Marcus ANDERSSON et al.

Patent Trials and Appeals Board

Dec 18, 2020

2020003475 (P.T.A.B. Dec. 18, 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.
15/957,227 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.
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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:
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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.
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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.
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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.
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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
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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.
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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
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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
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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
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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;
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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:
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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.

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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
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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.
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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
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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.

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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,
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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