Marcus ANDERSSON et al.Download PDFPatent Trials and Appeals BoardDec 18, 20202020003475 (P.T.A.B. Dec. 18, 2020) 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. 15/957,227 04/19/2018 Marcus ANDERSSON 5441-090UA 5707 111614 7590 12/18/2020 Pilloff Passino & Cosenza LLP 2000 Duke Street Suite 300 Alexandria, VA 22314 EXAMINER EASON, MATTHEW A ART UNIT PAPER NUMBER 2651 NOTIFICATION DATE DELIVERY MODE 12/18/2020 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): mail@pilloffpassino.com mcosenza@pilloffpassino.com rpilloff@pilloffpassino.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARCUS ANDERSSON, JOHAN GUSTAFSSON, MARTIN EVERT GUSTAF HILLBRATT, and TOBIAS GOOD Appeal 2020-003475 Application 15/957,227 Technology Center 2600 Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and ELENI MANTIS MERCADER, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 5–8, 17–38, and 40–43. See Final Act. 1. An Oral Hearing was held on Nov. 4, 2020. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2019). Appellant identifies the real party in interest as Cochlear Limited. Appeal Br. 2. Appeal 2020-003475 Application 15/957,227 2 CLAIMED SUBJECT MATTER The claims are directed to a bone conduction skin interface. Claims 1, 17, 24, and 31 reproduced below, are illustrative of the claimed subject matter: 1. A skin interface apparatus configured as an interface of a prosthesis with skin of a recipient, comprising: at least one permanent magnet configured to magnetically retain the skin interface apparatus to the skin via interaction with an implanted magnet implanted beneath the skin of the recipient; a first portion configured for direct contact with skin of the recipient; and a second portion configured for direct contact with skin of the recipient, wherein the portions have different material properties: the skin interface apparatus is configured to support the magnet such that the magnet is spaced away from the skin of the recipient, and the first portion surrounds the second portion. 17. A skin interface pad assembly for an external component of a passive bone conduction device, comprising: a first pad portion configured to interface with skin of the recipient; and a second pad portion configured to interface with skin of the recipient, wherein the first pad portion is made of different material than the second pad portion, and a first surface area of the first pad comprising the surface that interfaces with skin of the recipient of the first pad is larger than a second surface area of the second pad comprising the surface that interfaces with skin of the recipient. 24. A removable component of a bone conduction device, comprising: Appeal 2020-003475 Application 15/957,227 3 a first skin interface apparatus configured to serve as an interface between a support apparatus of the device and skin of a recipient; and a second skin interface apparatus configured to serve as an interface between a vibratory apparatus of the device and skin of the recipient, wherein the skin interface apparatuses are different. 31. A method of using a hearing prosthesis, comprising: transducing a captured sound signal into mechanical vibrations using an external component of the hearing prosthesis; and transferring the mechanical vibrations into skin of a recipient, thereby evoking a hearing percept, wherein a path of the transduced vibrations travels from the external component into the skin through a first surface that has a different characteristic than a second surface supporting the external component on the skin. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Andersson US 9,967,685 B2 May 8, 2018 Bern US 2015/0049889 A1 Feb. 19, 2015 REJECTIONS2 Claims 1, 2, and 5–8 stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 5–7 of U.S. Patent No. 9,967,685. Although the claims at issue are not identical, they are not patentably distinct from each other because Patent ‘685 contains all 2 The Examiner indicates that dependent claim 39 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form. Final Act. 9. Appeal 2020-003475 Application 15/957,227 4 of the limitations of present claims 1, 2, and 5–8 with added limitations. Final Act. 3. Claims 24–26 and 30 stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims 23–25 and 29 of U.S. Patent No. 9,967,685. Although the claims at issue are not identical, they are not patentably distinct from each other because Patent ‘685 contains all of the limitations of present claims 24–26 and 30 with added limitations. Final Act. 3. Claims 17, 24, 26, 30–38, 40, 41, and 43 stand rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Bern. Final Act. 4. Claim 18–23 and 25 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bern. Final Act. 8. Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1, 2, 5–8 nonstatutory double patenting 24–26, 30 nonstatutory double patenting 17, 24, 26, 30–38, 40, 41, 43 102(a)(1) Bern 18–23, 25 103 Bern OPINION Petitionable Matters We note that Appellant sets forth lengthy arguments regarding a desire for a more detailed statement of the rejection and the Examiner’s broadest reasonable interpretation of the claim language and Appellant provides various versions of edited claim language and commentary thereto. Appeal 2020-003475 Application 15/957,227 5 The desire for a more detailed statement of the rejection and a desire for the Examiner to expressly state the broadest reasonable interpretation of the claim language are petitionable matters to invoke the supervisory authority of the Director and are not within the jurisdiction of the Board. [T]hese matters are reviewable by petition under 37 C.F.R. § 1.181 (see Manual of Patent Examining Procedure (MPEP) §§ 1002 and 1201); see also In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403–04 (CCPA 1971) (stating that there are many kinds of decisions made by Examiners that are not appealable to the Board when they are not directly connected with the merits of issues involving rejections of claims, and holding that “the kind of adverse decisions of the patent examiner which are reviewable by the board of appeals must be those which relate, at least indirectly, to matters involving the rejection of claims”); and In re Mindick, 371 F.2d 892, 894 (CCPA 1967) (holding that the refusal of an Examiner to enter an amendment of claims is reviewable by petition under 37 C.F.R. § 1.181, and not by appeal to the Board)). In an appeal under 35 U.S.C. § 134(a), it is the Examiner’s final rejection that we review. See In re Webb, 916 F.2d 1553, 1556 (Fed. Cir. 1990). The Examiner maintains that broadest reasonable interpretation has not been withheld, and the Examiner maintains that “the BRI of the claim language is provided by the mapping of the claim limitations to the prior art of record. If a claim limitation is mapped directly to an element or elements of a prior art reference, then that is what the Office considers the BRI of the claim limitation to encompass.” Ans. 3. Appeal 2020-003475 Application 15/957,227 6 On this record, the Examiner has set forth the corresponding mapping of the claim limitations to the prior art Bern reference sufficient for review of the rejections, and Appellant has not petitioned to invoke the supervisory authority of the Director. The Board normally only considers matters affecting the merits of the invention, i.e., rejections of claims. See 37 C.F.R. § 41.31(c) (2019). Matters not affecting the merits of the invention, such as objections to the claims or Specification or allegations of procedural errors by the Examiner (e.g., failure to designate a new ground of rejection as such), are to be raised by petition to the Director or to the PTO official to whom the Director has delegated the authority to determine the petition. See 37 C.F.R. §§ 1.181- 183; see also MPEP §§ 1002, 1207.03 (IV) (9th Ed., Rev. 10, July 2019). Obviousness-Type Double Patenting The issue to consider when determining whether a nonstatutory basis exists for a double patenting rejection is whether any claim in the application defines an invention that is merely an obvious variation of an invention claimed in another patent. The analysis employed in an obviousness-type double patenting determination parallels the guidelines for an obviousness determination under 35 U.S.C. § 103(a). In re Braat, 937 F.2d 589, 593-94 (Fed. Cir. 1991); see also In re Longi, 759 F.2d 887, 892 n. 4 (Fed. Cir. 1985). With respect to independent claims 1, 2, 5–8, 24–26, and 30, Appellant argues There is no default that if claims are broader than those of a parent application that there is automatically obviousness-type double patenting. There is no explanation why the differences Appeal 2020-003475 Application 15/957,227 7 between the claims results in a lack of patentable distinctness. There is only a declaration that the claims are different, howbeit broader. Substantively, a prima facie case of obviousness type double patenting has not been established. Appeal Br. 82; Reply Br. 63. Appellant provides no supporting authority for their position regarding their argument. We disagree with Appellant’s argument. First, we note that the language of rejected independent claims 1 and 24 correspond substantially to similar limitations present in the patented prosecution before the narrowing two amendments submitted on the same date. Thereafter, the Examiner allowed the claims and provided a reasons for allowance to a prior Andersson patent, but the Examiner provided no reasons to distinguish the claimed invention from the applied Bern reference.3 We find that the Examiner identified the public policy considerations in the nonstatutory double patenting rejection where “judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the ‘right to exclude’ granted by a patent and to prevent possible harassment by multiple