Marcus Andersson

Patent Trials and Appeals Board

Mar 31, 2020

15014183 - (D) (P.T.A.B. Mar. 31, 2020)

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.
15/014,183 02/03/2016 Marcus Andersson 3065.0078C 6687
110239 7590 03/31/2020
Edell Shapiro & Finnan LLC
9801 Washingtonian Blvd., Suite 750
Gaithersburg, MD 20878
EXAMINER
NI, SUHAN
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
03/31/2020 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):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARCUS ANDERSSON
____________

Appeal 2018-007185
Application 15/014,183
Technology Center 2600
____________

Before JOHNNY A. KUMAR, JOHN A. EVANS, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1–20, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). Appellant identifies the real party in interest
as Cochlear Limited. Appeal Br. 3.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the invention “relates generally to
bone conduction devices.” Spec. ¶ 2.2 The Specification explains that
“certain types of auditory prostheses, commonly referred to as bone
conduction devices, convert a received sound into vibrations,” and the
“vibrations are transferred through teeth and/or bone to the cochlea, causing
generation of nerve impulses, which result in the perception of the received
sound.” Id. ¶ 5. The Specification describes several “bone conduction
devices having housings that are complementary to the recipient’s maxillary
alveolar process such that the maxillary alveolar process supports the
housing within the recipient’s mouth.” Id. at 19 (Abstract).
Exemplary Claims
Independent claims 1 and 13 exemplify the claims at issue and read
as follows:
1. A bone conduction system, comprising:
a housing having a surface that is complementary to an
outer surface of a recipient’s maxillary alveolar process such
that the maxillary alveolar process supports the housing within
the recipient’s mouth; and

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed February 3, 2016; “Non-Final Act.” for the Non-Final
Office Action, mailed December 19, 2016; “Amdt” for the Amendment,
filed March 17, 2017; “Final Act.” for the Final Office Action, mailed
June 26, 2017; “Appeal Br.” for the Appeal Brief, filed December 21, 2017;
“Ans.” for the Examiner’s Answer, mailed May 10, 2018; and “Reply Br.”
for the Reply Brief, filed July 3, 2018.
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a transducer disposed in the housing configured to
deliver mechanical output forces to the recipient so as to evoke
a hearing percept of a sound signal.
13. A bone conduction device, comprising:
a housing configured to be positioned in a recipient’s
mouth between the recipient’s tissue and gums and retained in
the mouth due to inward pressure applied by at least one of the
tissue or a lip of the recipient; and
a transducer disposed in the housing configured to
deliver mechanical output forces to the recipient so as to
evoke a hearing percept of a sound signal.
Appeal Br. 20, 22 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability under 35 U.S.C. §§ 102 and 103, the
Examiner relies on United States Patent No. 8,622,885 B2 to Mersky, titled
“Methods and Apparatus for Aligning Antennas of Low-Powered Intra- and
Extra-Oral Electronic Wireless Devices,” filed on February 19, 2010, and
issued on January 7, 2014 (“Mersky”).
The Rejections on Appeal
Claims 1–3 and 12–17 stand rejected under 35 U.S.C. § 102 as
anticipated by Mersky. Final Act. 2–3; Ans. 3–4.
Claims 4–11 and 18–20 stand rejected under 35 U.S.C. § 103 as
unpatentable over Mersky. Final Act. 3–5; Ans. 4–6.3

3 In the Final Office Action, the Examiner states, “Claims 3–4 are objected
to as being dependent upon a rejected base claim, but would be allowable
if rewritten in independent form including all of the limitations of the base
claim and any intervening claims.” Final Act. 5. But the Examiner and
Appellant treat claims 3 and 4 as rejected. See Appeal Br. 17–18; Ans.
3–4, 8. Thus, we also treat claims 3 and 4 as rejected.
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ANALYSIS
We have reviewed the rejections in light of Appellant’s arguments
that the Examiner erred. For the reasons explained below, we agree with the
Examiner’s unpatentability determinations for independent claims 1 and 13
and few of the dependent claims but disagree with the Examiner’s
unpatentability determinations for most of the dependent claims. We add
the following to address and emphasize specific findings and arguments.
The § 102 Rejection of Claims 1–3 and 12–17
INDEPENDENT CLAIM 1: THE “HOUSING” LIMITATION
As noted above, the § 102 rejection of claim 1 rests on Mersky. See
Final Act. 2. Appellant argues that the Examiner erred in rejecting claim 1
because Mersky does not disclose the following limitation in claim 1:
“a housing having a surface that is complementary to an outer surface of
a recipient’s maxillary alveolar process such that the maxillary alveolar
process supports the housing within the recipient’s mouth.” See Appeal
Br. 10–15; Reply Br. 3–5.
