s silicone elastomer tube to
thereby yield a longitudinally-rigid and laterally-flexible conductor. Ans. 7.
According to the Examiner “incorporation of a wire, even a coiled wire, into
a silicone elastomer tube, as in the combination of Gilman in view of
Hortmann, will create a tube which is laterally flexible (since it can be bent)
and longitudinally rigid (since it will hold a longitudinal shape).” Id.
Appellant further argues Gilman does not disclose a conductor
adapted to transport sound vibrations from the actuator to an interior
component of the ear, as independent claim 1 requires. Appeal Br. 83–85;
Reply Br. 98–103. In particular, Appellant contends “there is absolutely no
technical line of reasoning presented in the rejection of claim 1 to support
any assertion that the transport of fluid in Gilman corresponds to the
conduction of vibrations as claimed.” Appeal Br. 83.
The Examiner, however, is not relying on the transport of fluid in
Gilman to disclose the conduction of vibrations. Rather, the Examiner finds
the fluid in Gilman’s liquid transmission means 140 enables the liquid
transmission means to conduct vibrations. Ans. 7 (citing Gilman 3:38–52,
6:27–29). Indeed, Gilman discloses liquid transmission means 140 imparts
acoustical energy, i.e., sound vibrations, from electro-mechanical means 120
to cochlea 46. Gilman 6:27–29. Hence, Appellant does not apprise of us
error in the Examiner’s finding that Gilman’s liquid transmission means is a
conductor adapted to transport sound vibrations from the actuator to an
interior component of the ear.
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Additionally, Appellant maintains the Examiner’s rationale for
combining the teachings of Gilman and Hortmann is illusory, and proffers
several arguments as to why the Examiner’s reasoning is deficient.
Appeal Br. 86–88; Reply Br. 104–109. We address each argument in turn,
and for the reasons below, Appellant does not apprise us of error in the
Examiner’s rationale.
Appellant contends there is no rationale for incorporating Hortmann’s
wire into Gilman’s tube. Appeal Br. 88; Reply Br. 108. We disagree. The
Examiner explains a person of ordinary skill in the art would have made the
proposed combination “to maintain the conductor in a desired shape and
configuration after implantation.” Final Act. 7.
Appellant also argues there is no evidence a person of ordinary skill in
the art would have recognized Gilman has a need for maintaining the
conductor in a desired shape and configuration after implantation.
Appeal Br. 86, 88; Reply Br. 104–106, 108–109. A reason for combining
the teachings of prior art references, however, need not come from the
references themselves.
The suggestion to combine may be found in explicit or implicit
teachings within the references themselves, from the ordinary
knowledge of those skilled in the art, or from the nature of the
problem to be solved. When determining the patentability of a
claimed invention which combines two known elements, the
question is whether there is something in the prior art as a whole
to suggest the desirability, and thus the obviousness, of making
the combination.
WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir.
1999) (citations and internal quotations omitted). Moreover, “if a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
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using the technique is obvious unless its actual application is beyond his or
her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Hortmann’s wire improves the function of a fluid-filled tube for conducting
sound vibrations in a hearing device by enabling stable shaping of the tube.
Hortmann 4:42–44. The Examiner reasons a person of ordinary skill in the
art would have recognized that adding Hortmann’s wire to Gilman’s liquid
filled tube 142 would provide a similar improvement to Gilman’s liquid
transmission means, thereby rendering the proposed combination obvious.
Ans. 8.
Appellant further alleges there is no evidence that adding Hortmann’s
wire to Gilman’s tube would maintain the modified tube in a desired shape
and configuration after implantation. Appeal Br. 87; Reply Br. 107. This
argument is unpersuasive at least because bodily incorporation is not the
standard for obviousness. E.g., In re Keller, 642 F.2d at 425. Furthermore,
Hortmann teaches tube 43 for conducting sound vibrations in the ear is made
of silicone, and that wrapping wire 45 around tube 43 makes it possible to
achieve stable shaping of the tube. Hortmann 3:31–35, 4:29–33, 42–44,
Fig. 2. Similar to Hortmann’s tube 43, Gilman’s liquid filled tube 142 for
conducting sound vibrations in the ear is made from silicone elastomer.
