MED-EL ELEKTROMEDIZINISCHE GERAETE GMBH

Patent Trials and Appeals Board

Jun 29, 2020

2020000319 (P.T.A.B. Jun. 29, 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.
14/915,653 03/01/2016 Anandhan Dhanasingh 1941/1010 3255
2101 7590 06/29/2020
Sunstein LLP
100 High Street
Boston, MA 02110-2321
EXAMINER
PHAM, MINH DUC GIA
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
06/29/2020 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):
usptomail@sunsteinlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ANANDHAN DHANASINGH and
CLAUDE JOLLY
____________________

Appeal 2020-000319
Application 14/915,653
Technology Center 3700
____________________

Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 1–8 and 10–12. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, the “invention relates to implantable
electrodes for . . . [cochlear implants,] and specifically to mechanical

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Med-El
Elektromedizinische GmbH. Appeal Br. 2.
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fixation of a hydrogel covering over the electrode contacts.” Spec. ¶ 2; see
also id. at Abstract. Claim 1 is the sole independent claim on appeal.
Below, we reproduce independent claim 1 as representative of the appealed
claims.
1. A cochlear implant electrode comprising:
an implantable electrode array made of resilient material
having a center longitudinal axis and an outer surface;
a plurality of electrode contacts distributed on the outer
surface of the electrode array along the longitudinal axis for
applying electrical stimulation signals to adjacent neural tissue;
and
at least one biocompatible hydrogel layer fixed to the
electrode array solely by mechanical connection and adapted to
swell from contact with perilymph fluid within a cochlea
without separating away from the outer surface of the electrode
array;
wherein the electrode array includes at least two
openings connected together through the interior of the
electrode array and filled with hydrogel material of the
hydrogel layer to form a closed loop of hydrogel material to
mechanically connect the hydrogel layer to the electrode array.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1–7 and 10–12 under 35 U.S.C. § 103 as unpatentable
over Chambers,2 Gerber,3 and Van Antwerp;4 and
II. Claim 8 under 35 U.S.C. § 103 as unpatentable over Chambers,
Gerber, Van Antwerp, and Capcelea.5

2 Chambers, US 2011/0178587 A1, published July 21, 2011.
3 Gerber, US 2008/0103579 A1, published May 1, 2008.
4 Van Antwerp et al., US 5,786,439, issued July 28, 1998 (“Van Antwerp”).
5 Capcelea et al., US 2011/0034969 A1, published Feb. 10, 2011
(“Capcelea”).
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ANALYSIS
Rejection I—Obviousness rejection of claims 1–7 and 10–12
As set forth above, independent claim 1 recites the following:
1. A cochlear implant electrode comprising:
an implantable electrode array made of resilient material
having a center longitudinal axis and an outer surface;
a plurality of electrode contacts distributed on the outer
surface of the electrode array along the longitudinal axis for
applying electrical stimulation signals to adjacent neural tissue;
and
at least one biocompatible hydrogel layer fixed to the
electrode array solely by mechanical connection and adapted to
swell from contact with perilymph fluid within a cochlea
without separating away from the outer surface of the electrode
array;
wherein the electrode array includes at least two
openings connected together through the interior of the
electrode array and filled with hydrogel material of the
hydrogel layer to form a closed loop of hydrogel material to
mechanically connect the hydrogel layer to the electrode array.
Appeal Br., Claims App. (emphasis added). The Examiner’s obviousness
rejection of independent claim 1 does not rely on any reference to disclose
the emphasized claim recitation—i.e., an electrode array that includes two
openings connected together through an interior of the electrode array and
filled with hydrogel material of the hydrogel layer to form a closed loop of
hydrogel material to mechanically connect the hydrogel layer to the
electrode array. Rather, according to the Examiner, it would have been
obvious to modify Chambers based on Gerber, as discussed below, to
provide the claimed closed loop of hydrogel material. More specifically, as
set forth below, the Examiner combines what we term an exterior portion of
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a hydrogel loop from Chambers with an interior portion of a hydrogel loop
from Gerber, to thereby form a closed loop of hydrogel.
With reference to Chambers’s Figures 3A, 3B, and 4, Chambers
discloses a cochlear implant’s intracochlear electrode array 20 including
electrode 21. Chambers, Figs. 3A, 3B, 4. Hydrogel 40, using claim 1’s
nomenclature, is “fixed to the electrode array by mechanical connection”—
specifically, electrode 21 include channels 41 into which hydrogel 40 flows.
See id. ¶ 33. However, electrode 21 does not include an open interior, and
does not include two opening connected through an interior, such that
hydrogel material is disposed in the interior and two openings. In this way,
Chambers discloses what will be the exterior portion of the claimed hydrogel
loop.
With reference to Gerber’s Figure 4A, for example, Gerber discloses a
lead 60 with electrodes 64 and exit ports 66. With reference to Gerber’s
Figure 8, substance 186 flows through lead 180’s open interior, and through
exit ports 184. Thus, Gerber’s lead 180 discloses (using claim 1’s
nomenclature) “two openings connected together through the interior of the
electrode array and filled with hydrogel material.” However, the Examiner
does not point to anything in Gerber disclosing that after substance 186
flows through exit ports 184 to the exterior of lead 180, substance 186 from
one exit port flows into substance 186 from another exit port. Restated,
while Gerber discloses what will be the interior portion of the claimed
hydrogel loop, Gerber does not disclose what will be the hydrogel loop’s
exterior portion.
Nonetheless,
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[t]he Examiner propose[s] a modification of the cochlear
implant system of Chambers so that the electrode array would
have at least two exits (channels 41) connected together through
the interior of the electrode in similar configuration to the exits
taught in Gerber, while still maintaining all other aspect of . . .
[Gerber] . . . , including the biocompatible hydrogel layer 40 in
contact with the electrode array.
Answer 5.
It is well settled that “rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
We do not sustain the rejection because the Examiner does not provide a
rational reason to modify Chambers based on Gerber, as the Examiner
proposes. See Appeal Br. 5–9.
According to the Examiner,
[i]t would have been obvious . . . to modify the invention taught
by Chambers and Van Antwerp with the electrode array
configuration having at least two exits connected together
through the interior of the electrode array as taught by Gerber,
since such modification would be applying a known technique
to a known device to yield the predictable result of a reliable
means for fixating the hydrogel layer within the electrode array.
Final Action 5; see also Answer 5. Neither Chambers nor Gerber shows a
closed loop of hydrogel as claimed. Further, to the extent that it would have
been obvious to modify Chambers to include (using claim 1’s nomenclature)
Gerber’s “two openings connected together through the interior of the
electrode array and filled with hydrogel material,” the Examiner does not
explain why it would then be obvious, on the electrode’s exterior, to flow the
hydrogel from one opening into the hydrogel from another opening (i.e., to
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form the exterior portion of the claimed hydrogel loop). Restated, the
question remains why if one modifies Chambers based on Gerber, it would
not have been obvious to flow the hydrogel to form only the interior portion
of the claimed hydrogel loop and not the exterior portion of the claimed
hydrogel loop, as Gerber discloses. Based on our review of the record, it
appears that the reason to combine Chambers and Gerber as the Examiner
proposes is because claim 1 recites such an arrangement—i.e.,
impermissible hindsight.
Accordingly, we do not sustain the Examiner’s obviousness rejection
of independent claim 1. We also do not sustain the Examiner’s obviousness
rejection of claims 2–7 and 10–12 that depend from, and the Examiner
rejects with, claim 1.
Rejection II—Obviousness rejection of claim 8
Claim 8 depends from claim 1. The Examiner does not rely on
Capcelea to disclose anything that would remedy the above deficiency in
independent claim 1’s rejection. Thus, we also do not sustain the
Examiner’s obviousness rejection of claim 8.

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CONCLUSION
We REVERSE the Examiner’s obviousness rejections of claims 1–8
and 10–12.
In summary:
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–7, 10–12 103 Chambers, Gerber,
Van Antwerp
1–7, 10–12
8 103 Chambers, Gerber,
Van Antwerp,
Capcelea
8
Overall
Outcome
1–8, 10–12
REVERSED