Specifically, Appellant asserts that Mersky’s internal (intra-oral) unit
“is retained in position on the maxillary arch via some ‘precise mechanical
attachment’ to the recipient’s teeth or other structure” and that the “precise
mechanical attachment” provides “mechanical contact between the actuator
and the teeth.” Appeal Br. 14 (quoting Mersky 5:39–41); see Reply Br. 4–5.
Based on the internal unit’s “precise mechanical attachment” to the
recipient’s teeth or other structure, Appellant contends that the internal unit’s
housing “is not necessarily or inherently ‘complementary to an outer surface
of a recipient’s maxillary alveolar process such that the maxillary alveolar
process supports the housing within the recipient’s mouth,’ as recited in
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claim 1.” Id. (emphasis omitted). Appellant also contends that “the alleged
‘housing’ of Mersky is not even located on the outer surface of a recipient’s
maxillary alveolar process, but instead is simply disposed in the buccal
space (i.e., the cheek area, beside or lateral to the maxillary molars).”
Reply Br. 5.
Appellant’s arguments do not persuade us of Examiner error because
Mersky’s internal (intra-oral) unit has a housing with several surfaces and at
least one of the surfaces satisfies the disputed limitation in claim 1. See
Final Act. 2, 5–6; Ans. 3, 6–8; Mersky 3:47–50, 4:10–13, 4:34–39, 4:52–59,
8:20–21, 8:32–35, 8:39–40, 11:7–12, 14:44–49, Fig. 6. Mersky’s Figure 6 is
reproduced below:

Figure 6 depicts an internal (intra-oral) unit worn inside the mouth that
includes an antenna and an external (extra-oral unit) worn outside the mouth,
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i.e., in the ear canal, that also includes an antenna. Mersky 10:45–46,
11:7–12, 14:41–47, Fig. 6; see Final Act. 5–6; Ans. 6–8. Mersky states that
the “invention relates to an apparatus and method for co-locating and
orientating a matching pair of directional antennas in wireless electronic
signal transmission systems having a first unit worn inside the mouth and a
second unit worn outside the mouth.” Mersky 3:27–31; see Ans. 9 (quoting
Mersky 3:27–31); Reply Br. 6 (quoting Mersky 3:27–31).
Internal unit 4 includes antenna 5, control circuit 12i, a power supply
(not shown), and a vibrational transducer (not shown). Mersky 11:7–12,
13:35–42, 14:44–49; see id. at 4:52–56; Final Act. 5–6; Ans. 6–8. External
unit 3 includes antenna 6, microphone 10, power supply 11, and control
circuit 12. Mersky 13:10–17. “[T]he external unit 3 transmits to the internal
unit 4.” Id. at 13:17–18, 13:42–44. The signals by the internal unit 4 cause
the vibrational transducer to “vibrate the tooth to conduct the vibratory
signals through the tooth and bone and subsequently to the inner ear to
facilitate hearing of the user.” Id. at 11:30–36, code (57).
Mersky explains that “two or more different types of mouth-safe
materials should be used to pot the internal electronic system and affix it in
the mouth.” Mersky 4:34–36; see id. at 11:7–10; Ans. 6, 9. “The antenna
itself should be potted in a mouth-safe, non-toxic silicone that because of its
chemistry is thermally and electrically non-conductive with a high ‘Q’
value.” Mersky 4:37–39; see id. at 11:7–10; Ans. 6, 9. “The remainder of
the intra-oral unit, such as that part which contacts the gingiva or teeth and
houses the control circuits and power supply, is potted in typical dental
materials such as urethanes, composites, nylons, thermoplastics, etc.”
because “[t]hese materials are needed to provide rigidity and hardness, and
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to pot in a safely [sic] manner the other electrical components of the internal
system.” Mersky 4:52–59.
To provide a custom fit for a user, “two custom impressions are made
using novel impression trays, a mouth impression and an ear impression.”
Mersky 3:47–49; see id. at 4:1–5, 8:20–21; Ans. 9 (quoting Mersky
3:47–49). After obtaining the impressions, “the delicate anatomical
orientations captured by the impressions can be reproduced on a laboratory
bench top.” Mersky 16:67–17:2. Thus, a “laboratory technician can build
embodiments and systems” for different users with “antennas that optimally
match and align for the given application factors and anatomical constraints”
of different users. Id. at 4:10–13; see Reply Br. 8 (quoting Mersky
4:10–13). Similar to Mersky, the Specification discloses a housing “molded
to fit a particular recipient.” Spec. ¶ 52.
In Mersky, one potting material encases the internal unit’s antenna
and provides a housing portion for the antenna, while another potting
material encases the internal unit’s other components and provides a housing
portion for the other components. Mersky 4:34–39, 4:52–59; see id. at
11:7–10; Ans. 6, 9. The potting material encasing the internal unit’s other
components “contacts the gingiva or teeth,” and thus rests on a recipient’s
maxillary alveolar process. Mersky 4:52–59; see id. at 8:20–21, 8:32–35,
8:39–40; Ans. 6–8. Appellant admits that the internal unit “may be
positioned ‘on the maxillary arch.’” Appeal Br. 12 (quoting Mersky
8:20–21).
Because the potting material’s shape results from a mouth impression
obtained from a recipient, the potting material encasing the internal unit’s
other components satisfies claim 1’s requirement for “a housing having a
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surface that is complementary to an outer surface of a recipient’s maxillary
alveolar process such that the maxillary alveolar process supports the
housing within the recipient’s mouth.” See Final Act. 5–6; Ans. 6–8;
Mersky 3:47–58, 4:1–13. As the Examiner properly reasons, “the housing is
to be fitted or to be complementary to the maxillary alveolar process of the
upper jaw bone – very similar to a denture.” Ans. 6–7.
Appellant asserts that Mersky uses the mouth impression and the ear
impression “to determine the specific positions and orientations of the intra-
oral (mouth-worn) antenna and the extra-oral (in-the-ear) antenna” and not
“to determine th[e] shape of an[y] type of housing.” Reply Br. 8–9.
We disagree. As discussed above, “two custom impressions are
made” in Mersky, i.e., “a mouth impression and an ear impression.” Mersky
3:47–49; see id. at 4:1–5, 8:20–21; Ans. 9 (quoting Mersky 3:47–49).
“From the mouth impression, a laboratory technician makes a typical dental
cast” to house the internal unit. Mersky 3:49–51; see Ans. 9 (quoting
Mersky 3:49–51). “From the ear impression, the technician makes a typical
cast of the ear anatomy” to house the external unit. Mersky 3:51–53; see
Reply Br. 8 (citing Mersky 3:47–58).
When installing the internal and external units in a recipient, a
technician uses a mouth-ear alignment tool “to mount and orient the two
casts” in the recipient. Mersky 3:54–55; see Reply Br. 8 (citing Mersky
3:47–58). The mouth-ear alignment tool facilitates orienting the internal and
external units relative to one another to obtain an alignment that “results in
the lowest achievable wireless signal transmission power between the two
units or devices.” Mersky 14:55–64; see id. at 4:1–13; Reply Br. 8 (quoting
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Mersky 14:55–64). Hence, Mersky uses the mouth impression and the ear
impression to determine housing shapes.
As Appellant asserts, Mersky discloses a mechanical attachment of
the internal unit to the teeth or other oral structures. Mersky 5:39–41,
8:21–45; see Appeal Br. 14; Reply Br. 4–5. But a mechanical attachment
of the internal unit to the teeth or other oral structures does preclude
anticipation. Claim 1 uses the transitional term “comprising” and, therefore,
“does not exclude unrecited elements,” such as a mechanical attachment.
See Regeneron Pharm., Inc. v. Merus N.V., 864 F.3d 1343, 1352 (Fed. Cir.
2017) (citing Manual of Patent Examining Procedure § 2111.03).
Additionally, “during examination proceedings, claims are given their
broadest reasonable interpretation consistent with the specification.” In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Here, the Specification
indicates that the maxillary alveolar process “supports” the housing within
the recipient’s mouth by providing a weight-bearing surface for the housing.
See Spec. ¶¶ 7, 28–29, 49, 55–56, 58, 71.
As an example, the Specification explains that “the support provided
by the maxillary alveolar process 109, coupled with inward pressure exerted
by tissue 122(A), is sufficient to retain the under-lip bone conduction device
100 in the correct position within mouth 102.” Spec. ¶ 55. Further, the
Specification states that “additional fixation/securement mechanisms may
be provided,” such as “a temporary adhesive (e.g., denture adhesive power,
cream, etc.)” to “further secure the under-lip bone conduction device 100 in
a selected location.” Id. Similar to the Specification, Mersky states that a
mechanical attachment may “comprise oral denture adhesive applied to the
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polymer, resin, metal, or other dental material that contacts the soft tissue
areas of the maxillary arch.” Mersky 8:32–35.