Gilman 5:21–23, 6:27–29. In view of these teachings, a person of ordinary
skill in the art would have recognized that adding Hortmann’s wire to
Gilman’s tube would similarly allow for stable shaping of Gilman’s tube.
Appellant argues the Examiner has not identified a wire that could be
incorporated into Gilman. Appeal Br. 87; Reply Br. 106. According to
Appellant: “[T]he [E]xaminer does not say that the wire of Hortmann would
have been placed into the tube of Gilman. Instead, the [E]xaminer states that
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it would been obvious to incorporate ‘a wire similar to that shown by
Hortmann into the conductor tube.’” Appeal Br. 87 (quoting Final Act. 7).
Appellant’s argument is not persuasive of error. The Examiner explicitly
explains that Hortmann’s wire 45 provides for stable shaping, and, therefore,
is relying on Hortmann’s wire 45 for the proposed combination.
Final Act. 6–7. Moreover, a wire similar to Hortmann’s wire 45 includes at
least Hortmann’s wire 45.
For these reasons, Appellant does not apprise us of error in the
Examiner’s rejection of independent claim 1. We, therefore, sustain the
rejection.
Claims 4, 9, and 23
Claims 4, 9, and 23 depend from independent claim 1. Appeal Br.,
Claims App. Appellant does not make arguments for claims 4, 9, and 23
apart from independent claim 1. Accordingly, we sustain the rejection of
claims 4, 9, and 23 for the same reasons as independent claim 1.
Claim 5
Claim 5 depends from independent claim 1, and recites “the flexible
conductor is configured to have an impedance mismatch with surrounding
tissues when implanted in the recipient.” Appeal Br., Claims App. The
Examiner finds that Gilman discloses the fluid within tube 142 of liquid
transmission means 140 is selected to minimize impedance mismatch with
the perilymph fluid, and that tube 142 is made of silicone, which according
to Appellant’s Specification, generates an impedance mismatch with
surrounding tissue. Final Act. 7 (citing Gilman 4:4–34, Spec. ¶ 48).
Alternatively, the Examiner finds Gilman discloses the bore of tube 142 may
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be half the size of the bore of the cochlea which causes an impedance
mismatch. Id. (citing Gilman 4:35–63).
In contrast, Appellant argues the Examiner has not shown that Gilman
discloses a conductor adapted to have the recited impedance mismatch.
Appeal Br. 89–98; Reply Br. 110–122. We disagree.
Gilman discloses that impedance mismatch causes losses due to
reflection of sound. Gilman 4:35–39. Gilman further discloses liquid filled
tube 142 mitigates these losses by varying the size of the bore at the
operative intersection of the end of the tube with the cochlea. Id. at 4:53–56.
According to Gilman, the loss is only 36% if the bore of the tube is half the
size of the bore of the cochlea at the operative intersection. Id. at 4:57–58.
In view of Gilman’s disclosure that losses are the result of impedance
mismatch, a 36% loss at the operative intersection of the end of the tube with
the cochlea indicates there is an impedance mismatch between the tube and
the cochlea. Gilman’s liquid transmission means 140, including liquid filled
tube 142, therefore, discloses a conductor configured to have an impedance
mismatch with the surrounding tissues when implanted in the recipient.
In view of the foregoing, Appellant does not apprise of error in the
Examiner’s rejection of claim 5. We sustain the rejection.
Claim 10
Claim 10 depends from claim 9, which in turn depends from
independent claim 1. Appeal Br., Claims App. Claim 10 recites that the
flexible conductor comprises a wire, and that the hearing prosthesis further
includes “a sheath disposed over the wire, the sheath adapted to acoustically
decouple the wire, when implanted in the recipient, from tissue interior to
the recipient and proximal to the flexible conductor.” Id.
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The Examiner finds Hortmann discloses wire 45 embedded in tube 43,
which is made from silicone. Final Act. 7 (citing Hortmann 4:29–30, 44–47,
Fig. 3). According to the Examiner, in such a configuration, the silicone
tube is a sheath disposed over the wire, and the silicone material will
acoustically decouple the wire from tissue. Id.
Appellant argues the broadest reasonable interpretation of “sheath”
does not encompass Hortmann’s tube. Appeal Br. 99–101;
Reply Br. 123–125. We disagree. The ordinary and customary meaning of
“sheath” is “a case or close-fitting covering.” Sheath, Random House
Kernerman Webster’s College Dictionary (2010). Similarly, Appellant’s
Specification describes a sheath as a coating or sleeve placed around a core.
Spec. ¶ 48. Accordingly, the broadest reasonable interpretation of “sheath”
is a close-fitting covering, which encompasses Hortmann’s silicone tube 43
when wire 45 is embedded therein. As shown in Hortmann’s Figure 3,
silicone tube 43 completely surrounds and covers wire 45 when the wire is
embedded therein.
Appellant also argues there is no support for the Examiner’s finding
that Hortmann’s tube will acoustically decouple the wire. Appeal Br. 100;
Reply Br. 123–124. Appellant does not apprise us of error in the Examiner’s
finding that Hortmann’s tube discloses this functional limitation.
Both Hortmann’s tube 43, which is part of hydromechanical coupling
element 23 attached to converter 21, and Appellant’s flexible conductor
conduct sound vibrations from an actuator to an ear component. Hortmann
3:31–35, Fig. 2; Spec. ¶ 25. Appellant’s Specification explains that the
flexible conductor may include a silicone coating to decouple the flexible
connector from the surrounding tissues. Spec. ¶ 48. Like Appellant’s
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sheath, Hortmann’s tube 43 is made of silicone. Hortmann 4:29–33.
Consequently, the Examiner has reason to believe the recited function of
acoustically decoupling the wire may be an inherent characteristic of
Hortmann’s silicone tube, and Appellant does not show otherwise.
For these reasons, Appellant does not apprise us of error in the
Examiner’s rejection of independent claim 10. We sustain the rejection.
Claims 11 and 25
Claims 11 and 25 depend from claim 10. Appeal Br., Claims App.
Appellant does not make arguments for claims 11 and 25 apart from
claim 10. Accordingly, we sustain the rejection of claims 11 and 25 for the
same reasons as claim 10.
Claim 26
Claim 26 depends from independent claim 1, and recites that hearing
prosthesis further comprises “a fixation device configured to limit movement
of the flexible conductor in a direction parallel to the longitudinal length of
the conductor.” Appeal Br., Claims App. The Examiner relies on Gilman’s
sealing material 92 which holds the distal end of tube 142 in place for
disclosing the recited fixation device. Final Act. 8 (citing Gilman 5:34–41).
According to the Examiner, “[a]nything that fixes an element to something
else will limit movement of the element.” Ans. 8–9.
Appellant argues that the broadest reasonable interpretation of each of
“fixation device” and “limit movement” does not encompass Gilman’s
sealing material 92 and what it does, respectively. Appeal Br. 102–103.
Appellant, however, does not describe any meaningful distinction between
the claim terms “fixation device” and “limit movement” and the
corresponding language in Gilman, “sealing material” and “held in place,”
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respectively. See In re Bond, 910 F.2d at 832 (explaining there is no
ipsissimis verbis test for determining whether a reference discloses a claim
element).
Appellant further argues that Gilman’s sealing material 92 holding the
tube in place does not make the sealing material a fixation device because
holding the tube in place does not mean limiting the tube’s movement.
Appeal Br. 103–104; Reply Br. 128–130. By holding tube 142 in place,
however, Gilman’s sealing material 92 prevents tube 142 from moving in
any direction. Consequently, Appellant does not persuade us of error in the
Examiner’s finding that Gilman’s sealing material 92 discloses the fixation
device recited in claim 26.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner’s rejection of claim 26. We, therefore, sustain the rejection.
Independent claim 13
Independent claim 13 is similar to independent claim 1, and Appellant
relies on its arguments for independent claim 1 to contest the rejection of
independent claim 13. Appeal Br. 108; Reply Br. 138. These arguments are
not persuasive of error of the reasons set forth above with respect to
independent claim 1, and we similarly sustain the rejection of independent
claim 13.
Claims 14 and 30
Claims 14 and 30 depend from independent claim 13. Appeal Br.,
Claims App. Appellant does not make arguments for these claims apart
from independent claim 13. Accordingly, we sustain the rejection of
claims 14 and 30 for the same reasons as independent claim 13.
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Claim 15
Claim 15 depends from claim 14, and recites that coupling the first
end of the flexible conductor comprises “connecting the first end of the
flexible conductor to a coupling element; and coupling the coupling element
to the ear component.” Appeal Br., Claims App. The Examiner relies on
Gilman’s sealing member 92 to disclose the recited coupling element, and
finds Gilman discloses coupling the first end of tube 142 to sealing
member 92 and coupling sealing member 92 to the ear component.
Final Act. 10 (citing Gilman 5:34–41).
Appellant argues that the broadest reasonable interpretation of
“coupling element” does not including Gilman’s sealing material 92, and
that the broadest reasonable interpretation of each of “connecting” and
“coupling” does not encompass what occurs at sealing material 92.
Appeal Br. 119. Appellant, however, does not describe any consequential
distinction between these claim terms and the corresponding language in
Gilman. See In re Bond supra.
Appellant further argues that Gilman’s sealing material 92 holding the
tube in place does not correspond to the actions of connecting the first end of
flexible conductor to a coupling element and coupling the coupling element
to the ear component, as claim 15 requires. Appeal Br. 120–121;
Reply Br. 156–158.
Gilman discloses that, in position 146a, distal end 146 of tube 142
penetrates round window 52 of cochlea 46 and is in contact with
perilymph 82. Gilman 5:26–29, Fig. 3A. Gilman further discloses that in
position 146a, tube 142 is held in place with sealing material 92. Id. at
5:34–41, Fig. 3A. As shown in Figure 3A, in position 146a, distal end 146
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of tube 142 is connected to sealing member 92, and sealing member 92 is
coupled to cochlea 46. Consequently, Appellant does not apprise us of error
in the Examiner’s finding that Gilman discloses the “connecting” and
“coupling” limitations of claim 15.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner’s rejection of claim 15. We sustain the rejection.
Claim 17
Claim 17 depends from claim 15. Appeal Br., Claims App. Appellant
does not make arguments for claim 17 apart from claim 15. Accordingly,
we sustain the rejection of claim 17 for the same reasons as claim 15.
Claim 20
Claim 20 is similar to claim 10, and Appellant’s arguments for
claim 20 are similar to its arguments for claim 10. Compare
Appeal Br. 122–123, with Appeal Br. 99–101; compare Reply Br. 158–162,
with Reply Br. 122–125. These arguments are not persuasive of error of the
reasons set forth above with respect to claim 10, and we similarly sustain the
rejection of independent claim 20.
Claim 27
Claim 27 depends from independent claim 13, and recites that the
action of implanting the flexible conductor comprises “flexing the conductor
about a portion of the mastoid bone of the recipient.” Appeal Br.,
Claims App. The Examiner finds Gilman discloses liquid transmission
means 140 is inserted through the mastoid bone and led around the mallus
and incus. Final Act. 8 (citing Gilman 3:41–47, 5:11–15). According to the
Examiner, flexing the conductor around the mallus is considered flexing
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about a portion of the mastoid bone because the term “about” means “near or
close to.” Id. The Examiner also explains that bending or maneuvering
liquid transmission means 140 around structures near the mastoid bone after
exiting the mastoid bone will cause flexing of the liquid transmission
means 140 about at least a portion of the mastoid bone. Ans. 9.
