Ex Parte 6579317 et al

Patent Trial and Appeal Board

May 22, 2014

95000662 (P.T.A.B. May. 22, 2014)

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.
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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.
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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.
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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
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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.
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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).
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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.

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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:
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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
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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.

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AFFIRMED

Patent Owner:
STRIKER STRIKER & STENBY
103 East Neck Road
Huntington, NY 11743
Third Party Requester:
David S. Jacobson
GORDON & JACOBSON, P.C.
60 Long Ridge Road, Suite 407
Stamford, CT 06902