As another example, the Specification describes an embodiment of a
bone conduction device “configured to be positioned in a lower cavity of a
recipient’s mouth” with “a housing having a front surface with a shape that
is complementary to an outer surface of the recipient’s lower gums and
mandibular alveolar process such that the mandibular alveolar process
supports the housing within the mouth.” Spec. ¶ 71; see id. ¶ 29.
In Mersky, the maxillary alveolar process “supports” the internal
unit’s housing within the recipient’s mouth by providing a weight-bearing
surface for the housing. See Mersky 3:47–50, 4:10–13, 4:34–39, 4:52–59,
8:20–21, 8:32–35, 8:39–40, 11:7–12, 14:44–49, Fig. 6; Final Act. 5–6;
Ans. 6–8.
Appellant’s contention that “the alleged ‘housing’ of Mersky is not
even located on the outer surface of a recipient’s maxillary alveolar process,
but instead is simply disposed in the buccal space (i.e., the cheek area,
beside or lateral to the maxillary molars)” rests on a misunderstanding of
Mersky. See Reply Br. 5. The potting material encasing the internal unit’s
antenna resides in the buccal space, not the potting material encasing the
internal unit’s other components. Mersky 3:37–43, 5:19–20, 11:10–12,
14:39–47, Fig. 6; see Ans. 8 (citing Mersky 3:37–43). The potting material
encasing the internal unit’s other components “contacts the gingiva or teeth,”
and thus rests on a recipient’s maxillary alveolar process. Mersky 4:52–59;
see id. at 8:20–21, 8:32–35, 8:39–40; Ans. 6–8.
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For the reasons discussed above, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting claim 1 as anticipated by
Mersky. Hence, we sustain the § 102 rejection of claim 1.
INDEPENDENT CLAIM 13: WHETHER
THE § 102 REJECTION SATISFIES § 132
Appellant argues that the § 102 rejection of claim 13 “is prima facie
improper and should be overturned” because “the Examiner has entirely
failed to provide any reasons explaining how/where either Mersky teaches”
a housing according to claim 13. Appeal Br. 16–17.
We disagree. The “PTO carries its procedural burden of establishing
a prima facie case when its rejection satisfies 35 U.S.C. § 132, in
‘notify[ing] the applicant . . . [by] stating the reasons for [its] rejection, or
objection or requirement, together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application.’” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(alterations in original) (quoting 35 U.S.C. § 132). The PTO violates § 132
“when a rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection.” Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). But if the PTO “adequately
explain[s] the shortcomings it perceives . . . the burden shifts to the applicant
to rebut the prima facie case with evidence and/or argument.” Hyatt v.
Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007).
Here, the Examiner noted where and how Mersky discloses a housing
according to claim 13. Final Act. 2, 5–6. For instance, the Examiner
identified a housing in Figure 6 containing a “vibrational transducer” and
positioned in a user’s mouth. Id. at 6. Further, the Examiner explained that
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the housing “must be directly engaged onto maxillae of the user” or
“complementary to an outer surface of a recipient’s maxillary alveolar
process” to “effectively transmit[] vibrational sound to [a] user.” Id.
INDEPENDENT CLAIM 13: THE “HOUSING” LIMITATION
Appellant argues that the Examiner erred in rejecting claim 13
because Mersky does not disclose the following limitation in claim 13:
“a housing . . . retained in the mouth due to inward pressure applied by at
least one of the tissue or a lip of the recipient.” See Appeal Br. 15; Reply
Br. 6–9. Specifically, Appellant asserts that one skilled in the art would
readily appreciate that a device “required to be retained in its position
through ‘precise mechanical attachment’ to teeth or dental implants,” as in
Mersky, “does not include a ‘housing . . . retained in the mouth due to
inward pressure applied by at least one of the tissue or a lip of the recipient,’
as recited in claim 13.” Appeal Br. 15 (alteration in original); see Reply
Br. 9. In addition, Appellant “notes that the concept of ‘inward pressure’
applied ‘by maxillary gum and labial mucosa (the inside lining of the lip) in
the buccal space’ is completely missing from Mersky.” Reply Br. 7.
The Examiner determines that Mersky satisfies the disputed limitation
in claim 13. See Final Act. 2, 5–6; Ans. 3, 9. Specifically, the Examiner
finds that Mersky’s internal unit has a housing “retained in the mouth due to
inward pressure (by maxillary gum and labial mucosa (the inside lining of
the lip) in the buccal space) applied by at least one of the tissue or a lip of
the recipient as claimed.” Ans. 9 (citing Mersky 3:27–31, 3:47–50,
4:34–36).
We agree with the Examiner that Mersky satisfies the disputed
limitation in claim 13. See Final Act. 2, 5–6; Ans. 3, 9; Mersky 3:27–31,
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3:47–50, 4:10–13, 4:34–39, 4:52–59, 8:20–21, 8:32–35, 8:39–40, 11:7–12,
14:44–49, Fig. 6. The “dispositive question regarding anticipation [i]s
whether one skilled in the art would reasonably understand or infer from the
[reference’s] teaching” that it discloses every claim element arranged as in
the claim. In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991);
see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368
(Fed. Cir. 2003).
Here, one skilled in the art would reasonably understand or infer from
Mersky’s teaching that the internal unit satisfies claim 13’s requirement for
“a housing . . . retained in the mouth due to inward pressure applied by at
least one of the tissue or a lip of the recipient.” For instance, Figure 6 shows
the internal unit positioned “on the maxillary arch.” Mersky 8:20–21,
8:32–35, 8:39–40, Fig. 6. Appellant admits that the internal unit “may be
positioned ‘on the maxillary arch.’” Appeal Br. 12 (quoting Mersky
8:20–21). In that position, inward pressure applied by a recipient’s lip
retains the internal unit in the recipient’s mouth. See Ans. 9 (citing Mersky
3:27–31, 3:47–50, 4:34–36). Thus, the internal unit has “a housing . . .
retained in the mouth due to inward pressure applied by at least one of the
tissue or a lip of the recipient” as required by claim 13.
For the reasons discussed above, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting claim 13 as anticipated
by Mersky. Hence, we sustain the § 102 rejection of claim 13.
DEPENDENT CLAIMS 12, 14, AND 16
Claim 12 depends directly from claim 1, while claims 14 and 16
depend directly from claim 13. Appellant does not argue patentability
separately for these dependent claims. See Appeal Br. 10–19; Reply
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Br. 3–10. Thus, we sustain the § 102 rejection of these dependent claims
for the same reasons as claims 1 and 13. See 37 C.F.R. § 41.37(c)(1)(iv).
DEPENDENT CLAIMS 2 AND 15
Claim 2 depends directly from claim 1 and further requires that
“the [housing] surface includes an elongate cavity configured to mate with
a ridge of the maxillary alveolar process.” Appeal Br. 20 (Claims App.).
Claim 15 depends indirectly from claim 13 and includes a limitation similar
to claim 2. Id. at 22.
Appellant argues that the Examiner erred in rejecting claims 2 and 15
because Mersky “fails to provide any meaningful details about the shape or
structure of” the internal unit’s housing. Appeal Br. 17. Appellant also
argues that Mersky contains only “simplified schematic diagrams that only
illustrate a general or basic shape for” the internal unit’s housing. Id.
In response, the Examiner explains that the internal unit’s housing
“inherently comprises many complementary surfaces . . . to steadily contact
. . . a surface of maxillary alveolar process” in “all intra-oral directions.”
Ans. 8 (citing Mersky 11:7–12, 11:30–36, 13:39–44, 14:44–49).
Based on the record before us, we agree with Appellant that the
Examiner has not adequately explained how the cited portions of Mersky
disclose that “the [housing] surface includes an elongate cavity configured to
mate with a ridge of the maxillary alveolar process” according to claims 2
and 15. For instance, Figure 6 does not show an elongated internal unit.
Moreover, “many complementary surfaces” do not equate to “an elongate
cavity configured to mate with a ridge of the maxillary alveolar process” as
claimed. Hence, we do not sustain the § 102 rejection of claims 2 and 15.
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DEPENDENT CLAIMS 3 AND 17
Claim 3 depends directly from claim 1 and further requires that “at
least one surface of the housing is textured to facilitate friction between the
housing and the recipient’s soft tissue.” Appeal Br. 20 (Claims App.).
Claim 17 depends directly from claim 13 and includes a limitation similar to
claim 3. Id. at 22.
