Cochlear LimitedDownload PDFPatent Trials and Appeals BoardDec 24, 20212021004879 (P.T.A.B. Dec. 24, 2021) 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. 14/061,410 10/23/2013 Marcus ANDERSSON 5441-055 6056 111614 7590 12/24/2021 Pilloff Passino & Cosenza LLP 2000 Duke Street Suite 300 Alexandria, VA 22314 EXAMINER DANG, JULIE X ART UNIT PAPER NUMBER 2653 NOTIFICATION DATE DELIVERY MODE 12/24/2021 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 MARCUS ANDERSSON Appeal 2021-004879 Application 14/061,410 Technology Center 2600 Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR., and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3, 7, 8, 32–37, 39, 41, 45–48, 52, 53, 57–71, all of the claims under consideration.2 We have jurisdiction under 35 U.S.C. § 6(b). Oral arguments were heard on December 13, 2021. A transcript of that hearing will be added to the record once available. We AFFIRM IN PART. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Cochlear Limited. Appeal Brief filed February 28, 2021 (“Appeal Br.”) at 2. 2 Claims 2, 4–6, 9–31, 38, 40, 42–44, 49–51, and 54–56 are cancelled. Appeal Br. 130–133. Appeal 2021-004879 Application 14/061,410 2 CLAIMED SUBJECT MATTER Summary The subject matter of Appellant’s application relates to a “hearing prosthesis system, including a sound capture device configured to capture a sound and generate a signal based on the captured sound, and a vibratory portion configured to vibrate in response to the signal to evoke a hearing percept via bone conduction.” Spec., Abstract.3 The “system is configured to capture the sound on a first side of a recipient where the sound capture device is located and transfer the signal to a second side of the recipient where the vibratory portion is located.” Id. Exemplary Claims Claims 1, 32, and 39 are independent. 1, 32, 37, and 39, reproduced below, exemplify the claimed subject matter: 1. A hearing prosthesis system, comprising: a sound capture device configured to capture a sound and generate a signal based on the captured sound; and a vibratory portion configured to vibrate in response to the signal to evoke a hearing percept via bone conduction, wherein the system is configured to capture the sound on a first side of a recipient where the sound capture device is located and transfer the signal to a second side of the recipient where the vibratory portion is located. 3 In addition to the Appeal Brief noted above, we refer to: (1) the originally filed Specification filed October 23, 2013 (“Spec.”); (2) the Non-Final Office Action mailed August 6, 2020 (“Final Act.”); and (3) the Examiner’s Answer mailed June 7, 2021 (“Ans.”); and (4) the Reply Brief filed August 9, 2021 (“Reply Br.”). Appeal 2021-004879 Application 14/061,410 3 32. A method, comprising: capturing sound at a first side of a recipient; and evoking a hearing percept via bone conduction with energy originating on an opposite side of the recipient based on the captured sound. 37. The method of claim 33, wherein: the hearing percept evoked via acoustic conduction is evoked without any prosthetic component in the outer ear canal of the opposite side of the recipient. 39. A behind-the-ear device, comprising: a vibratory portion configured to vibrate in response to an audio signal to evoke a hearing percept via bone conduction; and a speaker portion configured to evoke a hearing percept via an acoustic pressure wave. Appeal Br. 130–131 (Claims Appendix). REFERENCES The Examiner relies on the following prior art references:4 Name Reference Date Hagen US 6,389,142 B1 May 14, 2002 Westerkull US 2004/0234091 A1 Nov. 25, 2004 Kim US 2008/0112581 A1 May 15, 2008 Solum US 2009/0196444 A1 Aug. 6, 2009 Goldstein US 2009/0290721 A1 Nov. 26, 2009 Parker US 2010/0137675 A1 June 3, 2010 Kaulberg US 2011/0019838 A1 Jan., 27, 2011 Heiman US 2011/0301729 A1 Dec. 8, 2011 Wiskerke US 2011/0319703 A1 Dec. 8, 2011 Andersson US 2012/0095283 A1 Apr. 19, 2012 Samuels US 2012/0300965 A1 Nov. 9, 2012 Pontoppidan US 2013/0051566 A1 Feb. 28, 2013 4 All citations to the references use the first-named inventor or author only. Appeal 2021-004879 Application 14/061,410 4 REJECTIONS The Examiner rejects the claims as shown below: Claim(s) Rejected 35 U.S.C. § References Non-Final Act. 1, 32–36, 69, 70, 71 102(a)(1) Westerkull 4 39, 48, 57, 59, 68 102(a)(1) Kim 6 3, 45, 47, 52 103 Westerkull, Kim 7 7 103 Westerkull, Andersson 9 8 103 Westerkull, Parker 9 61, 67 103 Westerkull, Solum 10 37 103 Westerkull, Kim 10 41, 58 103 Kim, Helman 11 46 103 Westerkull, Wiskerke 12 53 103 Westerkull, Pontoppidan 12 60 103 Westerkull, Kaulberg 13 62 103 Westerkull, Solum, Samuels 13 63 103 Westerkull, Solum, Samuels, Goldstein 14 64 103 Westerkull, Samuels 15 65 103 Westerkull, Hagen 15 66 103 Westerkull, Hagen, Solum 16 37 112(b) indefiniteness 3 OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of Appellant’s arguments and evidence. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv)(2020). Appeal 2021-004879 Application 14/061,410 5 Appellant does not persuade us that the Examiner errs in the obviousness rejections of claims 1, 3, 7, 8, 32–37, 45, 46, 53, 60–67, and 69–71, and we adopt as our own the findings and reasons set forth by the Examiner for these claims to the extent consistent with our analysis herein. Final Act. 3– 18; Ans. 2–24. We add the following discussion of those claims primarily for emphasis. Anticipation Rejection of Claim 1 The Examiner finds Westerkull discloses each of the limitations of claim 1 including a sound capture device and a vibratory portion wherein the system is configured to capture the sound on a first side of a recipient where the sound capture device is located and transfer the signal to a second side of the recipient where the vibratory portion is located. Non-Final Act. 4 (citing Westerkull ¶¶ 18, 19 and Fig. 3). Appellant argues the Examiner errs in rejecting claim 1 as anticipated by Westerkull by applying distinct embodiments of Westerkull to disclose the limitations at issue. Specifically, Appellant argues that “[p]aragraph 0018 is about the embodiment of FIG. 2, not the embodiment of FIG. 3” and so the “Examiner cites one portion of the specification addressing one embodiment, without explaining how that portion is also applicable to the other embodiment.” Appeal Br. 126, 128. The Examiner disagrees that the rejection relies on separate embodiments, finding that: Fig 2 and paragraphs 17–19 show an implant part 8 of an implanted bone conduction hearing device with a vibrator 1. Fig.3 teaches a similar implanted bone conduction hearing device as shown in Fig.2 but Fig.3 did not show a vibrator. However, Fig.3’s implanted part 8 must have the same vibrator Appeal 2021-004879 Application 14/061,410 6 as shown in Fig 2 because (1) it is the basic function for any implanted bone conduction hearing device with a vibrator for producing vibrations through the user's skull; and (2) two different embodiments such as Fig.2 and Fig.3 of Westerkull perform the same function: “to vibrate in response to the signal” (see claim 1, line 4); therefore, the inherent vibrator in Fig.3 must be the same vibrator as stated in Fig.2. Ans. 14–15. In response, Appellant argues that “figure 3 need not ‘must have the same vibrator as shown in figure 2.’ It could be a different vibrator. The mere fact that there is functionality associated or otherwise required does not mean that the same vibrator must be present.” Reply Br. 117. We are unpersuaded the Examiner errs in finding Westerkull anticipates claim 1 and thus we sustain the rejection of claim 1. Westerkull’s figure 3 is reproduced below with additional markings for illustration: Appeal 2021-004879 Application 14/061,410 7 Figure 3 of Westerkull depicts external part 7 including microphone 6 and implanted part 8 including a vibrator. Westerkull discloses that the “implanted part 8 is arranged on the non- deaf side of the skull, while the external part 7 with the microphone 6 . . . are located on the deaf side of the skull.” Westerkull ¶ 19. We agree with the Examiner’s finding that bone conducting implanted part 8 of Figure 3, similar to the implanted part 8 of Figure 2, includes a vibrator. Appellant provides no evidence to explain why implanted part 8 lacks a vibrator or explanation as to how implanted part 8 would perform its bone conduction function without a vibrator. As disclosed in Appellant’s own Specification, bone conduction devices “convert a received sound into vibrations” that “are transferred through the skull to the cochlea causing generation of nerve impulses.” Spec. 4. Accordingly, Appellant’s argument that the rejection relies on two distinct embodiments of Westerkull to disclose the limitations at issue is unpersuasive because we agree with the Examiner’s finding that Westerkull’s Figure 3 and corresponding text disclose an implanted part including a vibrator. Therefore, the Examiner need not rely on Figure 2 of Westerkull. Moreover, Appellant’s argument that “figure 3 need not ‘must have the same vibrator as shown in figure 2’” misses the mark because the two figures need not have the same vibrator to support the rejection. Rather, the Examiner need only show that Westerkull’s Figure 3 discloses any vibrator at all. Because the Examiner’s makes such a finding we agree with the Examiner that Westerkull’s Figure 3 and corresponding text discloses a sound capture device and a vibratory portion “wherein the system is configured to capture the sound on a first side of a recipient where the sound capture device is located and transfer the signal to a second side of the Appeal 2021-004879 Application 14/061,410 8 recipient where the vibratory portion is located,” as recited in claim 1. Appeal Br. 130. Accordingly, Appellant fails to demonstrate error in the Examiner’s finding that Westerkull discloses all of the limitations of independent claim 1. We, therefore, sustain the Examiner’s rejection of that claim, as well as the rejection of dependent claims 69 70, and 71, which Appellant does not argue separately with particularity. Anticipation Rejection of Claim 32 The Examiner finds Westerkull discloses each of the limitations of claim 32 including capturing sound at a first side of a recipient; and evoking a hearing percept via bone conduction with energy originating on an opposite side of the recipient based on the captured sound. Non-Final Act. 4 (citing Westerkull ¶¶ 18, 19 and Fig. 3). Appellant first argues that “none of the materials cited by the Examiner show a method,” but instead disclose an apparatus, such as the implanted part 8 and microphone 6 of Westerkull’s Figure 3. According to Appellant, because Westerkull discloses an apparatus, “[t]here is no express or inherent disclosure of our method, only, at most, components that can enable such.” Appeal Br. 99. We find Appellant’s arguments unpersuasive because Appellant fails to demonstrate that Westerkull’s disclosure is limited to only an apparatus without disclosing corresponding functions of the apparatus. We agree with the Examiner’s finding that Westerkull discloses the “claimed function of ‘capturing’” because “microphone 6 . . . captures the sound.” Ans. 15 (citing Westerkull ¶¶ 18, 19 and Fig. 3). Westerkull further discloses that the capturing occurs at a first side of a recipient. Westerkull ¶¶ 18, 19 and Appeal 2021-004879 Application 14/061,410 9 Fig. 3. We also agree with the Examiner’s finding that Westerkull discloses “the claimed ‘evoking,”’ which “refers to the hearing device deliver[ing] sound to the user” because “Westerkull’s microphone in Fig 3 captures the sound and transmits the sound through the vibrator in the implant part 8 to the user’s skull.” Ans. 15 (citing Westerkull ¶¶ 18, 19 and Fig. 3). Appellant next argues the Examiner errs in rejecting claim 32 as anticipated by Westerkull by applying distinct embodiments of Westerkull to disclose the limitations at issue. Specifically, Appellant argues that “[p]aragraph 0018 is about the embodiment of FIG. 3 [sic] [recte, Fig. 2], not the embodiment of FIG. 3” and so the “Examiner cites one portion of the specification addressing one embodiment, without explaining how that portion is also applicable to the other embodiment.” Appeal Br. 101, 102. This argument is similar to the argument Appellant presents in response to the anticipation rejection of claim 1. We find this argument unpersuasive for the same reasons discussed above for claim 1. Accordingly, Appellant fails to demonstrate error in the Examiner’s finding that Westerkull discloses all of the limitations of independent claim 32. We, therefore, sustain the Examiner’s rejection of that claim, as well as the rejections of dependent claims 33–37, which Appellant does not argue separately with particularity. Anticipation Rejection of Claims 39, 48, 57, 59, and 68 The Examiner finds Kim discloses each of the limitations of claim 39 including a behind-the-ear device, comprising: a vibratory portion configured to vibrate in response to an audio signal to evoke a hearing percept via bone conduction; and a speaker portion configured to evoke a hearing percept via an acoustic pressure wave. Non-Final Act. 6 (citing Kim Appeal 2021-004879 Application 14/061,410 10 ¶¶ 15–30, 36, 56, 59, 60–62 and Figs. 1, 2). Of particular relevance the Examiner relies on Kim’s vibrating piece 6 distally attached to hook-shaped hanging piece 5. Ans. 16. Appellant argues that the Examiner’s interpretation of “behind-the-ear device” to encompass Kim’s hearing device is unreasonably broad because Appellant’s Specification discloses that the claimed behind-the-ear device requires that the external component comprising the vibratory portion must be disposed behind the ear. Appeal Br. 79 (citing Spec. ¶ 41). Appellant offers Figure 1C as further evidence of this interpretation. Appeal Br. 79. We find persuasive Appellant’s argument that the Examiner’s interpretation of behind-the-ear device is unreasonably broad. “The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner.” In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017). Instead, a proper claim construction analysis endeavors to assign a meaning to a disputed claim term “that corresponds with . . . how the inventor describes his invention in the specification.” Id. at 1383. According to Appellant, the Specification indicates that behind-the- ear device may include an ear hook but that the external component, which in the Specification includes the vibratory portion, must be disposed behind the ear, i.e., between the ear and the head. Appeal Br. 79 (citing Spec. ¶¶ 41, 52, 60 and Figs. 1C, 5A, 6A). Appellant argues that Kim’s vibrating piece 6 is not disposed behind the ear, i.e., between the ear and the head, and thus Kim does not disclose a behind-the-ear device. Reply Br. 49. Appeal 2021-004879 Application 14/061,410 11 We agree with Appellant that the Examiner’s interpretation of “behind-the-ear device” to encompass “something that simply arches around the ear extending to a location in back of the ear,” (Id.) does not correspond with how the inventor describes the invention in the Specification, which describes “[b]one conduction device l00C” NS “external component 140C” disposed between the ear and the head. (Spec. ¶ 41, Fig. 1C) In view of Appellant’s proposed claim interpretation, we find persuasive Appellant’s argument that the Examiner has not sufficiently shown that Kim’s vibrating piece 6 distally attached to hook-shaped hanging piece 5 discloses the “behind-the-ear device” of claim 39. On this record, the Examiner does not demonstrate that Kim discloses all of the limitations of independent claim 39. Accordingly, we do not sustain the anticipation rejection of claim 39. Because we agree with at least one of the dispositive arguments advanced by Appellant, we need not reach the merits of Appellant’s other arguments with respect to this rejection of claim 39. We also do not sustain the anticipation rejection of dependent claims 48, 57, 59, and 68, which depend from claim 39. Anticipation Rejection of Claims 33 and 35 The Examiner finds Westerkull discloses “evoking a hearing percept via acoustic conduction on the opposite side of the recipient based on the captured sound,” as recited in representative dependent claim 33. Non-Final Act. 4 (citing Westerkull ¶ 16 and Fig. 3). Appellant argues the Examiner errs in rejecting claim 33 as anticipated by Westerkull because “Westerkull is about bone conduction” and in Westerkull “[t]he word ‘acoustic’ is only used with respect to Appeal 2021-004879 Application 14/061,410 12 feedback, and then in the background section regarding the prior art.” Appeal Br. 50. The Examiner responds that “[b]one conduction is a type of acoustic conduction because the acoustic signal can be conducted through the bones or skull of the user.” Ans. 20. Appellant responds that the Examiner’s interpretation is unreasonably broad because Appellant’s Specification discloses an embodiment that “evokes a hearing percept via acoustic conduction, where an acoustic pressure wave 746 is generated by speaker 745 that, in some embodiments, impinges upon the tympanic membrane of at least one of the ears.” Reply Br. 7 (citing Spec. ¶ 71 (emphasis omitted)). Appellant’s argument is unpersuasive. Bone conduction is the conduction of acoustic sounds to the inner ear primarily through the bones of the skull. Appellant’s Specification discloses an embodiment using a speaker but Appellant does not persuasively demonstrate that acoustic conduction cannot occur using other means. Appellant discussion of a single embodiment is insufficient to show that the specification limits acoustic conduction to evoking sound with a speaker. We determine the Examiner’s interpretation of acoustic to include sounds evoked via bone conduction is not inconsistent with Appellant’s Specification and is therefore a broad but reasonable interpretation. Accordingly, Appellant fails to demonstrate error in the Examiner’s finding that Westerkull discloses all of the limitations of dependent claim 33. Appellant presents similar arguments for dependent claim 35 and so we sustain the anticipation rejection of claim 35 for the same reasons. Appeal Br. 61–65. Appeal 2021-004879 Application 14/061,410 13 Anticipation Rejection of Claim 34 The Examiner finds Westerkull discloses “evoking a hearing percept via vibrations travelling through at least one of skin and cartilage to the tympanic membrane on the opposite side of the recipient based on the captured sound,” as recited in dependent claim 34. Non-Final Act. 5 (citing Westerkull ¶¶ 17, 19 and Fig. 3). Appellant argues the Examiner errs in rejecting claim 34 as anticipated by Westerkull because Westerkull “is all about the skull” and, therefore, in Westerkull there are no “vibrations traveling to the tympanic membrane.” Appeal Br. 56, 59. The Examiner responds that Westerkull’s “Fig 3 shows that the vibrations from the vibrator 1 travelling through the skull bone 2 and to the cartilage to the tympanic membrane behind the ear.” Ans. 20. Appellant responds that Westerkull’s Figure 3 does not “show the vibrations from the vibrator” or “the tympanic membrane.” Reply Br. 14–21. Appellant’s argument is unpersuasive. Appellant fails to provide evidence or persuasive reasoning to demonstrate that vibrations from Westerkull’s vibrator are evoked only in the skull and not evoked in skin or cartilage to the tympanic membrane. Given the vibrator’s proximity to the skin and the tympanic membrane in Westerkull’s Figure three, Appellant’s argument that vibrations are evoked only in the skull is unavailing. Accordingly, Appellant fails to demonstrate error in the Examiner’s finding that Westerkull discloses all of the limitations of dependent claim 34. Appeal 2021-004879 Application 14/061,410 14 Anticipation Rejection of Claims 36 and 69 The Examiner finds Westerkull discloses “the hearing percept evoked via bone conduction is a high-frequency hearing percept,” as recited in representative dependent claim 36. Non-Final Act. 5. In particular, the Examiner finds Westerkull discloses “the high frequencies which are attenuated at the bone conduction from one side of the skull to the other, frequencies above l KHz) (citing Westerkull ¶ 16 and Abstract). Appellant argues the Examiner errs in rejecting claim 36 as anticipated by Westerkull because “the audio spectrum extends from 20 Hz to 20,000 Hz” and therefore “[a]bove 1 KHz is not ‘high frequencies.’” Appeal Br. 65–70 (emphasis omitted). The Examiner responds that Westerkull discloses “that the hearing aid can handle high frequency above l KHz” and “[t]he cited high frequency is above l KHz which is higher than lower frequency 10Hz, because appellant’s claim does not define how high frequency is ‘high frequency.’” Ans. 21. In the Reply Brief, Appellant repeats the arguments from the Appeal Brief. Reply Br. 14–21. Appellant’s argument is unpersuasive. As noted by Appellant, “the audio spectrum extends from 20 Hz to 20,000 Hz.” The Examiner correctly finds Westerkull discloses a range of audio frequencies “above l KHz,” i.e., from 1KHz to 20KHz. Because Westerkull’s disclosed range falls within Appellant’s high frequency range of some frequency below 20Khz, the disputed limitation is anticipated by Westerkull. See Titanium Metals Corp. v. Banner, 778 F.2d 775, 772 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, (CCPA 1962)) (emphasis in original) (“[W]hen, as by a Appeal 2021-004879 Application 14/061,410 15 recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.”). Accordingly, Appellant fails to demonstrate error in the Examiner’s finding that Westerkull discloses all of the limitations of dependent claim 36. Appellant presents similar arguments for dependent claim 69 and so we sustain the anticipation rejection of claim 69 for the same reasons. Appeal Br. 70. Anticipation Rejection of Claim 48 The Examiner finds Kim discloses “wherein the behind the-ear device includes an ear hook,” as recited in dependent claim 48. Non-Final Act. 6 (citing Kim ¶ 59 and Figs. 1, 2); Ans. 23. In particular, the Examiner relies on (Id.) Kim’s disclosure of “hanging pieces (5) [that] are hung over the upper auricles” (Kim ¶ 59). Appellant argues that Kim’s elements 4 and 5 fail to disclose a behind the-ear device that includes an ear hook. Appeal Br. 96; Reply Br. 71–72. As discussed above with respect to claim 39, we find persuasive Appellant’s argument that the Examiner’s interpretation of behind-the-ear device is unreasonably broad. In view of this argument, the Examiner has not sufficiently shown that Kim’s vibrating piece 6 distally attached to hook- shaped hanging piece 5 discloses a “behind-the-ear device that includes an ear hook.” Accordingly we do not sustain the anticipation rejection of claim 48 for the same reasoning provided above for claim 39. Appeal 2021-004879 Application 14/061,410 16 Anticipation Rejection of Claim 68 The Examiner finds Kim’s micro-speaker discloses “the behind-the- ear device is configured such that the acoustic portion is spaced away from skin of the recipient when properly worn on an ear to evoke a bone conduction hearing percept via the bone conduction portion,” as recited in dependent claim 68. Non-Final Act. 6 (citing Kim ¶¶ 16, 23); Ans. 23. In particular, the Examiner finds “Kim’s speaker reads on the claimed ‘acoustic portion’. Kim’s speaker is touching the outside ear canal such that Kim’s speaker (i.e.[,] acoustic portion) is just touch the ear, which is apart from the skin of the inside ear canal.” Non-Final Act. 7. Appellant argues that Kim fails to disclose a behind the-ear device as claimed. Appeal Br. 97; Reply Br. 73. As discussed above with respect to claim 39, we find persuasive Appellant’s argument that the Examiner’s interpretation of behind-the-ear device is unreasonably broad. In view of this argument, the Examiner has not sufficiently shown that Kim’s vibrating piece 6 distally attached to hook- shaped hanging piece 5 discloses a “behind-the-ear device,” as recited in dependent claim 68. Accordingly we do not sustain the anticipation rejection of claim 68 for the same reasoning provided above for claim 39. Obviousness Rejection of Claim 3 The Examiner finds the combination of Westerkull and Kim teaches or suggests “the system includes a passive transcutaneous bone conduction device; and the vibratory portion is part of the passive transcutaneous bone conduction device,” as recited in claim 3. Non-Final Act. 7 (citing Kim ¶ 59 Appeal 2021-004879 Application 14/061,410 17 and Figs. 1, 2; Ans. 17. The Examiner determines sufficient rationale existed to combine the teachings of the references: It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention as modifying the Westerkull’s implanted hearing device to be an ear-hook type of hearing device as taught by Kim for a motivation of reducing the operational cost of implanting device inside the head of the user. Non-Final Act. 7. Appellant challenges the Examiner’s motivation to combine the references, arguing that “[t]here is no evidence or rationale supporting the finding that this modification would reduce the ‘operational cost’ of anything. This is a completely illusory rationale.” Appeal Br. 104. The Examiner responds by determining that: Westerkull teaches a hearing aid device includes an implant part 8 (Fig 3) and an external part 7 which includes a microphone (Fig 3, [18-19]). Examiner modified Westerkull’s device by adding Kim's ear hook into Westerkull's microphone. Therefore, putting an ear hook in the microphone of Westerkull would prevent the microphone from falling off and being damaged easily. It is noted that replacing a microphone would cost more than adding a hook to the hearing device as taught by Kim. It is also noted that Examiner did not suggest to add Kim's ear hook into Westerkull's implant part 8 as appellant argued. Ans. 17. Appellant responds with additional arguments challenging the Examiner’s motivation including: (1) “putting an ear hook in the microphone of Westerkull is bizarre” because “[m]icrophone 6 is a really tiny thing”; (2) “[n]o one is going to put an ear hook in the microphone 6. It probably would not work, as the earhook is larger than the microphone, and this would interfere with the operation of the microphone”; (3) “[t]here is no Appeal 2021-004879 Application 14/061,410 18 evidence that Westerkull has a problem with microphone 6 falling off”; and (4) “[t]he cost assertions are unfounded” because “[m]icrophones are cheap these days.” Reply Br. 82–83. Appellant essentially argues Westerkull teaches away from the combination by already disclosing a means for securing the external part 7 including the microphone 6 to the head of a user. We are unpersuaded. If a reference discloses a different solution to a similar problem, it does not teach away from the claimed subject matter unless the prior art reference also criticizes, discredits, or otherwise discourages the solution claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Likewise, a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Appellant’s argument does not demonstrate insufficient motivation to combine the teachings but merely shows that the securing mechanisms of Westerkull and Kim are different solutions to a similar problem; arguably having offsetting advantages and disadvantages. Moreover, Appellant’s arguments that “[m]icrophone 6 is a really tiny thing” and “[n]o one is going to put an ear hook in the microphone 6” because “[i]t probably would not work, as the earhook is larger than the microphone” miss the point of the Examiner’s stated motivation, which is to secure the external part 7 rather than the microphone alone. Reply Br. 82–83. Accordingly, Appellant’s arguments regarding claim 3 are not persuasive for lack of evidence or because they are unresponsive to the Examiner’s findings. Appeal 2021-004879 Application 14/061,410 19 Obviousness Rejection of Claim 45 The Examiner finds the combination of Westerkull and Kim teaches or suggests, among other features, that “the system includes a speaker separate from the bone conduction actuator configured to evoke a hearing percept via an acoustic pressure wave based on the signal,” as recited in claim 45. Non-Final Act. 7–8 (citing Kim ¶¶ 18, 19 and Fig. 3). The Examiner determines sufficient rationale existed to combine the teachings of the references: It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to incorporate the system includes a speaker separate from the bone conduction actuator configured to evoke a hearing percept via an acoustic pressure wave based on the signal in Westerkull’s invention in order to enhance the performance of hearing device. Non-Final Act. 8. Appellant challenges the Examiner’s motivation to combine the references, arguing that “[t]here is no evidence or rationale supporting the finding that this modification would enhance performance. Indeed, the user of Westerkull is deaf. That is why he/she needs bone conduction.” Appeal Br. 105. The Examiner responds by determining that: Westerkull teaches a hearing aid device includes an implant part 8 (Fig 3) and an external part 7 which includes a microphone (Fig 3, [18-19]). Examiner modified Westerkull's device by adding Kim's ear hook into Westerkull’s microphone. Therefore, putting an ear hook in the microphone of Westerkull would prevent the microphone from falling off and being damaged easily. It is noted that replacing a microphone would cost more than adding a hook to the hearing device as taught by Kim. It is also noted Appeal 2021-004879 Application 14/061,410 20 that Examiner did not suggest to add Kim's ear hook into Westerkull's implant part 8 as appellant argued. Ans. 17. Appellant’s argument is unpersuasive because it only addresses the Examiner’s motivation in the context of a person who is completely deaf but does not address the benefit of both hearing aid solutions for a person who is not totally deaf. We sustain, therefore, the Examiner’s rejection of claim 45 as obvious over the combined teachings of Westerkull and Kim. Obviousness Rejection of Claims 47 and 52 The Examiner relies on the combination of Westerkull and Kim to teach or suggest the claimed first and second “behind-the-ear device,” as recited in claim 47 and the “behind-the-ear device that includes an ear hook,” as recited in claim 52. Of particular relevance, the Examiner finds “Westerkull teaches both claimed devices except they are not ‘behind the ear’ as claimed.” Non-Final Act. 8. The Examiner relies on Kim to teach a “behind-the-ear device that includes an ear hook.” Non-Final Act. 8–9. Appellant traverses “for the reasons detailed above with respect to claim 39 and claim 48.” Appeal Br. 106. As discussed above with respect to claim 39, we find persuasive Appellant’s argument that the Examiner’s interpretation of behind-the-ear device is unreasonably broad. In view of this argument, the Examiner has not sufficiently shown that Kim’s vibrating piece 6 distally attached to hook- shaped hanging piece 5 discloses the claimed first and second “behind-the- ear device and the “behind-the-ear device that includes an ear hook.” Appeal 2021-004879 Application 14/061,410 21 Accordingly we do not sustain the obviousness rejection of claims 47 and 52 for the same reasoning provided above for claim 39. Obviousness Rejection of Claim 7 The Examiner finds the combination of Westerkull and Andersson teaches or suggests, among other features, that “the system includes a passive transcutaneous bone conduction device,” as recited in claim 7. Non- Final Act. 9 (citing Andersson ¶¶ 5, 8, 21 and Figs. 1–4); Ans. 17. The Examiner determines sufficient rationale existed to combine the teachings of the references: it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to utilize the passive transcutaneous device as taught by Andersson in the system of the combination of Westerkull to enable the bone conduction device to be effective regardless of whether there is disease or damage to the middle ear. Non-Final Act. 9 (citing Andersson ¶ 5). Appellant challenges the Examiner’s motivation to combine the references, arguing that the cited “rationale is nothing. Indeed, the rejection is nothing more than the result of a word search for passive transcutaneous bone conduction device combined with a cut-and-paste from the disclosure of the reference that came up with the word search.” Appeal Br. 109. Appellant’s argument is unpersuasive for lack of evidence. Appellant provides no citations to either Westerkull or Andersson to support this argument. It is well settled that mere attorney arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) Appeal 2021-004879 Application 14/061,410 22 We sustain, therefore, the Examiner’s rejection of claim 7 as obvious over the combined teachings of Westerkull and Kim. Obviousness Rejection of Claim 61 The Examiner finds the combination of Westerkull and Solum teaches or suggests, among other features, that “the system includes an in-the-ear device that includes a microphone, the microphone corresponding to the sound capture device,” as recited in claim 61. Non-Final Act. 10 (citing Solum ¶¶ 22–27 and Figs. 4A-4F); Ans. 17. The Examiner determines sufficient rationale existed to combine the teachings of the references: It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to incorporate the microphone and the speaker as taught by Solum in Westerkull's invention in order to improve the performance of the hearing assistance device for a specific person or in a specific environment. Non-Final Act. 10. Appellant challenges the Examiner’s motivation to combine the references, arguing that the cited rationale is insufficient because the rejection relies on three specific embodiments of Westerkull disclosed in figures 1–3, “without proffering any rationale or motivation to combine the three” separate embodiments. Appeal Br. 110; Reply Br. 95–98. Appellant’s argument, which relies on Westerkull’s alleged disclosure of separate embodiments, is unpersuasive for the same reasons discussed above with respect to the rejection of independent claim 1. We sustain, therefore, the Examiner’s rejection of claim 61 as obvious over the combined teachings of Westerkull and Solum. Appeal 2021-004879 Application 14/061,410 23 Obviousness Rejection of Claim 67 The Examiner finds the combination of Westerkull and Solum teaches or suggests, among other features, that “the action of capturing sound at the first side of a recipient is executed using a microphone of an in-the-ear device,” as recited in claim 67. Non-Final Act. 10 (citing Solum ¶¶ 22–27 and Figs. 4A-4F); Ans. 17. The Examiner determines sufficient rationale existed to combine the teachings of the references. Appellant argues the Examiner fails to address all limitations in claim 67 because independent claim 32, from which claim 67 depends, recites a method claim, and Westerkull discloses an apparatus. Appeal Br. 111–113. Appellant further argues that the Examiner provides new grounds of rejection in the Answer. Reply Br. 99. Appellant’s argument, which relies on the argument set forth to distinguish claim 32 from Westerkull (Appeal Br. 99–101), is unpersuasive for the same reasons discussed above with respect to the rejection of claim 32. To the extent Appellant argues that the cited combination fails to teach “the recipient suffers from single-sided deafness,” as recited in claim 67, this argument is unpersuasive because the limitation is mere intended use, being directed to the patient being treated rather than to the claimed method. Appellant’s arguments are further unpersuasive because they fail to address the Examiner’s additional findings in the Answer, referred to as new grounds of rejection by Appellant. We sustain, therefore, the Examiner’s rejection of claim 67 as obvious over the combined teachings of Westerkull and Solum. Appeal 2021-004879 Application 14/061,410 24 Obviousness Rejection of Claim 37 The Examiner finds the combination of Westerkull and Kim teaches or suggests, among other features, that “the hearing percept evoked via acoustic conduction is evoked without any prosthetic component in the outer ear canal of the opposite side of the recipient,” as recited in claim 37. Non- Final Act. 10–11. The Examiner determines sufficient rationale existed to combine the teachings of the references. Id. at 11. Appellant argues the Examiner fails to address all limitations in claim 67 because independent claim 32, from which claim 67 indirectly depends, recites a method claim, and Westerkull discloses an apparatus. Appeal Br. 111–116. Appellant further argues that the Examiner provides new grounds of rejection in the Answer. Reply Br. 99. Appellant’s argument, which relies on the argument set forth to distinguish claim 32 from Westerkull (Appeal Br. 99–101), is unpersuasive for the same reasons discussed above with respect to the rejection of claim 32. Appellant also fails to address the Examiner’s additional findings in the Answer, referred to as new grounds of rejection by Appellant. We sustain, therefore, the Examiner’s rejection of claim 67 as obvious over the combined teachings of Westerkull and Kim. Obviousness Rejection of Claims 41 and 58 The Examiner relies on the combination of Kim and Heiman to teach or suggest the claimed “behind-the-ear device,” as recited in claims 41 and 58. Of particular relevance, the Examiner relies on Kim to teach a “behind- the-ear device.” Non-Final Act. 11. Appeal 2021-004879 Application 14/061,410 25 Appellant traverses “for the reasons detailed above with respect to claim 39 and claim 48.” Appeal Br. 116–118. As discussed above with respect to claim 39, we find persuasive Appellant’s argument that the Examiner’s interpretation of behind-the-ear device is unreasonably broad. In view of this argument, the Examiner has not sufficiently shown that Kim’s vibrating piece 6 distally attached to hook- shaped hanging piece 5 discloses the claimed behind-the-ear device. Nor does the Examiner rely on Heiman to cure the deficiency of Kim discussed above. Accordingly, we do not sustain the obviousness rejection of claims 41 and 58 for the same reasoning provided above for claim 39. Obviousness Rejection of Claim 60 The Examiner relies on the combination of Westerkull and Kaulberg to teach or suggest the claimed “the action of evoking a hearing percept is executed with a totally external device,” as recited in claim 60. Of particular relevance, the Examiner relies on Kaulberg to teach the limitation at issue. Non-Final Act. 11 (citing Kaulberg ¶¶ 99, 100, Figs. 5, 6a). The Examiner determines sufficient rationale existed to combine the teachings of the references: it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify to Westerkull’s invention as taught by Kaulberg’s invention the BTE enable to communication with external device such as cellphone or MP3. Non-Final Act. 13. Appellant challenges the Examiner’s motivation to combine the references, arguing that “[t]here is absolutely no need to utilize a totally external device to communicate with the cell phone. Every embodiment of Appeal 2021-004879 Application 14/061,410 26 Westerkull has an external component. There is no need to move the parts that are implanted outside to enable communication with an external device such as a cell phone.” Appeal Br. 123; Reply Br. 110–114. Appellant’s argument is unpersuasive for lack of evidence. Appellant provides no citations to either Westerkull or Kaulberg to support the proffered arguments. Accordingly, Appellant relies on mere attorney arguments and conclusory statements that are unsupported by factual evidence and, thus, entitled to little probative value. In re Geisler, 116 F.3d at 1470. We sustain, therefore, the Examiner’s rejection of claim 60 as obvious over the combined teachings of Westerkull and Kaulberg. Obviousness Rejection of Claim 64 The Examiner finds the combination of Westerkull, Solum, and Samuels teaches or suggests, among other features, that “the in-the-ear device also including a device configured to evoke a hearing percept, wherein the device configured to evoke a hearing percept is disabled,” as recited in claim 64. Non-Final Act. 15 (citing Samuels Figs. 1A, 1C). In particular, the Examiner relies on Samuels disclosure of a “mechanical controlling features 16 for controlling the internal electronics, Switch ON/OFF.” Non-Final Act. 15. The Examiner determines sufficient rationale existed to combine the teachings of the references. Id. Appellant argues that claim 64 is “a method claim and the rejection is directed towards the obviousness of an apparatus” and therefore Samuel’s on-off switch fails to teach or suggest “a hearing percept is disabled,” as claimed. Appeal Br. 124–125. According to Appellant, “[a]ll that results is Appeal 2021-004879 Application 14/061,410 27 that the device of Westerkull has and on-off switch. The Examiner never asserts to turn the thing off, assuming arguendo that that would be sufficient to meet the claim.” Id. We find Appellant’s arguments unpersuasive because Appellant fails to demonstrate that the cited disclosure is limited to only an apparatus without disclosing corresponding functions of the apparatus. We agree with the Examiner’s finding that Samuels discloses the claimed disabling function because an on-off switch can disable operation. Non-Final Act. 15. Moreover, even without an express teaching, Samuels at least suggests the disabling function. See Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (emphasis added) (quoting In re Lamberti, 545 F.2d 747, 750 (Fed. Cir. 1976) (“the question under [35 U.S.C. § 103] is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made.”). We sustain, therefore, the Examiner’s rejection of claim 64 as obvious over the combined teachings of Westerkull and Solum. Indefiniteness Rejection of Claim 37 The Examiner rejects claim 37 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Non-Final Act. 4. The Examiner finds “Claim 37 claimed "the outer ear canal" is confusing because no such canal was discussed in the specification.” Id. Appellant traverses this rejection for various reasons in the Appeal Brief. Appeal Br. 44–49. Appeal 2021-004879 Application 14/061,410 28 The Examiner responds that “[t]he claim was rejected by 35 USC [§]103 only. There is no indefinite rejection was made. Therefore, indefinite rejection arguments are irrelevant. Examiner clearly stated in the rejection that the claimed ‘outer ear canal’ is interpreted as ‘outside the ear canal.’” Ans. 21–22. We note however, that the Examiner does reject claim 37 as indefinite in the Non-Final Action and that there is no evidence on this record that the Examiner withdrew the rejection. See Ans. 14 (identifying the only withdrawn rejections as the “anticipation rejection to claims 45–46.”). Accordingly, to the extent the rejection has not already been withdrawn, in view of the Examiner’s comments in the Answer, we do not sustain the indefiniteness rejection of dependent claim 37. CONCLUSION We sustain the Examiner’s various rejections of claims 1, 3, 7, 8, 32– 37, 45, 46, 53, 60–67, and 69–71 under 35 U.S.C. § 102(a)(1) or 35 U.S.C. § 103. We do not sustain the Examiner’s various rejections of claims 39, 41, 47, 48, 52, 57–59, and 68 under 35 U.S.C. § 102(a)(1) or 35 U.S.C. § 103. We do not sustain the Examiner’s rejection of claims 37 as being indefinite under 35 U.S.C. § 112(b). Appeal 2021-004879 Application 14/061,410 29 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 32–36, 69–71 102(a)(1) Westerkull 1, 32–36, 69–71 39, 48, 57, 59, 68 102(a)(1) Kim 39, 48, 57, 59, 68 3, 45, 47, 52 103 Westerkull, Kim 3, 45 47, 52 7 103 Westerkull, Andersson 7 8 103 Westerkull, Parker 8 61, 67 103 Westerkull, Solum 61, 67 37 103 Westerkull, Kim 37 41, 58 103 Kim, Helman 41, 58 46 103 Westerkull, Wiskerke 46 53 103 Westerkull, Pontoppidan 53 60 103 Westerkull, Kaulberg 60 62 103 Westerkull, Solum, Samuels 62 63 103 Westerkull, Solum, Samuels, Goldstein 63 64 103 Westerkull, Samuels 64 65 103 Westerkull, Hagen 65 66 103 Westerkull, Hagen, Solum 66 37 112(b) indefiniteness 37 Overall Outcome 1, 3, 7, 8, 32–37, 45, 46, 53, 60–67, 69–71 39, 41, 47, 48, 52, 57–59, 68 Appeal 2021-004879 Application 14/061,410 30 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART Copy with citationCopy as parenthetical citation