assignees.” Final Act 2. We note that the language of patented independent claim 1 and patented independent claim 23 both directly correspond to the previously 3 We note the Reasons for Allowance are directed to the “the skin interface apparatus is configured to support the magnet such that the magnet is spaced away from the skin of the recipient.” In any further prosecution on the merits, the Examiner should consider Figures 6A and 6B of the Bern reference which teaches and suggests “holding unit 42 comprises a housing 50 provided with a threaded bore” which adjusts the magnet away from contact with the skin. Appeal 2020-003475 Application 15/957,227 8 rejected claims, but contain additional limitations. Consequently, the patented claims are an obvious variation of the patented claims requiring co- ownership. Because Appellant has not provided any persuasive substantive argument beyond arguing a lack of showing by the Examiner and has not filed a terminal disclaimer to obviate the rejection, we sustain the Examiner’s obviousness-type double patenting rejection of claims 1, 2, 5–8, 24–26, and 30. 35 U.S.C. § 102(a)(1) With respect to independent claims 17, 24, and 31, Appellant sets forth separate arguments for patentability, and we will address Appellant’s separate arguments to the merits of the Examiner’s rejections. We note that Appellant sets forth a lengthy arguments regarding a desire for a more detailed statement of the rejection and the lack of a statement of the Examiner’s broadest reasonable interpretation of the claim language, and Appellant provides various edited versions of claim language and commentary thereto. The desire for a more detailed statement of the rejection and a desire for the Examiner to expressly state the broadest reasonable interpretation of the claim language are petitionable matters to invoke the supervisory authority of the Director and are not within the jurisdiction of the Board, as discussed above. Claim 17 “A reference anticipates a claim if it discloses the claimed invention ‘such that a skilled artisan could take its teachings in combination with his Appeal 2020-003475 Application 15/957,227 9 own knowledge of the particular art and be in possession of the invention.’“ In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In re LeGrice, 301 F.2d 929, 936 (CCPA 1962)). Of course, anticipation “is not an ‘ipsissimis verbis’ test.” In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990) (citing Akzo N.V. v. United States Int’l Trade Comm’n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir. 1986)). “An anticipatory reference . . . need not duplicate word for word what is in the claims.” Standard Havens Prods. v. Gencor Indus., 953 F.2d 1360, 1369 (Fed. Cir. 1991). “[T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see also In re Suitco Surface, 603 F.3d 1255, 1259–60 (Fed. Cir. 2010). “The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is “consistent with the specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (citation and internal quotation marks omitted); In re Smith International, Inc. 871 F.3d 1375, 1383–1384 (Fed. Cir. 2017). To read a claim in light of the Specification, one must interpret limitations explicitly recited in the claim, without reading limitations from Appeal 2020-003475 Application 15/957,227 10 the Specification into the claim, to thereby narrow the scope of the claim by implicitly adding disclosed limitations that are not recited in the claim. In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969). Although the claims are interpreted in light of the Specification, limitations from the Specification must not be read into the claims. In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993). With respect to independent claim 17, Appellant argues that the Examiner’s reliance upon the “plate” in the Bern reference does not disclose the claimed “pad” when interpreting the claim limitation in light of the Specification because Figure 2 of Appellant’s disclosed invention discloses a “plate” which is distinguished from the disclosed “pad” in Figure 4. Appeal Br. 28–33. We note that when interpreting the claimed “pad” in light of Appellant’s Specification, paragraph 62 indicates that the pad is a “soft” structure rather than a hard plate, but “soft” is not recited in the language of independent claim 17. In interpreting Appellant’s claim language under the broadest reasonable interpretation consistent with the Specification, we particularly note that Appellant’s Specification expressly discloses in paragraph 63: “some of the teachings detailed herein are directed towards pads. Any disclosure herein directed towards a pad also corresponds to a disclosure of a non-pad component unless otherwise stated.” Spec. ¶ 63 (emphasis added). Thus, we conclude an interpretation of the claimed “pad” that is fully consistent with the Specification would also cover a “plate” as found