Ex Parte NIELSEN

Patent Trial and Appeal Board

Jan 31, 2019

14768779 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/768,779 08/19/2015
2101 7590 02/04/2019
Sunstein Kann Murphy & Timbers LLP
125 SUMMER STREET
BOSTON, MA 02110-1618
FIRST NAMED INVENTOR
Stefan B. NIELSEN
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.
1941/E62 1056
EXAMINER
EV ANISKO, GEORGE ROBERT
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
usptomail@sunsteinlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEP AN B. NIELSEN 1
Appeal2018-005808
Application 14/7 68,779
Technology Center 3700
Before BRETT C. MARTIN, ANNETTE R. REIMERS, and
WILLIAM A. CAPP, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject under 35 U.S.C. § 102(b) claims 2-5, 11, 12, and 15-17 as
anticipated by Gibson '156 (US 7,937,156 B2, issued May 3, 2011) and
under 35 U.S.C. § 103(a): (1) claims 6-10, 13, and 14 as unpatentable over
Gibson '156 and Hakansson (US 2009/0209806 Al, published Aug. 20,
2009); (2) claim 9 as unpatentable over Gibson '156, Hakansson, and
1 Med-El Elektromedizinische GmbH ("Appellant"), is the applicant as
provided under 3 7 C.F .R. § 1.46 and is identified as the real party in interest.
Appeal Brief 2 ("Appeal Br."), filed Dec. 11, 2017.
Appeal2018-005808
Application 14/768,779
Gibson '058 (US 8,255,058 B2, issued Aug. 28, 2012); and (3) claim 18 as
unpatentable over Gibson '156 and Osorio (US 7,346,391 Bl, issued Mar.
18, 2008). Appellant presents additional evidence in the Declaration of
Stefan B. Nielsen ("Nielsen Declaration") filed under 37 C.F.R. § 1.132 on
June 30, 2017. 2 Claim 1 has been cancelled. We have jurisdiction under 35
U.S.C. § 6(b ).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to hearing implant systems such
as cochlear implant systems." Spec. ,r 2, Figs. 3A-3E.
Claim 2, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
2. A cochlear implant arrangement comprising:
an implant housing containing a stimulation processor for
processing externally produced communications signals to
generate electrical stimulation signals for the cochlea of an
implant patient, the implant housing lying substantially in a plane
and having an outer perimeter adapted to fit within a surgically
prepared housing recess in skull bone of the implant patient; and
a plurality of housing fixation features located on the outer
perimeter, the housing fixation features being adapted to
cooperate to develop lateral force in the plane of the implant
housing between the implant housing and radially adjacent skull
bone of the housing recess to fixedly secure the implant housing
within the housing recess,
wherein the housing fixation features include one or more
fixed contact features located toward one side of the outer
2 The Declarant, Stefan B. Nielsen, 1s also the inventor in the subject
application.
2
Appeal2018-005808
Application 14/768,779
perimeter and one or more elastic spring features located towards
another side of the outer perimeter.
ANALYSIS
Anticipation by Gibson '15 6
Claims 2-5, 11, 12, and 15-17
Independent claim 2 is directed to a cochlear implant including an
implant housing having fixation features "adapted to cooperate to develop
lateral force in the plane of the implant housing between the implant housing
and radially adjacent skull bone of the housing recess," "wherein the
housing fixation features include one or more fixed contact features located
toward one side of the outer perimeter [ of the implant housing] and one or
more elastic spring features located towards another side of the outer
perimeter [ of the implant housing]." Appeal Br. 10, Claims App. The
Examiner takes the position that "Gibson is able to meet the intended use
recitations presented in the claims and that Gibson is able to do this by being
used differently than how Gibson intended his device to be used." See Final
Act. 8-9; see also id. at 3-5; Ans. 3-5. 3 In particular, the Examiner finds:
If Gibson's housing was placed in a skull recess that was no
wider than the flanges, but no less than the housing, Gibson's
elastomeric/springy flanges would develop lateral forces in the
plane of the housing to secure the implant within the recess due
to the location of the flanges and elastomeric/springy flanges
being squeezed.
Final Act. 3--4; see also id. at 8-9; Ans. 3-5.
3 Final Office Action ("Final Act."), dated July 24, 2017; Examiner's Answer
("Ans."), dated Mar. 22, 2018.
3
Appeal2018-005808
Application 14/768,779
Claim 2 requires at least one fixed contact feature "located toward one
side of the outer perimeter" of the implant housing and at least one elastic
spring feature "located towards another side of the outer perimeter" of the
implant housing be "adapted to cooperate to develop lateral force in the
plane of the implant housing between the implant housing and radially
adjacent skull bone of the housing recess." See Appeal Br. 10, Claims App.
( emphasis added).
In the subject application, fixed feature 204, located on "one side" of
the outer perimeter of implant housing 201, "cooperates" with elastic
feature 203, located on "another side" of the outer perimeter of implant
housing 201, "to develop lateral force" in the plane of implant housing 201
between implant housing 201 and radially adjacent skull bone 301 of
housing recess 302. See Spec. ,r 38, Figs. 3A-3E; see also Appeal Br. 5---6.
Although the phrase "adapted to" can mean "capable of' or "suitable for,"
here the written description in the Specification indicates "adapted to"
means that the fixed feature and the elastic feature of the subject device are
"designed to" or "constructed to" perform the claimed function, i.e.,
"cooperate to develop lateral force in the plane of the implant housing
between the implant housing and radially adjacent skull bone of the housing
recess." In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014); Aspex
Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir.
2012); see also Reply Br. 1-2; Appeal Br. 10, Claims App. (emphasis
added). 4
4 Reply Brief ("Reply Br."), filed May 21, 2018.
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Appeal2018-005808
Application 14/768,779
In Gibson '156, "shafts 404 are threadedly mounted to respective
flanges 405A, 405B." Gibson '156, 7:24--26, Figs. 4A--4C. In other words,
shafts (fixed features) 404 and flanges (elastic features) 405 are located on
the "same side" of the implant housing. Given that shafts (fixed
features) 404 and flanges ( elastic features) 405 of Gibson '156 are located
on the "same side" of the outer perimeter of implant housing 400, we fail to
see and the Examiner fails to adequately explain how shafts (fixed features)
404 and flanges (elastic features) 405 are adapted to "cooperate to develop
lateral force" in the plane of implant housing 400 between implant housing
400 and radially adjacent skull bone 206 of housing recess 414. See Final
Act. 3-5, 8-9; see also Ans. 3-5; Reply Br. 2; Appeal Br. 5-7; Nielsen
Declaration ,r 1 O; Gibson '156, Figs. 4A--4C. Thus, the Examiner fails to
establish by a preponderance of the evidence that Gibson '156's cochlear
implant device anticipates the cochlear implant device of claim 2 of the
subject application.
For these reasons, we do not sustain the Examiner's rejection of
independent claim 2 and its dependent claims 3-5, 11, 12, and 15-17 as
anticipated by Gibson '156.
Obviousness over Gibson '156 and Hakansson, Gibson '156, Hakansson,
and Gibson '058, or Gibson '15 6 and Osorio
Claims 6-10, 13, 14, and 18
The Examiner's obviousness rejections of claims 6-10, 13, 14, and 18
are each based on the same unsupported findings discussed above with
respect to independent claim 2. See Final Act. 5-7. The Examiner does not
rely on Hakansson, Gibson '058, or Osorio to remedy the deficiencies of
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Appeal2018-005808
Application 14/768,779
Gibson '156. Accordingly, for reasons similar to those discussed above for
claim 2, we do not sustain the Examiner's obviousness rejections of claims
6-10, 13, 14, and 18.
DECISION
We REVERSE the decision of the Examiner to reject claims 2-5, 11,
12, and 15-17 under 35 U.S.C. § 102(b).
We REVERSE the decision of the Examiner to reject claims 6-10, 13,
14, and 18 under 35 U.S.C. § 103(a).
REVERSED
6