Tommy BERGS et al.

Patent Trials and Appeals Board

Feb 16, 2022

2021003856 (P.T.A.B. Feb. 16, 2022)

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. 15/336,910 10/28/2016 Tommy BERGS 5441-111 5972 111614 7590 02/16/2022 Pilloff Passino & Cosenza LLP 2000 Duke Street Suite 300 Alexandria, VA 22314 EXAMINER DORNA, CARRIE R ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 02/16/2022 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 TOMMY BERGS, MARCUS VARDFJÄLL, and KRISTIAN GUNNAR ASNES ____________________ Appeal 2021-003856 Application 15/336,910 Technology Center 3700 ____________________ Before JOHN C. KERINS, JILL D. HILL, and CYNTHIA L. MURPHY, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision of April 30, 2020, rejecting claims 1, 2, 4, 6-18, 24-27, and 30-35. An audio hearing was held on January 31, 2022. 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. Appellant identifies the real party in interest as Cochlear Limited. Appeal Br. 2. Appeal 2021-003856 Application 15/336,910 2 BACKGROUND Independent claims 1, 9, 16, and 24 are pending and are reproduced below with certain limitations italicized. 1. A prosthetic medical device, comprising: a housing; and a piezoelectric component, wherein the piezoelectric component is supported in the housing via at least one spring. 9. A component of a bone conduction device, comprising: a housing; and a transducer-seismic mass assembly, wherein the component is configured to enable permanent shock- proofing of the assembly beyond that which results from damping. 16. A bone conduction device, comprising: a housing; and a transducer-seismic mass assembly including a piezoelectric component, wherein the transducer-seismic mass assembly of the bone conduction device is configured to translate in its entirety within the housing when the housing is closed. 24. A method, comprising: obtaining a component of a medical device prosthesis including a piezoelectric bender; operating the component in a first mechanical state such that the piezoelectric bender bends in a manner that at least one of consumes or generates electricity, wherein the component is configured to experience an acceleration of 30Gs in the first mechanical state in both directions normal to a plane of extension of the piezoelectric bender and subsequently operate in the first mechanical state. Appeal 2021-003856 Application 15/336,910 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Ahsani US 2011/0268303 A1 Nov. 3, 2011 Andersson US 2010/0298626 A1 Nov. 25, 2010 Sashida US 7,180,225 B2 Feb. 20, 2007 Cho US 2006/0087203 A1 Apr. 27, 2006 Karamuk US 2008/0112584 A1 May 15, 2008 Miller US 2015/0141740 A1 May 21, 2015 Westerkull US 2007/0156011 A1 July 5, 2007 REJECTIONS2 I. Claims 1, 2, 4, 6-8, 32, and 33 stand rejected under 35 U.S.C. § 103 as unpatentable over Ahsani. Final Act. 3. II. Claims 9-12, 14, 15, 24, 25, and 27 stand rejected under 35 U.S.C. § 103 as unpatentable over Andersson and Sashida. Final Act. 5. III. Claim 13 stands rejected under 35 U.S.C. § 103 as unpatentable over Andersson, Sashida, and Cho. Final Act. 11. IV. Claims 16-18 and 35 stand rejected under 35 U.S.C. § 103 as unpatentable over Ahsani and Andersson. Final Act. 12. V. Claim 26 stands rejected under 35 U.S.C. § 103 as unpatentable over Andersson, Sashida, and Karamuk. Final Act. 14. VI. Claim 30 stands rejected under 35 U.S.C. § 103 as unpatentable over Andersson, Sashida, and Miller. Final Act. 15. VII. Claim 31 stands rejected under 35 U.S.C. § 103 as unpatentable over Andersson, Sashida, and Westerkull. Final Act. 16. 2 The Examiner has withdrawn the 35 U.S.C. § 101 rejection. Ans. 3. Appeal 2021-003856 Application 15/336,910 4 VIII. Claim 34 stands rejected under 35 U.S.C. § 103 as unpatentable over Andersson, Sashida, and Ahsani. Final Act. 16-17. ANALYSIS Rejection I: Claims 1, 2, 4, 6-8, 32, and 33 - Ahsani The Examiner finds, inter alia, that Ahsani discloses a prosthetic medical device comprising a housing 342 and a vibratory component 350 supported in the housing 342 by at least one spring 344. Final Act. 3. The Examiner finds that, although the embodiment of Ahsani’s Figure 3 does not include a piezoelectric vibratory component, Ahsani discloses an alternative embodiment with a piezoelectric vibratory component. Id. (citing Ahsani ¶ 61). The Examiner contends that “Ahsani teaches the vibratory transducer may be either an electromagnetic or a piezoelectric transducer.” Id. Regarding independent claim 1, Appellant argues, inter alia, that Ahsani’s spring 344 does support the vibratory component 350 in its housing 342, and thus does not meet the limitations of claim 1. Appeal Br. 64 (citing Ahsani ¶ 38). The cited text of Ahsani explains that its vibrating actuator 350 is coupled to its housing 342 via external spring 344, which “isolates the vibrations generated by the vibrating actuator 350 from the housing 342.” Ahsani ¶ 38. Ahsani’s spring 344 resides within the boundaries of its housing. See Ahsani Figs. 3, 4. Claim 1 recites “the piezoelectric component [being] supported in the housing via at least one spring.” While it may appear from Ahsani’s Figure 3 that Ahsani’s vibratory component 350 is supported in its housing by spring 344, Ahsani’s spring 344, while vibrationally isolating its housing 342 from its actuator 350, is not described by Ahsani as supporting the Appeal 2021-003856 Application 15/336,910 5 actuator 350. See Ahsani ¶¶ 29-34. Indeed, Ahsani describes its actuator 350 being directly mechanically supported by its coupling apparatus 340. See id. ¶ 34. For this reason, we do not sustain the rejection of independent claim 1 as being obvious over Ahsani. Claims 2, 4, 6-8, 32, and 33 depend from claim 1, and we do not sustain the rejection of claims 2, 4, 6-8, 32, and 33 for the same reason. Rejection II: Claims 9-12, 14, 15, 24, 25, 27 - Andersson and Sashida Claims 9-12, 14, and 15 Independent claim 9 recites, inter alia, a bone conduction device component having a transducer-seismic mass assembly, the component being “configured to enable permanent shock-proofing of the assembly beyond that which results from damping.” The Examiner finds that Andersson discloses a bone conduction device comprising a housing 125 (Fig. 1) and a transducer-seismic mass assembly 920 (shown in the embodiment of Andersson’s Fig. 9), but not “a component configured to enable permanent shock-proofing of the assembly beyond that which results from damping.” Final Act. 5-6; see Andersson Fig. 9, ¶ 62 (piezoelectric actuator 920 includes piezoelectric elements 900A,B with distal massed 984A,B and 994A,B). The Examiner finds, however, that Sashida discloses a device with a housing 142, a transducer assembly 156, 158, and a component (protrusions 152A-152F) configured to enable permanent shock-proofing of the assembly beyond that which results from damping. Final Act. 6. According to the Examiner, the impact protection provided by Sashida’s spacers 152A-152F “exceeds protection offered by some lesser degree of damping.” Id. (citing Sashida 5:54-6:2, Appeal 2021-003856 Application 15/336,910 6 6:20-42, 14:28-52). The Examiner concludes that it would have been obvious to provide the shock-proofing component of Sashida in Andersson’s housing, “because Sashida et al. teaches the shock-proofing component protects the piezoelectric transducer assembly from damage due to an impact load.” Id. Regarding independent claim 9, Appellant argues, inter alia, that the Examiner’s proposed combination of Andersson and Sashida includes only a piezoelectric actuator and not a seismic mass, and therefore does not meet the claim limitation of a component configured to enable permanent shock- proofing of a transducer-seismic mass. Appeal Br. 109. The Examiner responds that “Anderson explicitly teaches actuator (920) includes both a piezoelectric transducer and a seismic mass as shown in Figure 9 and described in paragraph [0062]. Thus actuator (920) constitutes a ‘transducer-seismic mass assembly’ as claimed.” Ans. 11. The Examiner is correct regarding the disclosure of Andersson. We are not persuaded that this finding by the Examiner contains error. Appellant also argues that providing Sashida’s protrusions 152A- 152F with Andersson’s piezoelectric elements 900A, 900B would “snap the piezoelectric components off every time [Andersson’s housing 125] was handled.” Appeal Br. 116. According to Appellant, a piezoelectric bender does not move much during vibration and, therefore, Sashida’s protrusions 152A-152F “would have to be really close” to Andersson’s piezoelectric elements 900A, 900B, such that “the range of movement that would be expected of [Andersson’s housing 125] relative to [its piezoelectric elements 900A, 900B] would be far more than the close distance,” causing the elements 900A, 900B to break when contacting the protrusions. Id. at 117. Appeal 2021-003856 Application 15/336,910 7 Appellant contends that “even a minor movement of [Andersson’s housing 125] relative to [its piezoelectric elements 900A, 900B] would cause [Sashida’s protrusions 152A-152F] to strike the piezo and flex the piezo beyond its breaking point.” Id. Appellant’s reasoning relies on an assertion that Andersson’s housing is the same housing supported by a spring taught by Ahsani. See Appeal Br. 111-116. We understand Appellant’s argument to be directed to whether there is a rational basis for combining Andersson and Sashida. The Examiner responds that Appellant’s “allegation that the housing supported by a spring taught by Ahsani is identical to the housing of Andersson is not factually supported in the cited art.” Ans. 12. Thus, the Examiner is saying that the alleged detrimental effects of adding Sashida’s protrusions to Andersson are based on a configuration of Andersson’s housing, and perhaps housing-piezo relation, that is not established with sufficient evidence. Regarding Appellant’s contention that a skilled artisan would not insert Sashida’s spacers into Andersson’s housing with a 1mm spacing between the transducer and the spacers astaught by Sashida, the Examiner responds that, inter alia, the proper test is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Id. (citing In re Keller, 642 F.2d 413 (CCPA 1981)). The Examiner contends that “Sashida teaches including spacers in a protective arrangement within a housing [, which] confers the benefit of providing impact and shock protection to a piezoelectric transducer against to damage from an impact load.” Id. Appellant summarizes the Examiner’s position as follows: “So if the person of ordinary skill in the art recognized that the modification would Appeal 2021-003856 Application 15/336,910 8 make the product worse, that is irrelevant according to the Examiner.” Reply Br. 4. This argument is not persuasive of Examiner error, because the Examiner is not saying negative results are irrelevant, but rather that the facts underlying the argument of negative results are not established with sufficient evidence. See Ans 12. Further, Appellant has not provided sufficient evidence that Andersson employs the same housing as Ahsani, and therefore has not provided sufficient evidence that employing Sashida’s protrusions 152A- 152F with Andersson’s piezoelectric elements 900A, 900B would “snap the piezoelectric components off every time [Andersson’s housing 125] was handled” (Appeal Br. 116). We decline to rely on attorney argument to establish this fact. Regarding whether there is a rational basis for combining Andersson and Sashida, we consider the following teachings of the references. Andersson discloses a bone conduction device 100 having a housing 125 coupled to a skull 136. Andersson’s Figure 1 appears the same as Ahsani’s Figure 1 and, while this may imply some structural similarity in their housings to the skilled artisan considering both references, this does not provide sufficient evidence that the housings of Ahsani and Andersson are structurally the same, in that the figures provide essentially no detail as to the actual structure. Andersson, is primarily concerned with what is inside the housing, disclosing various piezoelectric element embodiments as shown in its Figures, including unimorph (Figs. 2A, 2B), bimorph (Figs. 3A, 3B), multilayer bimorph (Figs. 4A-4D), and partitioned (Fig. 5). Andersson also discloses the addition of mass to the piezoelectric elements to allow them to “generate sufficient force to vibrate a recipient’s skull.” Andersson ¶ 55. Appeal 2021-003856 Application 15/336,910 9 Various mass configuration embodiments are disclosed in Andersson’s Figures 6-9. Regarding Andersson’s Figure 9, relied on by the Examiner in the rejection, mass components 984A,B and 994A,B are provided at distal ends of piezoelectric elements 900A,B, respectively. Andersson’s various piezo-mass assembly embodiments would reside in its housing 125, and Andersson acknowledges that the piezoelectric elements will deflect (see Andersson ¶ 65), but is not concerned with the amount, or result, of such deflection within its housing 125. Sashida is directed to providing “shock resistance” for piezoelectric vibrators. Sashida 2:36-40. Sashida discusses that, in prior art devices, “[w]hen an impact load is applied to the piezoelectric vibrating body, an excessive stress is applied to the piezoelectric vibrating plates,” which “may destroy the piezoelectric elements.” Id. at 2:12-14. Specifically, Sashida states that contact between adjacent piezoelectric plates, or contact between a piezoelectric plate and its enclosure “leads to destruction of the piezoelectric elements.” See id. at 2:20-22. To prevent such destruction, Sashida proposes mounting “amplitude limitation means” between an enclosure 142 and piezoelectric vibrating plates 156, 158, and between adjacent piezoelectric vibrating plates 156, 158 to suppress large amplitudes, mitigate stress applied to the piezoelectric elements, and prevent damage. See Sashida 3:5-9. Sashida states that “shock resistance can be improved because damage due to collision between . . . piezoelectric vibrating plates and due to collision between each piezoelectric vibrating plate and the enclosure can be prevented.” Id. at 3:10-14. Sashida’s “amplitude limitation means” includes spacers 32A,B and 34A,B (see Fig. 1B) of “soft material” that “forcibly suppress the Appeal 2021-003856 Application 15/336,910 10 amplitude to prevent the piezoelectric vibrating plates 16 and 24 from exhibiting large amplitudes.” Sashida 5:54-62. Sashida’s amplitude suppression is achieved by “presetting the sizes and installation positions of the spacers 32A, 32B, 34A, and 34B.” Id. at 6:25-28. Regarding Figure 9A, relied on by the Examiner in the rejection, Sashida discloses that spacers 152A-F, “made of a resilient material similar to that of the spacers 32A, 32B, 34A, and 34B” are formed on an inner surface of enclosure 142 “in positions where they restrict the amplitudes of the piezoelectric vibrating plates 156 and 158.” As evidence of piezoelectric element destruction prevention, Sashida summarizes the result of applying a 3000G force to the embodiments of its Figures 1-4, concluding that supporting the piezoelectric plates at both ends is “effective in improving . . . impact resistance.” Id. at 9:4-52. Considering these teachings of the references, we determine that a rational basis exists for the Examiner’s reason for combining Andersson and Sashida. Sashida teaches providing amplitude limitation means such as spacers 32A,B and 34A,B (see FIG. 1B) or 152A-152F (see FIG. 9A) that are made of “soft material” and placed in various positions within the housing to suppress piezoelectric element vibration amplitude. See Sashida 5:54-62, 6:25-28, 9:4-52. In the absence of evidence supporting Appellant’s position that a skilled artisan would believe providing spacers in Andersson’s housing would “snap the piezoelectric components off every time [Andersson’s housing 125] was handled” (Appeal Br. 116), the Examiner’s reasoning has a rational basis. We discern no error in the Examiner’s obviousness rejection of independent claim 9. We sustain the rejection of independent claim 9. Appeal 2021-003856 Application 15/336,910 11 Claims 10 and 11 Claim 10 depends from claim 9 and recites that “the permanent shock- proofing” recited in claim 9 “is a result of the component being configured to automatically at least partially decouple a vibratory path extending from the transducer-seismic mass assembly to the housing upon the housing experiencing a G force above a certain level.” Claim 11 depends from claim 10. The Examiner finds this to be disclosed by the combination of Andersson and Sashida. Final Act. 6-7; Ans. 13-14. Lacking an explanation of where such decoupling resides in the combination of Andersson and Sashida, we do not sustain the rejection of claims 10 and 11. Claim 12 Claim 12 depends from claim 9 and recites that “the permanent shock- proofing is a result of the component being configured to enable the counterweight to strike an interior of the housing upon subjecting the housing to a G force that would otherwise break the transducer-seismic mass assembly in the absence of the shock-proofing.” The Examiner finds this disclosure in the proposed combination, apparently considering Sashida’s spacers 152A-152F to be a part of its housing. However, because Sashida specifically states that its shock resistance comes from preventing collision between its piezoelectric vibrating plates and its enclosure (Sashida 3:10- 14), and Sashida’s enclosure appears to us to be its housing, the Examiner’s finding on this limitation contains error. We decline to find that protrusions designed to prevent contact with an enclosure are also a portion of the enclosure. We do not sustain the rejection of claim 12. Appeal 2021-003856 Application 15/336,910 12 Claim 14 Claim 14 depends from claim 9 and recites a piezoelectric bender of the transducer-seismic mass assembly being “springingly clamped within the housing.” The Examiner acknowledges that the combination of Andersson and Sashida proposed in the rejection of independent claim 9 does not include the “springingly” limitation, but finds that the embodiment of Sashida’s Figures 2A-2B includes springing clamping using resilient material 42. Final Act. 8. The Examiner proposes to add this material 42 to the combination of Andersson and Sashida, because Sashida teaches that “the spacers 152A-F of Figure 9 and the resilient material 42 of Figures 2A- B are suitable alternative configurations of a permanent shock-proofing assembly.” Id. at 9. It is unclear to us, however, how disclosure of the configurations as alternatives provides a reason to combine the configurations. For this reason, we do not sustain the rejection of claim 14. Claim 15 Claim 15 depends from claim 9 and recites the transducer-seismic mass assembly including a piezoelectric bender “surround[ing] a core of the housing” and the component being “configured such that portions of the piezoelectric bender that are directly adjacent the core move in a direction parallel to a longitudinal axis of the core when the piezoelectric bender is subjected to a force greater than ten Newtons in a direction parallel to the longitudinal direction, thereby permanently shock-proofing the assembly.” The Examiner finds, regarding the proposed combination of Andersson and Sashida, that Andersson’s actuator 920 includes a piezoelectric bender 900A surrounding a core 992 of its housing 125, and Sashida’s protrusions 152A-F are “configured such that portions of the piezoelectric bender Appeal 2021-003856 Application 15/336,910 13 [900A] that are directly adjacent the core move in a direction parallel to a longitudinal axis of the core [992] when the piezoelectric bender [900A] is subjected to a force greater than ten Newtons in a direction parallel to the longitudinal direction.” Final Act. 9. Appellant argues that Andersson’s housing has no core. Appeal Br. 136 (“Andersson never uses the word core.”). Appellant continues that “Andersson does not show a housing relative to element 992” and “any housing is going to be completely detached from element 992 save for a spring.” Id. Appellant further argues that “the ordinary and customary meaning of a core of the housing means that it is a core of the housing.” Id. at 136-37. Andersson’s element 992 is described in its paragraph 62 as follows: “Piezoelectric elements 900 are connected to one another by interconnector 992, and a coupling 980 extends from piezoelectric element 900B.” Because the Examiner has not explained how Andersson’s interconnector 992 is a core of its housing 125, the Examiner has not established prima facie evidence. We do not sustain the rejection of claim 15. Claims 24, 25, and 27 Independent claim 24 recites, inter alia, a method wherein a “component of a medical device prosthesis including a piezoelectric bender” is “configured to experience an acceleration of 30Gs in the first mechanical state in both directions normal to a plane of extension of the piezoelectric bender and subsequently operate in the first mechanical state.” Like the findings regarding claim 9, the Examiner finds that Andersson discloses a component 920 of a medical device prosthesis including a piezoelectric bender 900A. Final Act. 9. The Examiner Appeal 2021-003856 Application 15/336,910 14 acknowledges that Andersson’s component 920 is not “configured to experience an acceleration of 30Gs in the first mechanical state in both directions normal to a plane of extension of the piezoelectric bender and subsequently operate in the first mechanical state.” Id. at 9-10. The Examiner finds, however, that Sashida discloses a device component (shown in Fig. 9A) with a piezoelectric bender 156, wherein “the component is configured to experience an acceleration of 