by the Examiner. We find paragraph 63 of Appellant’s Specification vitiates Appellant’s arguments to the contrary. Additionally, we note that Appeal 2020-003475 Application 15/957,227 11 anticipation “is not an ‘ipsissimis verbis’ test,” in which a literal “pad” must be found in the reference by the Examiner. We find Appellant’s Specification broadly describes multiple embodiments disclosing plates, pads, supporting structure, and skin interfaces. In light of Appellant’s express description found in paragraph 63 of the Specification, we are not persuaded that the Examiner has erred in concluding that the broadest reasonable interpretation of the claimed “pad” reads on the disclosed plate of Bern. We conclude the Examiner’s interpretation is reasonable in light of the broad scope of Appellant’s claimed invention which sets forth a skin interface pad which is merely a single element of a passive bone-conduction device where the limitations regarding the single element interface are generally with respect to the bone-conduction device as an external element and interfaces with the skin of the recipient. Ultimately, any element with any specific label that is external to some portion of a bone-conduction device and interfaces with the skin of the recipient may be deemed to be a “pad”, “plate,” or “skin interface” as long as the additional facets of the claimed invention are met. Consequently, we find unavailing Appellant’s argument that the claimed “pad” does not read on the disclosed plate in Bern. We note Appellant’s additional arguments and proffered distinction between the “plate” of the Bern reference and the claimed “pad”: Appellant identifies the usage within the Specification in alternative embodiments using the term “plate” in Figure 2 and the description of the “pad” in Figure 4, but the Appellant identifies the corresponding disclosure for independent claim 17 as directed to “figures 5A and 5D {FIG. 5A, element 512; Appeal 2020-003475 Application 15/957,227 12 paragraph 0066}.” Appeal Br. 4. As a result, Appellant’s proffered interpretation is not with respect to the embodiment that corresponds to independent claim 17. Furthermore, the usage of the term within Appellant’s Specification does not necessarily correspond to the usage in the prior art Bern reference. Appellant further argues that the Examiner must use the term meaning that is consistent with the ordinary and customary meaning of the term where the MPEP mandates that Examiners must use “the meaning given to a claim term [that is] consistent with the ordinary and customary meaning of the term” and, that meaning “must be consistent with the use of the claim term in the specification” and “must be consistent with the interpretation that those skilled in the art would reach,” but Appellant does not present any extrinsic evidence of the ordinary and customary meaning of the term “pad.” Appeal Br. 20. Furthermore, the Specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Consequently, and in light of the Specification at paragraph 63, Appellant’s argument does not show error in the Examiner’s claim interpretation or the application of the disclosure of the Bern reference as an anticipatory reference to independent claim 17 and dependent claims 40 and 41 not separately argued. 4 As a result, we sustain the anticipation rejection of the claims 17, 40, and 41. 4 See Spec. ¶ 63: Appeal 2020-003475 Application 15/957,227 13 Claim 24 With respect to independent claim 24, we note that the language of independent claim 24 sets forth a single element of a removable component of a bone conduction device having two skin interface apparatus portions that interface to the skin of a recipient and to a vibratory apparatus. We further note that the language of independent claim 24 does not set forth additional limitations which further limit the context or interpretation of the single element having two parts. Appellant contends that the Examiner has not identified a “support apparatus of the device” in the rejection and that “[e]lement 18 does not’ serve as an interface between hearing aid 2 and skin of the user.’ It merely incidentally contacts the skin.” Appeal Br. 39. We note that Appellant has identified Figures 5A and 5D with the corresponding paragraphs 66–69 and 80–81 of the Specification for the corresponding support for the claimed invention.5 Figure 5A discloses a support function and a vibratory function rather than a support apparatus. Therefore, we interpret the support It is noted that at this time, some of the teachings detailed herein are directed towards pads. Any disclosure herein directed towards a pad also corresponds to a disclosure of a non-pad component unless otherwise stated. Corollary to this is that any disclosure herein to a component utilizing a generic term, such as "component," or "apparatus," etc., corresponds to a disclosure applicable to a pad. 5 We note that