Ex Parte Ball et alDownload PDFPatent Trial and Appeal BoardMar 25, 201613419552 (P.T.A.B. Mar. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/419,552 03/14/2012 2101 7590 03/29/2016 Sunstein Kann Murphy & Timbers LLP 125 SUMMER STREET BOSTON, MA 02110-1618 FIRST NAMED INVENTOR Geoffrey R. Ball 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 3435/186 4174 EXAMINER LEVICKY, WILLIAM J ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 03/29/2016 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): usptomail@sunsteinlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEOFFREY R. BALL, PETER LAMP ACHER, BERNHARD JAMNIG, MARTIN ZIMMERLING, GUNTHER WEIDENHOLZER, MARKUS NAGL, and WOLFGANG AMRHEIN Appeal2014-002699 Application 13/419,552 Technology Center 3700 Before JAMES P. CALVE, LEE L. STEPINA, and FREDERICK C. LANEY, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Geoffrey R. Ball et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1-5. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We AFFIRM. Appeal2013-002699 Application 13/419,552 THE CLAIMED SUBJECT MATTER The claimed invention is directed to a magnetic attachment arrangement for an implantable device. Spec. 1 (Title). Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. An external device for use with an implant system, the device comprising: an external device housing containing external elements of an implantable electronic system; and a cylindrical external magnet arrangement within the housing having a plurality of magnetic sections lying in a common plane including: i. an inner center disc having an inner magnetic orientation in an inner magnetic direction, and ii. an outer radial ring having an outer magnetic orientation in an outer magnetic direction opposite to the inner magnetic direction. Appeal Br. 9. REFERENCES RELIED ON BY THE EXAMINER Baermann Zimmerling Rule us 4,549,532 US 2006/0244560 Al US 2008/0123866 Al Oct. 29, 1985 Nov. 2, 2006 May 29, 2008 THE REJECTIONS ON APPEAL (I) Claims 1-3 are rejected under 35 U.S.C. § 103(a) as unpatentable over Zimmerling and Baermann. (II) Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable over Zimmerling, Baermann, and Rule. 2 Appeal2013-002699 Application 13/419,552 ANALYSIS Rejection(!) The Examiner finds that Zimmerling discloses many of the features required by claim 1, but does not disclose "a plurality of magnetic sections lying in a common plane and including: i. an inner center disc having an inner magnetic orientation in an inner magnetic direction, and ii. an outer radial ring having an out magnetic orientation in an outer magnetic direction opposite to the inner magnetic direction," and the Examiner relies on Baermann to teach this feature. Final Act. 5---6. The Examiner reasons that it would have been obvious to modify Zimmerling to include the above- noted features "since such a modification would provide the predictable results of increased blood flow and therefore accelerate healing of the implantation site." Final Act. 6. Appellants contend that the Examiner's proposed modification to Zimmerling is made without regard to the existing functionality of Zimmerling and Baermann and for "the entirely different purpose of obtaining a therapeutic benefit: 'increased blood flow and therefore accelerate healing of the implantation site."' Appeal Br. 6. We are not apprised of Examiner error on this point. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007) ("In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls .... [A ]ny need or problem known in the field of endeavor at the time of invention ... can provide a reason for combining the elements in the manner claimed."). Thus, even if the Examiner's reasoning that the proposed modification would provide increased blood flow and therefore accelerate healing of the 3 Appeal2013-002699 Application 13/419,552 implantation site is different from the intended purpose of the arrangement in Zimmerling or different from the inventor's purpose, the reasoning is not necessarily deficient. Appellants argue that the flexible sheet in Baermann "is not very magnetically dense and there is not suggestion that the magnetic field strength of such a rubbery sheet would be strong enough to perform the holding attachment required by the magnets in Zimmerman." Appeal Br. 6; see also Reply Br. 2-3. In this regard, Appellants state, "neither Baermann nor Zimmerman offer any discussion suggesting that such a hypothetical modification would provide a strong enough magnetic force to properly hold the external device in place so as to operate as required" (Appeal Br. 7) and "the rubber sheet containing dispersed magnetic particles necessarily is not very magnetically dense and there is no suggestion that the magnetic field strength would be strong enough to perform the holding attachment required by the magnets in Zimmerman" (Reply Br. 3). In contrast, the Examiner finds that Baermann does not teach that the magnetic field strength of its flexible sheet is weak. Ans. 3. The Examiner further states "[ t ]he magnet of Zimmerling with its sufficient strength to perform the holding attachment is modified into a configuration as taught by Baermann." Ans. 3. We agree with the Examiner on this issue. Appellants do not point to any persuasive evidence that the magnetic arrangement taught by Baermann is too weak to perform the holding attachment required by the magnets in Zimmerman. Moreover, as the Examiner notes (Ans. 3; see also Final Act. 6), it is the magnet of Zimmerling that is modified to include the 4 Appeal2013-002699 Application 13/419,552 conj1guration described by Baermann, and such a modification does not necessarily weaken the magnet provided by Zimmerling. Appellants further argue, "[ o ]ne of ordinary skill in the art would not consider implementing a magnet arrangement that promotes heating of the adjacent tissues over the years-long lifetime of the implant system without some knowledge of the risks involved with prolonged continuous heating of ear tissues in a hearing impaired patient." Appeal Br. 7. Appellants contend that as neither Zimmerling nor Baermann provides any disclosure regarding the risks involved in use of the Examiner's proposed modified version of Zimmerling, a person of ordinary skill in the art would not have found it obvious to make the proposed modification. Appeal Br. 7. In response, the Examiner states that Baermann does not disclose that its device should be removed after a period of time. Ans. 4. We are not apprised of Examiner error on this point. Appellants do not point to any persuasive evidence supporting the position that the device in Baermann must be removed after a short period of time or that a person of skill in the art would understand the Examiner's proposed modification would pose any particular risk to the patient. Appellants further contend that a person of skill in the art "could not be sure" that the blood circulation benefits referenced in the Examiner's rationale for the proposed modification (Final Act. 6) would "extend to the special case as in Zimmerling where there is another magnet implanted under the skin." Reply Br. 3. We are not persuaded by Appellants' arguments on this issue. "Obviousness does not require absolute predictability of success." In re O'Farrell, 853 F.3d 894 (Fed. Cir. 1988). "For obviousness under§ 103, all 5 Appeal2013-002699 Application 13/419,552 that is required is a reasonable expectation of success." Id. (citing Jn re Langi, 759 F.2d 887, 897 (Fed. Cir. 1985); and Jn re Clinton, 527 F.2d 1226, 1228 (CCP A 1976)). Appellants do not point to any persuasive evidence that a person of skill in the art reading Zimmerling and Baermann would not have had a reasonable expectation that the Examiner's proposed combination "would provide the predictable results of increased blood flow and therefore accelerate healing of the implantation site" (Final Act. 6). We have considered all of Appellants' arguments for the patentability of claims 1-3, but we are not persuaded the Examiner's rejection of these claims is in error. Rejection (II) Appellants do not make separate arguments for the patentability of dependent claims 4 and 5. Accordingly, for the same reasons discussed above, we sustain the Examiner's rejection of claims 4 and 5. DECISION We affirm the Examiner's decision to reject claims 1-5. 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)(l )(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation