Ex Parte 6579317 et alDownload PDFPatent Trial and Appeal BoardMay 22, 201495000662 (P.T.A.B. May. 22, 2014) 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. 95/000,662 04/02/2012 6579317 EAG-KUR317 7553 7590 05/22/2014 STRIKER STRIKER & STENBY 103 East Neck Road Huntington, NY 11743 EXAMINER JASTRZAB, JEFFREY R ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 05/22/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ ENTEROPTYX, INC. Requester, Respondent v. HEINZ KURZ GmbH MEDIZINTECHNIK.1 Patent Owner, Appellant ____________________ Appeal 2013-009718 Inter partes Reexamination Control 95/000,662 Patent US 6,579,317 B22 Technology Center 3900 ____________________ Before STEVEN D.A. McCARTHY, DANIEL S. SONG and BRETT C. MARTIN, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL 1 Heinz Kurz GmbH Medizintechnik is the Patent Owner and the real party in interest (Errata Re: Appeal Brief filed May 7, 2013). 2 Patent US 6,579,317 B2 (hereinafter "'317 patent") issued June 17, 2003 to Kurz. Appeal 2013-009718 Reexamination Control 95/000,662 Patent US 6,579,317 B2 2 STATEMENT OF THE CASE Claims 1, 2 and 5-8 of the '317 patent stand rejected while claims 3, 4 and 9-12 have been canceled (Right of Appeal Notice3 (hereinafter "RAN") 1). The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315 from the Examiner's rejections with respect to all of the rejected claims (Appeal Brief (hereinafter "App. Br.") 4-5). The Requester submitted a Respondent's Brief on Appeal (hereinafter "Resp. Br.") in support of the Examiner's rejections. We have jurisdiction under 35 U.S.C. §§ 134(b) and 315. We AFFIRM. The '317 patent is directed to an arrangement for coupling an implantable hearing device (Abstract). The sole independent claim 1 reads as follows (Claims App'x, emphasis added): 1. An arrangement for coupling at least partially a hearing device implantable in a middle ear or a passive auditory ossicles prosthesis on an ascending bracket of a human ossicle chain, the arrangement comprising a body, and a clip provided on said body and formed so as to automatically mount on an ascending bracket, said clip having a plurality of spring tongs which are axially displaceable over the ascending bracket, wherein said clip is formed so as to provide a movable connection to a hearing device or to an auditory ossicles prosthesis, and wherein said body has a spherical joint which provides said movable connection, wherein said spherical joint is formed of two bars between which a sphere of said spherical joint is supported in recesses in the bars. 3 The Examiner's Answer mailed June 3, 2013 incorporates the RAN mailed November 6, 2012 by reference. Hence we cite to the RAN herein. Appeal 2013-009718 Reexamination Control 95/000,662 Patent US 6,579,317 B2 3 The Examiner rejects the claims as follows: 1. Claims 1, 2 and 6-8 as unpatentable under 35 U.S.C. § 103(a) over Hüttenbrink4 in view of Treace5 as evidenced by Müller.6 2. Claim 5 as unpatentable under 35 U.S.C. § 103(a) over Hüttenbrink in view of Treace as evidenced by Müller, and further in view of Lehner.7 3. Claims 1, 2 and 5-8 as unpatentable under 35 U.S.C. § 102(e) as anticipated by Müller, or alternatively, unpatentable under 35 U.S.C. § 103(a) as obvious over Müller. 4. Claim 5 as unpatentable under 35 U.S.C. § 103(a) over Müller, in view of Lehner. ANALYSIS Only those arguments actually made by the Patent Owner have been considered in this decision. Arguments that the Patent Owner could have made but chose not to make have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Rejection 1 Claims 1, 2 and 6-8 stand rejected as obvious over Hüttenbrink in view of Treace as evidenced by Müller (RAN 6). The Examiner finds that 4 Hüttenbrink, DE 197 44 789 A1, published April 16, 1998. This decision references an English language translation. 5 Treace, US 4,281,419, issued August 4, 1981. 6 Müller, US 6,537,199 B1, issued March 25, 2003. 7 Lehner, US 5,941,814, issued August 24, 1999. Appeal 2013-009718 Reexamination Control 95/000,662 Patent US 6,579,317 B2 4 Hüttenbrink discloses the invention substantially as claimed but fails to disclose "a ball and socket joint, i.e. a spherical joint." (RAN 6). The Examiner finds that "Treace teaches that spherical joints were well known in the art for providing pivotal movement between the head and shaft of a prosthesis," and a person of ordinary skill in the art would have understood from Treace that "any known ball and socket joint would have been applicable" for this function (RAN 6-7, quoting Treace, col. 4, ll. 15-23). The Examiner concludes that it would have been obvious to a person of ordinary skill in the art familiar with the auditory ossicle prosthesis described by Hüttenbrink to "include a moveable joint as a two-bar ball and socket joint, in order to [e]ffect relative movement of the shaft and head of the prosthesis." (RAN 7). The Examiner refers to Figure 29 of Müller as evidence of a two-bar ball and socket joints, which were known in the art (RAN 7). The Patent Owner does not dispute the Examiner's findings or conclusions with respect to Hüttenbrink or Treace, but submits arguments directed to independent claim 1 and Müller. The Patent Owner argues that Figure 29 of Müller is not enabled because the curved spring arms that form ball receiver 121 "would not realistically be producible even with the techniques of today (and even less in the year 2001)." (App. Br. 6-7). The Patent Owner's argument is unpersuasive because it is not supported by any persuasive evidence. There is a presumption that "both the claimed and unclaimed disclosures in a prior art patent are enabled." Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003). The burden of rebutting the presumption of enablement of the cited Appeal 2013-009718 Reexamination Control 95/000,662 Patent US 6,579,317 B2 5 prior art by a preponderance of the evidence falls on the appellant. In re Sasse, 629 F.2d 675, 681 (CCPA 1980). The Patent Owner merely relies on attorney argument in support of its assertion that Figure 29 of Müller is not enabled. However, attorney argument does not take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602 (CCPA 1965). Hence, the Patent Owner has not met its burden of rebutting the presumption of enablement. The Patent Owner also argues that regardless of whether Müller was enabled or not, the spring arms of Müller fail to provide the recited recesses for holding the sphere in place and provide "a well-define seat, in the manner of the very simple recesses of the present invention." (App. Br. 7; see also App. Br. 6). Thus, while the Patent Owner does not dispute that Müller discloses a spherical joint, it argues that the recited recesses are not disclosed therein so that the "the practitioner still would not achieve the present invention as defined in claim 1." (App. Br. 7). The Patent Owner's arguments are unpersuasive. Claim 1 does not recite "a well-defined seat." In addition, neither the term "recess" nor "recesses" is used in the Specification of the '317 patent. In discussing the embodiment shown in Figure 2, the Specification of the '317 patent merely states that the "movable connection is performed … by a spherical joint 23." (Col. 2, ll. 50-51). Similarly terse statements regarding a "spherical joint" are provided with respect to the embodiments shown in Figure 4 (col. 2, ll. 61-63) and Figure 6 (col. 3, ll. 9-12). No further description or discussion is provided with respect to the details of the "spherical joint" or its arrangement so as to limit the meaning of "recesses" recited in the claims. Appeal 2013-009718 Reexamination Control 95/000,662 Patent US 6,579,317 B2 6 Thus, the limitation "recesses" recited in the claims is interpreted broadly, and its plain and ordinary meaning is applied. In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) ("During reexamination … the PTO must give claims their broadest reasonable construction consistent with the specification . . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation."); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (The words of claims must be given their plain meaning unless the plain meaning is inconsistent with the specification.). A "recess" is defined, inter alia, as "3. a receding part or space, as in an alcove in a room."8 Thus, based on this plain and ordinary meaning, Müller discloses "recesses" in spring arms 119, each spring arm having "a receding part or space" that together form ball receiver 121 for receipt of ball 103 to allow swiveling motion. In particular, Müller states that "spring arms 119 on the one side of the connection site 118 form a ball receiver 121 for the ball 103 of the coupling rod 19''… The coupling element 117 together with the jacket 120 can turn and swivel relative to the coupling rod 19''." (Müller, col. 12, ll. 30-37; Fig. 29).9 Although Figures 2, 4 and 6 of the '317 patent each show a configuration of a "spherical joint," they do not disclose the joint in a manner that necessarily limits the recited "recesses" so as to exclude the recesses disclosed in Müller. In this regard, "it is important not to import 8 Random House Webster's College Dictionary (1992). 9 While not relied upon for our decision, we observe that Figure 22 of Müller also illustrates a ball joint including ball receiver 79 with recesses which receive spherical head 80 (Müller, col. 11, ll. 1-5; Fig. 22). Appeal 2013-009718 Reexamination Control 95/000,662 Patent US 6,579,317 B2 7 into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment." Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Additionally, the figures of the '317 patent do not even appear to fully support the Patent Owner's argument regarding "a well-defined seat" supporting the sphere, Figures 2 and 4 showing hidden lines within the two bars but not showing hidden lines with respect to the sphere so that the manner in which the sphere interacts with the two bars is unclear (see Figs. 2 and 4). Finally, the Patent Owner argues that "[o]bviousness cannot be established by combining the teachings of the prior art to produce the claimed invention, absent some teaching or suggestions supporting the combination. … The prior art of record fails to provide any such suggestion or incentive." (App. Br. 7). However, the Supreme Court has rejected the rigid requirement of a teaching, suggestion or motivation in the prior art to combine known elements in order to establish obviousness. KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418-19 (2007). In view of the above, we affirm Rejection 1 as to claim 1. The Patent Owner does not submit separate arguments directed to claims 2 and 6-8 that ultimately depend from claim 1. Hence, Rejection 1 is affirmed as to these dependent claims as well. Appeal 2013-009718 Reexamination Control 95/000,662 Patent US 6,579,317 B2 8 Rejection 2 The Patent Owner relies on dependency on claim 1 for patentability of claim 5 and argues that Lehner fails to cure the deficiencies of Rejection 1 (App. Br. 7). Thus, because we are not persuaded that the Examiner erred with respect to Rejection 1, we likewise affirm Rejection 2. Rejection 3 Claims 1, 2 and 5-8 stand rejected as either anticipated by Müller, or alternatively, obvious over Müller (RAN 8). The Examiner finds: Fig. 29 and col. 12, lines 25-54 [of] Müller depicts a movable spherical joint in the form of ball 103 (the "sphere") supported in recesses formed by concave spring arms 119 (the "bars") that together form a ball receiver 121 at an upper side of a spring arm connection site 118, with an elastic clamp (the spring clip) formed by "spring arms" 119 at a lower side of the connection site 118. Spreadable passage 87 receives a target ossicle. (RAN 8-9). The Examiner further finds that: Müller does not specifically describe that the elastic clamp clip is for attachment to the ascending bracket, however those having ordinary skill in the art would have understood from the teaching that the elastic clamp clip is structurally suited for, and inherently capable of, automatically mounting on such an ossicular structure. (RAN 9). The Patent Owner does not specifically challenge the Examiner's finding that the elastic clamp clip of Müller is capable of mounting on an ossicular structure, but instead, generically asserts that Müller fails to disclose the claim limitation: Appeal 2013-009718 Reexamination Control 95/000,662 Patent US 6,579,317 B2 9 said clip is formed so as to provide a movable connection to a hearing device or to an auditory ossicles prosthesis, and wherein said body has a spherical joint which provides said movable connection, wherein said spherical joint is formed of two bars between which a sphere of said spherical joint is supported in recesses in the bars. (App. Br. 8, italics and underlining in original). However, the Patent Owner's assertion that Müller fails to disclose the recited "recesses" is unpersuasive for reasons already discussed supra. To the extent that the Patent Owner may be asserting that Müller fails to disclose the recited clip, we observe that Müller discloses receiving opening 86 and spreadable passage 87 between spring arms 119 for receipt of a target ossicular structure as found by the Examiner, thereby clearly disclosing the recited clip (Müller, col. 12, ll. 30-40; Fig. 29; RAN 8-9; see also Resp. Br. 9-10). Thus, we are not persuaded that the Examiner erred in finding that Müller anticipates independent claim 1. The Examiner alternatively concludes that if mounting the device of Müller on an ascending bracket of an ossicular chain is not inherently disclosed, such mounting would have been obvious to one of ordinary skill "given the explicit discussion by Müller that the invention is for mounting broadly on 'part of the ossicular chain' (column 5 at 62)." (RAN 9). The Patent Owner challenges the rejection based on the findings regarding Müller and asserts that "this reference provides no suggestion regarding the above features [of the reproduced limitation] of claim 1." (App. Br. 8). However, this argument is unpersuasive because as discussed supra, the recited limitations in the reproduced limitation are disclosed in Appeal 2013-009718 Reexamination Control 95/000,662 Patent US 6,579,317 B2 10 Müller. Hence, we are also not persuaded that the Examiner erred in concluding that independent claim 1 would have been obvious to a person of ordinary skill in the art in view of the disclosure and teaching of Müller. In view of the above, we affirm Rejection 3 as to independent claim 1. The Patent Owner does not submit separate arguments directed to claims 2 and 5-8 that ultimately depend from independent claim 1. Hence, Rejection 3 is affirmed as to these dependent claims as well. Rejection 4 The Patent Owner relies on dependency of claim 1 for patentability of claim 5 and argues that Lehner fails to cure the deficiencies of Rejection 3 (App. Br. 8). Hence, having found no deficiency with respect to Rejection 3, we likewise affirm Rejection 4. ORDERS Rejections 1-4 are AFFIRMED. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. Appeal 2013-009718 Reexamination Control 95/000,662 Patent US 6,579,317 B2 11 AFFIRMED Patent Owner: STRIKER STRIKER & STENBY 103 East Neck Road Huntington, NY 11743 Third Party Requester: David S. 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