Appellant argues that the Examiner erred in rejecting claims 3 and 17
because the “section of Mersky relied upon by the Examiner does not, in any
way, disclose or suggest that any surface of the internal unit 4 is textured in
any way, let alone ‘textured to facilitate friction between the housing and the
recipient’s soft tissue.’” Appeal Br. 17–18.
In response, the Examiner explains that the internal unit’s housing
“inherently comprises . . . surfaces with suitable texture to steadily contact
. . . a surface of maxillary alveolar process” in “all intra-oral directions.”
Ans. 8 (citing Mersky 11:7–12, 11:30–36, 13:39–44, 14:44–49).
Based on the record before us, we agree with Appellant that the
Examiner has not adequately explained how the cited portions of Mersky
disclose “at least one surface of the housing is textured to facilitate friction
between the housing and the recipient’s soft tissue” according to claims 3
and 17. The cited portions of Mersky do not discuss a textured surface for
the internal unit. See Mersky 11:7–12, 11:30–36, 13:39–44, 14:44–49.
Hence, we do not sustain the § 102 rejection of claims 3 and 17.
The § 103 Rejection of Claims 4–11 and 18–20
DEPENDENT CLAIMS 4–7 AND 18
Claims 4–7 depend directly or indirectly from claim 3, while claim 18
depends directly from claim 17. Because the Examiner has not adequately
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explained how the cited portions of Mersky disclose a textured housing
surface according to claims 3 and 17 and because the Examiner has not
identified a motivation to modify Mersky to include a textured housing
surface according to claims 3 and 17, we do not sustain the § 103 rejection
of claims 4–7 and 18. See Final Act. 2–3; Ans. 8.
DEPENDENT CLAIMS 8–11, 19, AND 20
Claims 8 and 11 depend directly from claim 1, while claim 19
depends directly from claim 13. In the Non-Final Office Action, the
Examiner took official notice that features recited in claims 8, 11, and 19
were “very well known in the art.” Non-Final Act. 4–5.
In response, Appellant argued that “the alleged ‘facts’ for which the
Examiner has taken Official Notice in the outstanding Office Action are not
‘instant and unquestionable.’” Amdt 12 (quoting Manual of Patent
Examining Procedure § 2144.03). In addition, Appellant said that “if the
Examiner continues to believe that the features of” the claims “are well
known in the art, Applicant respectfully requests that the Examiner provide a
reference or references in the next Office Action allegedly offering evidence
that this is the case.” Id.
In the Final Office Action, the Examiner did not provide a reference
or other documentary evidence to support the officially noticed facts. See
Final Act. 3–5. Instead, the Examiner repeated the statements in the
Non-Final Office Action that features recited in claims 8, 11, and 19 were
“very well known in the art.” Compare Non-Final Act. 4–5, with Final
Act. 3–5.
In the Appeal Brief, Appellant again argues that “the alleged ‘facts’
for which the Examiner has taken Official Notice in the outstanding Office
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Action are not ‘instant and unquestionable.’” Appeal Br. 18 (quoting
Manual of Patent Examining Procedure § 2144.03).
In the Answer, the Examiner does not address the official-notice issue
for claims 8, 11, and 19. See Ans. 6–9.
Based on the record before us, we do not sustain the § 103 rejection of
claims 8, 11, and 19 because the Examiner has not cited sufficient evidence
of unpatentability. See Final Act. 3–5; Ans. 6–9.
Claims 9 and 10 depend directly from claim 8, while claim 20
depends directly from claim 19. For the reasons we do not sustain the § 103
rejection of claims 8 and 19, we do not sustain the § 103 rejection of
claims 9, 10, and 20. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988)
(explaining that “[d]ependent claims are nonobvious under section 103 if
the independent claims from which they depend are nonobvious”).
CONCLUSION
We affirm the rejection of claims 1, 12–14, and 16 under 35 U.S.C.
§ 102.
We reverse the rejection of claims 2, 3, 15, and 17 under 35 U.S.C.
§ 102.
We reverse the rejection of claims 4–11 and 18–20 under 35 U.S.C.
§ 103.
In summary:
Claims
Rejected 35 U.S.C. § Reference(s) Affirmed Reversed
1–3, 12–17 102 Mersky 1, 12–14, 16 2, 3, 15, 17
4–11, 18–20 103 Mersky 4–11, 18–20
Appeal 2018-007185
Application 15/014,183

18
Claims
Rejected 35 U.S.C. § Reference(s) Affirmed Reversed
Overall
Outcome 1, 12–14, 16
2–11, 15,
17–20
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)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED IN PART