ADVANCED BIONICS AG et al.

Patent Trials and Appeals Board

Jul 27, 2020

15568469 - (D) (P.T.A.B. Jul. 27, 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.
15/568,469 10/21/2017 Jeryle L. Walter 2000-148 (15-00004-01) 1031
67074 7590 07/27/2020
HENRICKS SLAVIN LLP
ADVANCED BIONICS AG
PO Box 341689
Austin, TX 78734
EXAMINER
FLORY, CHRISTOPHER A
ART UNIT PAPER NUMBER
3792
MAIL DATE DELIVERY MODE
07/27/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERYLE L. WALTER and SUNG JIN LEE
Appeal 2020-001785
Application 15/568,469
Technology Center 3700
Before JAMES CALVE, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
HILL, 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 1–4, 6–18, and 20–24. Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 Advanced Bionics
AG. Appeal Br. 3.
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Application 15/568,469

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BACKGROUND
Claims 1, 13, and 22 are independent. Claim 1, reproduced below,
illustrates the claimed invention, with certain limitations italicized:
1. A cochlear implant, comprising:
a cochlear lead including a plurality of electrodes;
an antenna;
a stimulation processor operably connected to the antenna and
to the cochlear lead; and
a magnet apparatus, associated with the antenna, including a
case and a plurality of magnetic material particles, which define
mesh sizes that range from 50 μm to 500 μm, packed within the
case with no more than 30% free space in such a manner that
adjacent magnetic material particles are in contact with one
another and are also movable relative to one another.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Zimmerling US 2011/0264172 A1 Oct. 27, 2011
Ekvall US 2013/0053874 A1 Feb. 28, 2013
REJECTIONS
I. Claims 1–4, 6–18, and 20–24 stand provisionally rejected on
the ground of non-statutory double patenting as unpatentable over claims 1–
11 and 24–27 of co-pending Application No. 15/568,470 (“the ’470
Application”). Final Act. 5. This application issued as U.S. Patent No.
10,300,276 B2 on May 28, 2019.
II. Claims 1–4, 6–18, and 20–24 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Zimmerling and Ekvall. Final Act. 7.
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OPINION
Double Patenting
The Examiner finds that the pending claims are not patentably distinct
from those of the ’470 Application, because the claims of each application
relate to a cochlear implant “comprising . . . and a magnet apparatus that
includes a case and magnetic particles packed within the case such that they
are in contact with one another and movable relative to one another.” Final
Act. 5. According to the Examiner, the only difference is that “claim 1 of
the ’470 application includes the limitation of a divider, present in dependent
claim 12 of the instant application and the routinely optimizable parameters
of particle size and packing ratio.” Id.
Appellant argues that a Terminal Disclaimer, filed with the Appeal
Brief, overcomes the double patenting rejection. Appeal Br. 18. The
Examiner does not acknowledge the Terminal Disclaimer in the Answer, or
formally withdraw the double patenting rejection. Further, the Examiner
does not note whether the Terminal Disclaimer has been accepted and
recorded.
Until such time as the Terminal Disclaimer is reviewed, accepted and
recorded, we summarily sustain the Double Patenting rejection.
Obviousness
Regarding independent claim 1, the Examiner finds, inter alia, that
Zimmerling discloses a cochlear implant including “a magnet apparatus
associated with the antenna, including a case in which the magnet is freely
rotatable in response to an external magnetic field.” Final Act. 7 (citing
Zimmerling ¶¶ 6, 9, 29, 34). According to the Examiner, although
Zimmerling does not expressly disclose its magnet including plural
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“magnetic particles,” Zimmerling does consider using polyhedral shapes
such as disc/coin shapes, a cylindrical beam, a rectangular beam or “any
shape as long as magnetization maintains a desirable orientation.” Id. at 7–8
(citing Zimmerling ¶¶ 9, 36). The Examiner finds that Ekvall teaches using
“a collection of freely floating magnetic elements contained within a case”
and “allow[ing] the magnetic elements to rotate freely with respect to each
other to align with a strong external magnetic field, such as an MRI
scanner.” Id. at 8. The Examiner contends that Ekvall discloses that the
magnetic elements and housings can be any size, any shape, and any number
“as long as the elements are able to float and rotate within the casing.” Id.
(citing Ekvall ¶ 5). The Examiner concludes that it would have been
obvious to modify Zimmerling with Ekvall’s plural magnetic particles
“packed in a case,” because such a modification would “provide the
predictable results . . . of allowing the magnetic particles of any size being
packed into the case to be freely rotatable relative to one another . . . to
better align with a strong external magnetic field such as . . . an MRI.” Id. at
8–9.
The Examiner then finds that, although the combined teachings of
Zimmerling and Ekvall do not expressly disclose a particle mesh size of 50
μm to 500 μm, “or a particular packing within the case with no more than
30% free space,” Ekvall’s “magnetic elements, taken to read on the claimed
magnetic material particles, can be made in any shape and size so long as
they can still float and rotate within the casing.” Id. at 9 (citing Ekvall ¶¶ 3,
5, 35, 53). The Examiner concludes that it would have been obvious to