corresponding paragraphs 66–69 do not identify any “support apparatus” and paragraph 80 describes a support apparatus with respect to Figure 5B and not Figure 5A. We leave it to the Examiner and Appellant to further clarify this issue in any further prosecution on the merits. Appeal 2020-003475 Application 15/957,227 14 apparatus to be the remainder of the bone-conduction device 340A/B which is being supported by the totality of the skin interface assembly for 546A. The Examiner finds that elements 18 and 22 are the interfaces between the skin and the hearing aid 2. Final Act. 4; Ans. 4. We further note that the Bern reference discloses the presence of a “housing” which is not shown in the figures or holding plate and a holding unit 42 (Figures 1, 2, 3, 6). [0014] The external magnet(s) in the holding plate may constitute the holding plate itself. In this way, the magnet(s) are coupled directly to the transmission member or the plate member by a flexible coupling. [0015] It is may be preferred that the holding unit comprises a housing or holding plate in which a number of (external) magnets are provided and that the holding unit moreover comprises a transmission member or plate member that is interconnected by a flexible coupling to the magnet(s) of the housing or the holding plate or that the holding unit moreover comprises a transmission member or plate member that is interconnected by a flexible coupling to the housing or the holding plate. Bern ¶¶ 14–15. Given this evidence (id.), we are not persuaded the Examiner erred in finding that the Bern reference discloses a removable component with a first skin interface to serve as an interface between a support apparatus of a device and the skin of the recipient and a second skin interface apparatus configured to serve as an interface between a vibratory apparatus of the device and the skin of the recipient where the skin interface apparatuses are different. Final Act. 4; Ans. 4. With respect to Appellant’s arguments regarding the skin interface and support apparatus, we find that the claim does not expressly recite the Appeal 2020-003475 Application 15/957,227 15 extent of the support and Appellant does not set forth why the mere contact of the skin is not sufficient to meet the claim language. We find that the language of independent claim 24 recites a first skin interface apparatus configured to serve as an interface between a support apparatus of the device and skin of a recipient; and a second skin interface apparatus configured to serve as an interface between a vibratory apparatus of the device and skin of the recipient. The first skin interface apparatus of claim 24 does not recite that the first skin interface apparatus must cover the totality to support the device or the skin of the recipient, but merely that there is an interface. We find that the Bern reference discloses an interface between the skin and the bone conduction device.6 As a result, Appellant’s arguments do not show error in the Examiner’s finding of anticipation of independent claim 24 and dependent claims 26, 30, and 43 not separately argued. Therefore, we sustain the rejection of claims 24, 26, 30, and 43 based upon anticipation. Claim 31 With respect to independent claim 31, Appellant contends that the Examiner is evaluating the claim under the broadest possible interpretation 6 Additionally, claim 24 does not clearly recite that the skin interface is a separate removable component to be used in conjunction with a removable bone conduction device or that the bone conduction component is removable. We leave it to Appellant and the Examiner to consider this in any further prosecution on the merits. Appeal 2020-003475 Application 15/957,227 16 rather than the broadest reasonable interpretation in light of the specification or the knowledge in the art. Reply Br. 40–41; see also Appeal Br. 62. Appellant argues that the claim sets forth “a support surface, not anything that contacts the skin.” Reply Br. 41; see also Appeal Br. 62. We note that the language of independent claim 31 sets forth a “method of using a hearing prosthesis” with a two active steps of transducing a captured sound signal and transferring the mechanical vibration “wherein a path of the transduced vibrations travels from the external component into the skin through a first surface that has a different characteristic than a second surface supporting the external component on the skin.” We find Appellant’s argument is not commensurate in scope with the language of independent claim 31, which does not recite “a support surface.” Arguments must be commensurate in scope with the actual claim language. In re Self, 671 F.2d 1344, 1348 (CCPA 1982); see In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts . . . are not commensurate with the claim scope and are therefore unpersuasive.”). We note that the claimed “path” does not perform any active function in the recited “method of using the hearing prosthesis.” Appellant’s representative at the oral hearing proffered that the “supporting the external components on the skin” is an active step in the method and the elements relied upon by the Examiner do not set forth supporting the external components onto skin. Tr. 16–18. For the proper interpretation of the claim language, we look to the Specification and note that Appellant identifies Figure 25 and paragraph 134 of the Specification as the corresponding disclosure for independent claim 31. Appeal Br. 5. We note that paragraph 134 and Figure 25 of the Appeal 2020-003475 Application 15/957,227 17 Specification merely differentiates the two interface portions rather than performing some additional function in the claimed “method of using a hearing prosthesis.” As a result, we disagree with Appellant and find that the recited path merely sets forth the path for the vibrations to traverse and the remainder of the claim sets forth a differentiation of the characteristics of a first and second surfaces rather than performing any additional active functional step in the claimed “method.” As a result, we are not persuaded the Examiner erred in finding that the Bern reference discloses transducing a captured sound signal and transferring the mechanical vibrations into the skin of a recipient thereby evoking a hearing precept and the transduced vibrations travel a path from the external components into the skin through a first surface which has a different characteristic than a second surface which supports the external components on the skin. See Final Act. 5; Ans. 4–5 (see also Bern Figures 2, 3, and 6 (disclosing a holding plate 42 with magnets either touching the recipient’s skin in Figure 6B or spaced from the skin in Figure 6A and supporting the transducer 2)). Appellant has not identified how the supporting the skin limitation differentiates the transducing or transferring steps or the “evoking a hearing precept” in the method of claim 31 to show error in the Examiner’s finding of anticipation by the Bern reference. As a result, we find Appellant’s arguments do not show error in the Examiner’s finding of anticipation of independent claim 31 and dependent claims 32–38 not separately argued, and we sustain the anticipation rejection thereof. Appeal 2020-003475 Application 15/957,227 18 35 U.S.C. § 103 With respect to the obviousness rejection of the dependent claims 18– 23 and 25, the Examiner finds the Bern reference is “non-limiting in the choice of its materials and therefore it would be obvious to a person of ordinary skill in the prior art to try various commonly available materials for the portions of 20, 48, and 22 including the claimed foam, viscoelastic, metal, pseudoplastic, sponge, memory foam, elastic pad, etc.” Final Act. 8– 9. The Examiner also concludes that the motivation for trying various materials would lie in providing good comfort to a user of the interface pad while meeting the requirements as taught by Bern: to reduce transmission of vibrations from 22 to 18 while providing a more rigid material for the plate 22 than that of 18 and 20/48. Final Act. 9. Appellant argues that because the Examiner does not propose to modify the asserted first skin interface apparatus, as claimed, the Examiner has not made the requisite showing for obviousness. Appeal Br. 100–101. Appellant further argues there is no support for the Examiner’s assertion. Appeal Br. 104. We note that the Examiner does not address Appellant’s obviousness arguments in the Examiner’s Answer. See Ans. 4–5. Furthermore, the Examiner’s rationale is an “Obvious to try” rationale – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, but the Examiner is not identified any teaching or suggestion that all of the enumerated materials nor in a finite number of identified predictable alternatives. Consequently, we find the Examiner’s rejection to be based upon mere speculation. “Legal determinations of obviousness, as with such determinations generally, Appeal 2020-003475 Application 15/957,227 19 should be based on evidence rather than on mere speculation or conjecture.” Alza Corp. v. Mylan Laboratories, Inc., 464 F. 3d 1286, 1290 (Fed. Cir. 2006). Therefore, we cannot sustain the Examiner’s obviousness rejection of dependent claims 18–23 and 25. CONCLUSION The Examiner’s decision rejecting claims 1–2, 5–8, 17–38, and 40–43 is AFFIRMED IN PART. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 5–8, 24–26, 30 Obviousness type double patenting 1, 2, 5–8, 24–26, 30 17, 24, 26, 30–38, 40, 41, 43 Bern 17, 24, 26, 30–38, 40, 41, 43 18–23, 25 103 Bern 18–23, 25 Overall Outcome 1, 2, 5–8, 17, 24–26, 30–38, 40, 41, 43 18–23 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). See 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2020-003475 Application 15/957,227 20 AFFIRMED IN PART Copy with citationCopy as parenthetical citation