30Gs in the first mechanical state in both directions normal to a plane of extension of the piezoelectric bender (156) and subsequently operate in the first mechanical state.” Id. at 10 (citing Sashida 5:54-6:2, 6:20-42, 9:11-14, Table 1, 14:28-52). The Examiner reasons that it would have been obvious to modify the component 920 of Andersson to include the shock protecting spacers 152A-152F of Sashida to “protect[] the piezoelectric transducer assembly from damage due to an impact load of greater than 30 G.” Id. Appellant traverses the rejection of claim 24 for at least the same reasons that claim 9 is traversed. Appeal Br. 174. According to Appellant, a “30G acceleration would cause the housing to move well beyond the breaking point of the piezoelectric bender, and it was not obvious to do this.” Id. Appellant also contends that the rejection “is hindsight reasoning.” Id. Appellant further contends that whether Andersson’s piezoelectric bender will handle a 30G shock requires speculation. See id. (“how does one know that the piezoelectric bender of Andersson . . . will handle that shock”). We initially note that the claim requires a piezoelectric component “configured to experience” a 30G shock and still operate. Not a piezoelectric component that has been proven to experience a 30G shock and still operate. Our findings regarding the teachings of Andersson and Sashida Appeal 2021-003856 Application 15/336,910 15 are set forth above. In addition, we note that Sashida’s shock resistance and destruction prevention afforded by its amplitude limitation means is described, in part, via a description and table setting forth results of applying a 3000G force to the embodiments of its Figures 1-4, which explains that supporting the piezoelectric plates at both ends is “effective in improving . . . impact resistance.” See Sashida 9:4-52. The import of Sashida’s destruction prevention and shock resistance would be understood by a skilled artisan to include operability of the elements after shock application. For these reasons, and the reasons explained above regarding claim 9, we are not apprised of error in the Examiner’s findings and conclusion that Sashida discloses a method comprising obtaining a medical device component with a piezoelectric bender, the component being “configured to experience an acceleration of 30Gs” and still be able to operate. We sustain the rejection of independent claim 24. Claim 25 Claim 25 depends from claim 24 and recites the piezoelectric bender floating in the housing while the component operates. The Examiner finds this disclosure in Andersson. See Final Act. 10. Lacking an explanation from the Examiner as to how “floating” can be interpreted such that Andersson’s bender “floats,” we do not sustain the rejection of claim 25. Claim 27 Claim 27 depends from claim 24 and recites the piezoelectric bender encompassing a core of the housing and being “slidably retained to the core.” The Examiner finds that disclosure in Andersson. See Final Act. 11. Lacking an explanation from the Examiner as to, inter alia, how slidable Appeal 2021-003856 Application 15/336,910 16 retention can be interpreted such that Andersson’s bender is slidably retained in a housing core, we do not sustain the rejection of claim 27. Rejection III: Claim 13 - Andersson, Sashida, and Cho Claim 13 depends from claim 9. Appellant makes no argument that claim 13 is patentable over Andersson, Sashida, and Cho if claim 9 is not patentable over Andersson and Sashida. Thus, for the reasons explained above regarding claim 9, we sustain the rejection of claim 13. Rejection IV: Claims 16-18 and 35 - Ahsani and Andersson Independent claim 16 recites, inter alia, a bone conduction device with a transducer-seismic mass assembly that “is configured to translate in its entirety within the housing when the housing is closed.” The Examiner finds that Ahsani discloses a bone conduction device with a housing 342 and a transducer-seismic mass assembly 350, the transducer-seismic mass assembly 350 being configured to translate in its entirety within the housing 342 when the housing is closed. Final Act. 12 (citing Fig. 3, ¶¶ 29, 34). The Examiner acknowledges that Ahsani does not teach the transducer-seismic mass assembly including a piezoelectric component, but finds that Andersson discloses a bone conduction device comprising a housing 125 and a transducer-seismic mass assembly 920 including a piezoelectric component 900A. Id. at 12-13. Appellant argues that the Examiner erred in finding that Ahsani discloses a transducer-seismic mass assembly that “is configured to translate in its entirety within the housing when the housing is closed,” because Ahsani’s housing is disclosed to be open. See Appeal Br. 189-192. Appeal 2021-003856 Application 15/336,910 17 The Examiner responds that claim 16 “does not positively require the housing is closed” and, if Ahsani’s housing were closed, “the transducer- seismic mass assembly would still be permitted to vibrate to its fullest extent, or ‘translate in its entirety’, within the housing cavity.” Ans. 25. We agree with Appellant that Ahsani’s housing 342 is not closed. Furthermore, even if the claim does not positively recite a closed housing, the claim still recites that the vibration assembly must be “configured to translate in its entirety within the housing when the housing is closed.” The Examiner provides no findings or reasoning supporting a determination that Ahsani’s vibration assembly 350 is so configured. The functional language of claim 16 cannot simply be read out of the claim, nor can mere conclusory speculation be used to determine that the prior art could perform claimed function. Under In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014), discussed by both Appellant and the Examiner, it is not permitted to simply ignore the functionality defined in the “configured to” limitation. Solely for this reason, prima facie obviousness of independent claim 16 - and its dependent claims 17, 18, and 35 - has not been established. Rejection V: Ahsani, Andersson, and Karamuk - Claim 26 Method claim 26 depends from claim 24 and recites the piezoelectric bender being “at least indirectly sandwiched between at least two springs.” The Examiner finds these springs in Karamuk’s Figure 6, contending that Karamuk’s springs 37 “are compressible in opposite directions to enable the transducer (1) to move within the housing.” Final Act. 14. The Examiner proposes to modify Andersson and Sashida to sandwich the bender between Karamuk’s springs 37 to protect “the transducer in the event of impact or shock, desirable for use in a hearing aid.” Id. (citing Karamuk ¶¶ 2, 37, 55). Appeal 2021-003856 Application 15/336,910 18 Appellant argues that this rejection is “completely the work of . . . hindsight.” Appeal Br. 178. We are inclined to agree with Appellant that the Examiner provides insufficient reasoning, because the Examiner does not explain, and we are unable to readily discern, how Karamuk’s cushion/leaf springs 37 would be combined with Andersson and Sashida in a manner that would result in the claimed sandwiching. We do not sustain Rejection V. Rejection VI: Ahsani, Andersson, and Miller - Claim 30 Method claim 30 depends from claim 24 and recites subjecting an implantable component of “an active transcutaneous bone conduction device” to an acceleration of at least 100Gs, and then “implanting the component in the recipient” thereafter. The Examiner finds that Andersson teaches attaching the component to a recipient, but not subjecting the component to an acceleration of 100Gs first. Final Act. 15. The Examiner finds that these steps, however, are obvious over accidentally dropping the component prior to its attachment. Id. Appellant gives numerous reasons why no one would implant Andersson’s “percutaneous bone conduction device in a human.” Appeal Br. 183. Appellant also provides numerous reasons why a surgeon would not implant a component that has been subject to 100G acceleration, or even subject the component to a 100G acceleration. Id. at 185-188. Appellant’s arguments are not persuasive. Appellant’s Specification treats dropping of an implant onto an operating room floor as a known cause of “exemplary failure mode,” and states that Appellant’s teachings are “directed towards avoiding such a scenario” rather than embracing implant dropping as an aspect of their invention. Thus, dropping of an implant is Appeal 2021-003856 Application 15/336,910 19 known. The claim does not require a step of purposefully dropping the implant. We discern nothing non-obvious about dropping an implant and then implanting the implant, as intended, following such a known drop. We sustain Rejection VI. Rejection VII: Ahsani, Andersson, and Westerkull - Claim 31 Claim 31 depends from claim 9 and recites the housing being “completely implanted in a recipient underneath skin of the recipient.” The Examiner finds this limitation in Westerkull’s housing, concluding that it would have been obvious to modify Andersson and Sashida to make the housing implantable and “such that the housing is completely implanted beneath the skin of the recipient as taught by Westerkull, because Westerkull teaches fully implanting a bone conduction device” to ensure direct contact with “the skull bone to facilitate vibratory transmission while avoiding undesirable skin infections commonly experienced with patients having an externally positioned bone conduction device with a skin-penetrating mount.” Final Act. 16 (citing Westerkull ¶¶ 3, 4). Appellant argues that “simply modifying the housing does not make a device that one of skill . . . would implant in a human.” Appeal Br. 147, 150-163. While this may be true, the Examiner has established Westerkull discloses implantation of an implantable device. Given Westerkull’s disclosure of an implantable vibratory device and the implantation thereof, we are simply not persuaded that skilled artisan would not implant an implantable housing. While a skilled artisan may have reservations about the implantability of certain aspects of the combined device of Andersson and Sashida, Appellant’s allegations to this effect are unsupported by evidence that establishes that the aspects would cause the skilled artisan to Appeal 2021-003856 Application 15/336,910 20 reject, out of hand, implanting such a device. We decline to rely on attorney argument on these points. For this reason, we discern no error in the Examiner’s findings and conclusions underlying Rejection VII. We sustain Rejection VII. Rejection VIII: Ahsani, Andersson, and Ahsani - Claim 34 Claim 34 depends from claim 9 and recites “enablement of permanent shock-proofing of the assembly beyond that which results from damping is also beyond that which would result from portions of the transducer-seismic mass assembly being stopped by contact, direct or otherwise, by the housing, due to bending of the piezoelectric component.” The Examiner finds that Ahsani discloses this limitation because its travel limit apparatus 360 is configured to enable permanent shock-proofing of its vibrating actuator 350 “beyond that which results from damping . . . [and] beyond that which would result from portions of the [vibrating actuator 350] being stopped by contact, direct or otherwise, by the housing, due to bending of the” vibrating actuator 350. Final Act. 17 (citing Ahsani Fig. 3, ¶ 29). According to the Examiner, Ahsani’s “[t]ravel limit apparatus 360 prevents damage to the actuator 350 and spring [344] from excessive force applied to the housing by limiting the extent of movement of the housing relative to the coupling apparatus 340 and the actuator 350, and prevents contact between the vibratory actuator 350 and the housing 342.” Id. (citing Ahsani ¶¶ 40, 42, 43). It is unclear to us, however, how Andersson, Sashida, and Ahsani would be combined such that Ahsani’s travel limiting apparatus and Sashida’s protrusions would perform the claimed function. While this may Appeal 2021-003856 Application 15/336,910 21 be possible, it is not readily apparent to us or adequately explained by the Examiner. Solely for this reason, we do not sustain Rejection VIII. Conclusion We have carefully considered every argument set forth in the extensive briefing provided by Appellant, and we have additionally carefully considered the oral arguments provided on Appellant’s behalf. For the reasons explained above, we affirm the Examiner’s rejection in part as specified in the table below. Appeal 2021-003856 Application 15/336,910 22 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 6- 8, 32, 33 103 Ahsani 1, 2, 4, 6- 8, 32, 33 9-12, 14, 15, 24, 25, 27 103 Andersson, Sashida 9, 24 10-12, 14, 15, 25, 27 13 103 Andersson, Sashida, Cho 13 16-18, 35 103 Ahsani, Andersson 16-18, 35 26 103 Andersson, Sashida, Karamuk 26 30 103 Andersson, Sashida, Miller 30 31 103 Andersson, Sashida, Westerkull 31 34 103 Andersson, Sashida, Ahsani 34 Overall Outcome 9, 13, 24, 30, 31 1, 2, 4, 6- 8, 10-12, 14-18, 25-27, 32-35 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). AFFIRMED IN PART