Appellant argues Gilman does not disclose leading anything around
the mallus and incus. Appeal Br. 110–111; Reply Br. 142–143. Gilman,
however, expressly discloses distal end 146 of tube 142 of liquid
transmission means 140 is led around mallus 40 and incus 42.
Gilman 5:11–16.
Appellant further contends there is not support for the Examiner’s
finding that bending or maneuvering tube 142 around structures near the
mastoid would cause flexing of the tube. Reply Br. 139–141. We disagree.
Gilman discloses tube 142 is made from a flexible material, namely silicone
elastomer. Gilman 5:21–23.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner’s rejection of claim 27. We sustain the rejection.
Claim 28
Claim 28 depends from independent claim 13, and recites that the
action of implanting the flexible conductor comprises “fixing the flexible
conductor in the recipient to prevent movement of the conductor in a
direction parallel to the longitudinal length of the conductor.” Appeal Br.,
Claims App. The Examiner finds Gilman’s liquid transmission means 140 is
fixed in the recipient by sealing member 92 to prevent movement thereof.
Final Act. 8 (citing Gilman 5:34–41).
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Appellant argues that the broadest reasonable interpretation of each of
“fixing” and “prevent movement” does not encompass what occurs with
respect to sealing means 92. Appeal Br. 113. Yet, Appellant does not
describe any meaningful distinction between these claim terms and “held in
place.” See In re Bond supra.
Appellant also argues Gilman’s sealing material 92 that holds
tube 142 does not result in fixing any flexible conductor in the recipient to
prevent movement of the conductor in a direction parallel to the longitudinal
length of the conductor, as claim 28 requires. Appeal Br. 114–115;
Reply Br. 146–148. By holding tube 142 in place, however, Gilman’s
sealing material 92 prevents tube 142 from moving in any direction.
Consequently, Appellant does not persuade us of error in the Examiner’s
finding that Gilman’s discloses the “fixing” limitation of claim 28.
For these reasons, Appellant does not apprise us of error in the
Examiner’s rejection of claim 28. We sustain the rejection.
Claim 29
Claim 29 depends from claim 28, and recites that action of fixing the
flexible conductor comprises “fixing the flexible conductor in the recipient
to a mastoid bone of the recipient at a location along the flexible conductor
between the first end and the second end of the flexible conductor.”
Appeal Br., Claims App. The Examiner finds Gilman discloses tube 142 is
implanted through the mastoid bone between first and second ends of the
tube. Final Act. 8 (citing Gilman 3:41–47). According to the Examiner,
implanting “constitutes fixing into the mastoid bone because a portion of the
conductor between the first and second ends resides within the mastoid bone
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and is left in place at this location.” Ans. 9 (citing Gilman 3:41–47,
Figs. 1–2).
Appellant contends “[s]imply because Gilman discloses that the
flexible conductor is implanted through the mastoid bone does not mean that
it is fixed to the mastoid bone.” Appeal Br. 117; Reply Br. 150–151.
Although Gilman discloses implanting the tube, as opposed to fixing the
tube, Appellant does not describe any meaningful distinction between
“implanting” and “fixing.” See In re Bond supra. Appellant, therefore, does
not persuade us of error in the Examiner’s finding that Gilman’s discloses
fixing the flexible conductor as recited in claim 29. Being unapprised of
error in the Examiner’s rejection of claim 29, we sustain the rejection.

Obviousness Based on Gilman, Hortmann, and Leysieffer
Claim 12 depends from independent claim 1. Appeal Br.,
Claims App. Claim 12 recites the hearing prosthesis further comprises:
a stimulating lead assembly adapted to be implanted at
least partially within a cochlea of the recipient and comprising
one or more electrode contacts; and
a stimulator unit configured to deliver a stimulation signal
to an electrode contact for applying electrical stimulation to the
cochlea in accordance with the acoustic signal.
Id.
The Examiner finds Leysieffer’s electrical intracochlear array 10 and
signal processing electronic module 34 teach the recited stimulating lead
assembly and stimulator unit, respectively. Final Act. 10 (citing Leysieffer
¶¶ 20–21, 72, 83–86). The Examiner determines that it would have been
obvious to include Leysieffer’s electrical intracochlear array 10 and signal
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processing electronic module 34 as part Gilman’s system, as modified by
Hortmann, to provide both electrical and mechanical stimulation and thereby
overcomes the drawbacks of either type of hearing aid alone. Id. at 10–11
(citing Leysieffer ¶ 21); Ans. 10.
Appellant argues the Examiner’s has not provided a sufficient reason
for combining the teachings of Gilman, Hortmann, and Leysieffer.
Appeal Br. 105–106; Reply Br. 130–133. In particular, Appellant contends
[t]he Examiner has not substantiated that the person of ordinary
skill in the art would have recognized any problem of Gilman,
and thus sought out Leysieffer, or that the person of ordinary skill
in the art practicing Gilman would have recognized that the
problems detailed in Leysieffer are transferrable or otherwise
correlated to what would occur when practicing Gilman.
Appeal Br. 106.
A reason for combining the teachings of prior art references, however,
need not come from the references themselves. See WMS Gaming supra.
Moreover, “a combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416. The Examiner’s proposed combination is a
combination of familiar elements according to known methods, namely the
addition of Leysieffer’s stimulation electrode assembly to Gilman’s system,
as modified by Hortmann, to provide a hearing aid having both electrical and
mechanical stimulation capabilities. Consequently, Appellant does not show
error in the Examiner’s reason for combining the teachings of Gilman,
Hortmann, and Leysieffer.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner’s rejection of claim 12. We, therefore, sustain the rejection.

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Graham Factors
Appellant contends the Examiner’s obviousness rejections are
deficient because the Examiner has not properly evaluated the Graham
factors. Appeal Br. 66–72, 150–151; Reply Br. 79–82, 187–188. More
specifically, Appellant contends that the Examiner has inaccurately assessed
the Graham factor regarding the level of ordinary skill in the art because the
Examiner has and is rejecting the claims for indefiniteness.
Appeal Br. 69–70, 150–151, Reply Br. 80–81, 187. We disagree with
Appellant.
Like obviousness, indefiniteness is evaluated from the perspective of a
person of ordinary skill in the art. Namely, indefiniteness considers whether
a claim contains a word or phrase having a meaning that is unclear to a
person of ordinary skill in the art. See Ex parte McAward supra. A
determination that the language of a claim would have been unclear to a
person of ordinary skill in the art is not tantamount to a misunderstanding
the invention or a mischaracterization of the level of ordinary skill in the art.
More simply put, the mere existence of an indefiniteness rejection does not
call into question the assessed level of ordinary skill and does not apprise us
of error in the Examiner’s obviousness rejections.

CONCLUSION
Claim(s)
Rejected 35 U.S.C. §  Basis Affirmed Reversed
35 112, second paragraph  indefiniteness 35
31–38, 41 102(b)  Ball 31–33, 36–38 34, 35, 41
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Claim(s)
Rejected 35 U.S.C. §  Basis Affirmed Reversed
1, 39, 40 103(a) Ball, as evidenced by Saadat 1, 39, 40
22 103(a)
Ball, as evidenced
by Saadat, and
Schaefer
22
1, 4, 5,
9–11,
13–15, 17,
20, 23,
25–30
103(a) Gilman and Hortmann
1, 4, 5,
9–11,
13–15, 17,
20, 23,
25–30

12 103(a)
Gilman,
Hortmann, and
Leysieffer
12
Overall
Outcome
1, 4, 5,
9–15, 17,
20, 22, 23,
25–33,
35–40
34, 41

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART