Bernd Edler et al.

Patent Trials and Appeals Board

Jan 10, 2020

12067222 - (D) (P.T.A.B. Jan. 10, 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.
12/067,222 09/29/2008 Bernd Edler 50501.66 8686
72372 7590 01/10/2020
SCHOPPE, ZIMMERMANN , STOCKELER & ZINKLER
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
WEHRHEIM, LINDSEY GAIL
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
01/10/2020 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):
ADeschere@kbiplaw.com
USPTO@KBIPLAW.COM
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BERND EDLER, ANDREAS BUECHNER,
WALDO NOGUEIRA, and FRANK KLEFENZ
____________________

Appeal 2018-003133
Application 12/067,222
Technology Center 3700
____________________

Before: CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and
BRENT M. DOUGAL, Administrative Patent Judges.

DOUGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a final rejection of
claims 38–60. 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(a). Appellant identifies the real party in interest as Fraunhofer-
Gesellschaft zur Foerderung der angewandten Forschung e.V. Appeal Br. 2.
Appeal 2018-003133
Application 12/067,222

2
CLAIMED SUBJECT MATTER
The claims are directed to devices for generating a control signal for a
cochlear implant, related methods, and systems. Claims 38, 50, 56, and 58–
60 are independent. Claim 38, reproduced below, is illustrative of the
claimed subject matter:
38. A device arranged to generate a combination signal based on
an audio signal, comprising:
a provider arranged to analyze the audio signal, to provide
signal parameters based on the audio signal which are adapted to
control a cochlear implant and which are implemented to
generate a representation of the audio signal by the cochlear
implant; and
a signal combiner arranged to combine the audio signal
and the signal parameters provided by the provider based on the
audio signal to thereby obtain the combination signal in which
the audio signal and the signal parameters are combined; wherein
the combination signal comprises both the audio signal
itself, which is for reproduction for a person with a healthy
hearing system, and also the signal parameters, which are
adapted to control the cochlear implant, such that the
combination signal can be reproduced for persons with
unimpaired hearing and also for persons with a cochlear implant.

Appeal Br. 20 (Claims Appendix).

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Blamey
Sacha
Seligman
Chung
US 2003/0171786 A1
US 2005/0033384 A1
US 2005/0187592 A1
US 2005/0209657 A1
Sept. 11, 2003
Feb. 10, 2005
Aug. 25, 2005
Sept. 22, 2005

Appeal 2018-003133
Application 12/067,222

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REJECTIONS
Claim 50 is rejected under 35 U.S.C. § 112, second paragraph as
being indefinite.
Claims 38, 39, 46–51, 55, 56, 58, and 59 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Chung and Sacha.
Claims 40–45, 52–54, and 60 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chung, Sacha, and Blamey.
Claim 57 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Chung, Sacha, and Seligman.

OPINION
35 U.S.C. §112
Independent claim 50 includes: “A device arranged to generate a
combination signal in which an audio signal and signal parameters are
combined, the combination signal comprising an audio signal and signal
parameters.” The Examiner rejects claim 50 as indefinite for introducing
“an audio signal and signal parameters” twice. Final Act. 2. The Examiner
states: “It is unclear if these are both reciting the same or different audio
signal and signal parameters.” Id.
Appellant argues that “one skilled in the art would have readily
understood the features and elements included in the preamble of
Appellant’s claim 50.” Appeal Br. 18. Appellant further argues that the
“specific relationship and correspondence between the audio signal and the
signal parameters” is clear and would be understood by one of skill in the
art. Id.
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Application 12/067,222

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However, Appellant’s argument does not address the Examiner’s
concern: whether the claim requires one or two different groups of the audio
signal and the signal parameters. The Specification and Appellant’s
arguments imply that there is a single group of the audio signal and the
signal parameters, where the claim recites two groups. Because the claim
introduces the audio signal and the signal parameters twice we agree that the
claim is unclear as to which audio signal and the signal parameters is being
referenced where. For this reason, we sustain the indefiniteness rejection of
claim 50.

35 U.S.C. § 103(a)
Claim 38 requires “a signal combiner arranged to combine the audio
signal and the signal parameters provided by the provider based on the audio
signal” where “the combination signal can be reproduced for persons with
unimpaired hearing and also for persons with a cochlear implant.” Each of
the independent claims re quires similar limitations.
The Examiner relies on the combination of two different embodiments
of Chung to find that Chung suggests a single signal which can be used to
“to provide either an acoustic output or the output to the [cochlear implant]
stimulator 13.” Ans. 4; see also Final Act. 3–5. The Examiner finds that
Sacha teaches a signal combiner to combine the audio signal and the signal
parameters. Final Act. 5. The Examiner determines that it would have been
obvious to provide Sacha’s “signal combiner arranged to combine the audio
signal and the signal parameters” in Chung’s modified system as “significant
gains can be obtained by the patient via more effective assistive hearing.”
Id.
Appeal 2018-003133
Application 12/067,222

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Appellant argues that Sacha does not teach a combination signal
including both the audio signal and the signal parameters. Appeal Br. 13–
15. Rather, Sacha teaches two different signals, one “producing sound”
through a speaker, and the other providing “electrical stimulation through
the electrode array.” Id. at 14.
The Examiner responds that “Sacha is relied on to show it was known
in the art to include a signal combiner to yield the combination signal
above.” Ans. 4. The Examiner cites to Sacha for teaching that “[p]ortions
of the original audio signal are provided to each of the speaker assembly and
the electrode array. Therefore, Examiner considers Sacha to be drawn to
creation of a combination signal and its use.” Id. at 5. The Examiner
considers the claims to be so broadly worded that as long as the prior art
teaches a single signal, at some point in the process, that can be used to
create two different signals, an audio signal and signal parameters to control
a cochlear implant, it is sufficient. Id.
Though we agree that the claims are broadly worded, they include
specific limitations which are not shown to be taught by the prior art in the
Examiner’s rejection. In particular, showing that the original signal can be
processed and can then be used to create an audio signal or signal parameters
to control a cochlear implant is not the same as combining the audio signal
with signal parameters based on the audio signal. The Examiner has not
shown that the prior art teaches a signal combiner as required by claims 38,
58–60 or a “device arranged to generate a combination signal in which an
audio signal and signal parameters are combined” as required by claim 50,
or finally a method including “combining the audio signal and the signal
Appeal 2018-003133
Application 12/067,222

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parameters which are provided based on the audio signal” as required by
claim 56. For these reasons, we do not sustain the rejections of the claims.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
References/Basis Affirmed Reversed
50 112, ¶ 2 Indefinite 50
38, 39, 46–51,
55, 56, 58, 59
103(a) Chung, Sacha 38, 39, 46–51,
55, 56, 58, 59
40–45, 52–54, 60 103(a) Chung, Sacha, Blamey 40–45, 52–54, 60
57 103(a) Chung, Sacha, Seligman 57
Overall Outcome 50 38–49, 51–60

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