modify the combination of Zimmerling and Ekvall “with the claimed
particle size ranges and packing percentage, [because] where the general
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conditions of a claim are disclosed in the prior art, discovering the optimum
or workable ranges involves only routine skill in the art” (id. (citing In re
Aller, 220 F.2d 454 (CCPA 1955))), and/or because prima facie obviousness
“exists where the claimed ranges and prior art ranges do not overlap but are
close enough that one skilled in the art would have expected them to have
the same properties” (id. (citing Titanium Metals Corp. of Am. v. Banner,
778 F.2d 775 (Fed. Cir. 1985))).
In the Advisory Action dated March 25, 2019 (“Advisory Act.”), the
Examiner asserts that Ekvall’s paragraph 3 establishes that
magnetic particle sizing and shaping is a careful consideration
to be made, and that if such sizing and shaping is not optimized
to allow the implanted magnetic particles to align themselves
with an external magnetic field it can be detrimental to the
functioning of the device by creating undesirable stress in
patient body tissues and further could result in the implant
functioning poorly or not at all whether in the presence of the
external magnetic field or not.
Advisory Act. 2. The Examiner further asserts that Ekvall’s
shapes and sizes must “allow the magnetic elements to float or
rotate within the casing” and “float or align with whatever
external magnetic field is strongest.” Clearly, this is not an
open-ended declaration that any imaginable shape and size
would be permissible, and inarguably establishes that there is a
finite set or range of possible sizes and shapes that a POSITA
would understand to allow . . . the magnetic elements to float,
rotate and align with external magnetic fields.
Id. The Examiner then asserts that Ekvall’s paragraph 52
further clarifies that the magnetic elements can take on any
shape only to the extent that it does not prevent the magnetic
elements from rotating. Here again Ekvall acknowledges that
magnet shape, size and positioning relative to other magnetic
elements is a result-effective variable insomuch as it effects the
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ability of the magnetic elements to rotate within a housing
effectively.
Id. at 2–3.
The Examiner contends that, taken as a whole, “Ekvall clearly places
constraints as to a finite range of sizes, shapes and densities to the magnetic
particles which would be acceptable,” because “it expressly discloses that
shape and size can be selected only to the extent that it does not prevent the
magnetic elements from rotating, floating and aligning with the external
magnetic field for the desired medical function.” Id. at 3. Thus, the
Examiner concludes, a skilled artisan would understand from Ekvall that
particle size and shape are results-effective variables. Id.; see Ans. 4–8.
Appellant argues claims 1–4, 6–12, and 22–24 as a group. Appeal Br.
7, 14. We select claim 1 as representative. Claims 2–4, 6–12, and 22–24
stand or fall with claim 1.
Appellant argues that prima facie obviousness has not been
established, because the Examiner “failed to establish that magnetic material
particle ‘mesh size’ and ‘% free space’ are recognized . . . result-effective
variables that would have been obvious to optimize through routine
experimentation.” Appeal Br. 7–8 (citing In re Aller, 220 F.2d at 456
(“[W]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.”); E.I. DuPont De Nemours & Co. v. Synvina C.V., 904
F.3d 996, 1006 (Fed. Cir. 2018) (listing ways to rebut a routine
experimentation obviousness rejection); Appeal Br. 11.
As Appellant correctly establishes, “Ekvall repeatedly indicates the
size and number of the magnetic elements does not matter so long as the
magnetic elements can rotate into alignment with the MRI magnetic field.”
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Appeal Br. 10–11 (citing Ekvall ¶¶ 5, 35, 38, 53). Appellant contends that
the term “any” means “an indefinite or unlimited amount or number,” and a
skilled artisan “would not describe a result-effective variable as something
that is ‘indefinite or unlimited amount or number.’” Id. at 10. Further,
Appellant argues, Ekvall does not provide a single example of either
magnetic element size or free space percentage. Id.
Appellant disagrees with the Examiner’s assertion that Ekvall
establishes size, shape, and density as result effective variables, arguing that
“when Ekvall is read as a whole, a skilled artisan would not have determined
that the magnetic element size is a result-effective variable,” and would have
appreciated that “Ekvall is silent as to free space percentage, which is
[an]other claimed variable that the Office Action determined is obvious to
optimize.” Id. at 14.
The Examiner cites In re Applied Materials, 692 F.3d 1289 (Fed. Cir.
2012) as holding that the proof required to find that a variable is result
effective is not high. Ans. 4–5 (citing Applied Materials, 692 F.3d at 1297).
In Applied Materials, the Federal Circuit appears to be instructing us that, if
a variable is even recognized as relevant to a desired property, or if a
relationship between the variable and the result is at all evidenced, it is
enough to establish the variable as result effective. See Applied Materials,
692 F.3d at 1297 (“A recognition in the prior art that a property is affected
by the variable is sufficient to find the variable result-effective.”).
Regarding the claimed free space percentage, the Examiner finds that
Ekvall’s paragraphs 36 and 52 disclose a relationship between, or relevance
of, relative positioning of the magnetic elements to the ability of the
magnetic elements to rotate. Ans. 7, 8.
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Appellant replies that the Examiner’s reliance on paragraph 36 is
misplaced, because Ekvall’s discussed spacing “is not the space between
multiple magnetic elements located within a single housing,” but instead “is
the distance between the magnet elements in adjacent housings,” which
distance “dictates in part the amount of force required to separate the
housings and move [Ekvall’s] device from the closed state to the open state.”
Reply Br. 6 (emphasis omitted). According to Appellant, Ekvall discusses
this “space” or distance in detail in its paragraphs 57 through 59 with
reference to Figures 7A and 7B. Id.
Ekvall’s paragraph 36 states that “the space between each magnetic
element determine[s] a specific amount of force that is required to separate
the magnetic elements (e.g. by overcoming the magnetic attraction between
the magnetic elements),” and that “the maximum separation that should be
allowed between the magnetic elements should not be so great that the
magnetic attraction between the magnetic elements at that separation
distance is insufficient to restore the medical implant to a closed state.”
According to the Examiner, these disclosures evidence that “the space
between magnetic elements (i.e. the argued amount of tree space) [is]
results-effective” in determining the “specific amount of force required to
separate adjacent magnetic elements.” Ans. 8.
We agree with Appellant that the Examiner’s reliance on paragraph 36
is misplaced. Ekvall’s device is disclosed for, e.g., surrounding tissue such
as an esophagus needing opened and closed states that allow passage of
things like food through the tissue and then restrict the tissue to prevent acid
reflux. Ekvall ¶¶ 31–32. Ekvall’s magnetic elements are used to bias the
devices to a closed state, but forces can overcome the magnetic attraction
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bias to allow food passage. Id. Ekvall’s paragraph 36 appears to discuss
embodiments having a single magnetic element in each housing. See id.
¶ 36. The “space between” the magnetic elements in the paragraph is
relevant to the opening and closing of the device, rather than the tendency of
the magnetic elements to float within their respective housings. Id. The
“space between each magnetic element determine[s] a specific amount of
force that is required to separate the magnetic elements” and pass from a
closed state to an opened state (e.g., wherein food can pass through an
esophagus). Id. Thus, the spacing between magnetic elements is tied to bias
force and opened/closed states of the device, rather than magnet rotation.
We agree with Appellant that Ekvall’s paragraph 36 does not establish that
spacing between magnetic elements in a housing is a result effective
variable.
Ekvall, however, provides two embodiments having multiple
magnetic elements in a single housing. See Ekvall Figs. 5, 9B; ¶¶ 54, 70.
For each of these embodiments, Ekvall states that the magnetic elements
may “rotate freely” in the housing. Ekvall ¶¶ 54, 70. Thus, the decision
before us is whether Ekvall’s statement that the multiple magnetic elements
in a single housing may “rotate freely” establishes free space in the housing
as a result effective variable. Following the Federal Circuit’s instruction in
Applied Materials, we determine that Ekvall’s statement that the multiple
magnetic elements in a single housing may “rotate freely” establishes free
space in the housing as a result effective variable. Ekvall’s statement about
freely rotating magnetic elements appears to us to recognize that free space
in the housing is relevant to a magnetic element rotation that is needed for
alignment with an external magnetic field such as an MRI. See Ekvall ¶ 4.
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In addition, Ekvall’s disclosure establishes a relationship between housing
free space and magnetic element rotation. Under Applied Materials, this
recognition and relevance is enough to establish free space amount or
percentage as a result effective variable. See Applied Materials, 692 F.3d at
1297 (“A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.”).
Likewise, under Applied Materials, Ekvall’s disclosure that “[t]he
magnetic elements and/or housings can be of any . . . size so long as the
magnetic elements are allowed to float or rotate within the casing” (Ekvall
¶ 5) appears to recognize that magnetic element size is relevant to magnetic
element rotation that is needed for alignment with an external magnetic
field, and establishes a relationship between magnetic element size and
rotation. Under Applied Materials, this recognition and relevance is enough
to establish the magnetic element size as a result effective variable.
For the above reasons, we sustain the obviousness rejection of claim
1. Claims 2–4, 6–12, and 22–24 fall with claim 1.
Appellant makes the same arguments regarding claims 13–18, 20, and
21. Appeal Br. 15–17. For the reasons explained above, we are not
persuaded by Appellant’s argument. We sustain the obviousness rejection of
claims 13–18, 20, and 21.
CONCLUSION
The Examiner’s rejections are affirmed as to claims 1–4, 6–18, and
20–24.
More specifically:
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–
18, 20–
24
Double Patenting 1–4, 6–18,
20–24

1–4, 6–
18, 20–
24
103 Zimmerling, Ekvall 1–4, 6–18,
20–24

Overall
Outcome
1–4, 6–18,
20–24

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED