Cochlear Limited

Patent Trials and Appeals Board

Jul 21, 2021

2021000038 (P.T.A.B. Jul. 21, 2021)

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.
15/159,335 05/19/2016 Joris WALRAEVENS 5441-091U 1058
111614 7590 07/21/2021
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
07/21/2021 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 JORIS WALRAEVENS,
MARCEL VOSSENBERG, and RISHUBH VERMA
Appeal 2021-000038
Application 15/159,335
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
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11, 18–21, and 24–32.2 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 Cochlear Limited.
Appeal Br. 2.
2 Claims 22 and 23 have been cancelled. Appeal Br. 238.
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BACKGROUND
Appellant’s invention relates to a hearing prosthesis. Claims 1, 10,
18, and 26 are independent. Claim 1, reproduced below, illustrates aspects
of the claimed invention:
1. A device comprising:
a hearing prosthesis configured to provide mechanical
stimulation to two separate portions of a barrier between a middle
ear and an inner ear in an alternating manner to evoke a hearing
percept.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Adams US 5,997,466 Dec. 7, 1999
Grasso US 2012/0220818 A1 Aug. 30, 2012
Koskowich US 2013/0303835 A1 Nov. 14, 2013
REJECTIONS3
I. Claims 1–6, 10, 11, 18–21, 24, 25, and 31 stand rejected under
35 U.S.C. § 102(a)(1) as anticipated by Grasso.
II. Claims 1–6, 10, 18–21, and 31 stand rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Adams.
III. Claims 7–9 and 32 stand rejected under 35 U.S.C. § 103 as
unpatentable over Grasso and Koskowich.
IV. Claims 7–9, 11, and 32 stand rejected under 35 U.S.C. § 103 as
unpatentable over Adams and Koskowich.

3 The rejection under 35 U.S.C. § 101 has been withdrawn. Ans. 3.
Similarly, the indefiniteness rejection was withdrawn. Advisory Act. of
Nov. 1, 2019; Ans. 3.
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V. Claims 24–30 stand rejected under 35 U.S.C. § 103 as
unpatentable over Adams and Grasso.
ANALYSIS
Appellant devotes a substantial portion of each of the briefs to (1)
instructing us that, during patent examination, an examiner is charged with
applying the broadest reasonable interpretation (“BRI”) in construing the
claims, and (2) explaining what does and does not constitute the BRI. See,
e.g., Appeal Br. 42–64; Reply Br. 3–11. Appellant is correct that the BRI is
the standard to be applied by the Examiner. Appellant is mistaken, however,
about what is required of an examiner in applying the BRI. By comparing
the prior art to the language of the claims and setting forth the basis of the
rejection, an examiner implicitly indicates his or her understanding of the
BRI. “There has never been a requirement for an examiner to make an on-
the-record claim construction of every term in every rejected claim and to
explain every possible difference between the prior art and the claimed
invention in order to make out a prima facie rejection.” In re Jung, 637 F.3d
1356, 1363 (Fed. Cir. 2011).
Appellant also references In re Smith repeatedly as setting forth an
examiner’s burden, which we understand to be In re Smith International,
Inc., 871 F.3d 1375 (Fed. Cir. 2017). This case does not, however, (1)
pertain to an examiner’s burden in setting forth a BRI of the claim terms
explicitly, or (2) describe any requirement of an examiner to make an on-
the-record claim construction. Rather, Smith criticizes the Board for relying
on a claim construction that was unreasonably broad within the specific facts
of that case. Id. at 1382. Appellant is reminded that each case must be
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decided on its own merits. See In re Gyurik, 596 F.2d 1012, 1016 (CCPA
1979).
An appellant contesting an examiner’s claim construction should
identify the claim term(s) in question, explain why the appellant believes the
claim construction is wrong, and provide an alternative construction based
on the evidence of record. Merely asserting that the claim construction is
insufficiently spelled-out or wrong does not apprise us of reversible error.
For the most part, Appellant has not explained why the challenged claim
constructions are wrong. Instead, Appellant has generally asserted that the
Examiner has applied the wrong claim construction to essentially every
claim. See, e.g., Appeal Br. 45. Appellant argues that “[u]ntil the USPTO
puts forth the broadest reasonable interpretation of the claim phrases at
issue, on the record, and explains how that was developed per MPEP 2111,
and provides support for why whatever was used is actually the BRI, no case
of unpatentability can be established.” Id. at 48–49; 7–15 (identifying the
issues). As noted above, however, there is no requirement that the Examiner
create such an express record. See Jung, 637 F.3d at 1363. Thus,
Appellant’s repeated general arguments that the Examiner has failed to set
forth a claim construction do not apprise us of error.
Regarding Appellant’s argument that In re Giannelli, 739 F.3d 1375
(Fed. Cir. 2014) “forbids the ‘capable of’ standard,” we disagree. Appeal
Br. 76, 147; Reply Br. 34 (emphasis omitted). The court in Giannelli opined
that the phrase “adapted to” (which was recited in the claim(s) at issue) can
mean “configured to” or “capable of” –– the facts of the case dictating how
the phrase “adapted to” should be considered. Giannelli, 739 F.3d at 1379.
The claims in Giannelli were determined to require more than a device that
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is capable of performing the claimed function, because the written
description of the application described aspects of the “structural attributes”
of the device that made it particularly suited for the claimed pulling
function; for example, relative position of the handles and “biomechanical
alignment of the user’s wrist and forearm during performance of the
exercise.” Id. at 1379–80. To the contrary, the prior art was disclosed as
having a structure allowing movement that “simulates as natural a human
musculoskeletal outward pushing motion as possible while maintaining
proper biomechanical alignment of the user’s joints.” Id. at 1380 (citations
omitted). Thus, the functional language was tied to certain structural
attributes that the Examiner did not find were present in the prior art.
The extensive arguments presented in Appellant’s briefing have not
explained how Appellant’s written description identifies structural attributes
of the claimed device that cause the functional language to be indicative of
structure. Thus, we are not persuaded that the Examiner’s “capable of”
analysis is improper given the facts of this case. Appellant has not
established that the Examiner erred in applying the “capable of” standard.
Further, regarding the many conclusory arguments presented by
counsel, we note that they do little to tip the scale in Appellant’s favor. Here
the Examiner’s position is supported by evidence of record, and therefore,
attorney argument and conclusory statements are entitled to little probative
value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Huang,
100 F.3d 135, 139–40 (Fed. Cir. 1996) (Arguments of counsel cannot take
the place of factually supported objective evidence).
In addition, we note that arguments that the portions of a prior art
reference cited by the Examiner fail to provide direct support for a claim
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limitation miss the mark. While we prefer that an examiner precisely
indicate where support exists for a finding, absence of such precision is not
necessarily fatal. A reference is prior art for all that it teaches, not just the
portions cited by the Examiner. A persuasive challenge to an examiner’s
prior art analysis considers the prior art teachings as a whole, compares these
teachings to the claimed invention, and carefully explains the differences,
while optimally providing evidence along the way..
Rejection I; Anticipation by Grasso – Claims 1–6, 10, 11, 18–21, 24, 25, 31
Claims 2, 3, 6, and 31
Regarding claim 2, the Examiner finds that Grasso discloses a device
“configured to apply mechanical stimulation to a round window (402) of the
cochlea and an oval window of the cochlea in an alternating manner, thereby
evoking the hearing percept.” Final Act. 5. According to the Examiner, the
“configured to” language is functional, and Grasso’s transducers 501, 502
are “capable of performing the claimed function [because they] may be
implanted to stimulate a round window, which may subsequently produce a
corresponding movement in an oval window, thereby providing stimulation
to the round and oval windows in an alternating manner to evoke a hearing
percept, [0006] and [0025]).” Id. at 5–6 (emphasis added).
Appellant’s arguments regarding anticipation based on Grasso “start
with [dependent] claim 2, as the issues with claim 2 illuminate the many
problems with the rejections elsewhere.” Appeal Br. 65. According to
Appellant, claim 2 recites mechanical stimulation of both the round window
and the oval window, and Grasso’s oval window is ossified/seized up and
spaced from the stimulated round window. Id. at 65–66.
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The Examiner responds that “claim 2 does not require the device
directly mechanically engag[ing] both the round window and the oval
window in order to apply mechanical stimulation to both membranes,”
instead requiring only “a device that is configured such that it is able to
provide mechanical stimulation, directly or indirectly, to both membranes in
an alternating manner.” Ans. 8. The Examiner contends that Grasso
addresses stimulation of the oval window by stating “because the cochlear
fluid is incompressible, a movement of the round window membrane 202
requires a corresponding movement of the oval window membrane 201” in
patients without an ossified oval window membrane. Id. (citing Grasso ¶ 9).
Thus, the Examiner reasons, stimulating the round window creates a
pressure wave in the cochlear fluid causing a deformation of the oval
window. Id. (citing Grasso ¶ 6). Further, the Examiner notes, Grasso
discloses “two transducers (501, 502) that alternatingly deform portions of
the round window, which would result in correspondingly alternating
deformation of the oval window membrane in a patient without an ossified
oval membrane.” Id. at 8–9 (citing Grasso ¶¶ 6, 9, 25) (internal citation
omitted).
We agree with the Examiner that claim 2 does not require that the
device directly mechanically engage both the round window and the oval
window to apply mechanical stimulation thereto. In addition, we are not
persuaded that ossification of the oval window is relevant to whether
Grasso’s device is configured to perform the claimed function. However,
we decline to extend the claimed “configured to” language to cover
incidental stimulation that may occur due to proximity, even given Grasso’s
disclosure that cochlear fluid incompressibility would cause movement of
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the round window membrane 202 to create a corresponding movement of the
oval window membrane 201. Such stimulation seems to be beyond the
scope of the claimed device being “configured to” cause such mechanical
stimulation, and is somewhat speculative. We are not convinced that a
device that may perform a function incidentally is truly configured to
perform that function. For this reason, we are not persuaded that Grasso
anticipates claim 2. Claims 3 and 31 depend from claim 2. Therefore, we
do not sustain the rejection of claim 2, 3, or 31 as anticipated by Grasso.
Dependent claim 6 depend from claim 1 via claim 5 and recites,
similarly to claim 2, that the mechanical stimulation provided by the hearing
prosthesis is to both the round window and the oval window. Thus, for the
reasons explained above regarding claim 2, we do not sustain the rejection of
claim 6 as anticipated by Grasso.
Claim 4
Regarding claim 4, Appellant argues that the Examiner’s rejection
fails to state a BRI on the record, and that, if the Examiner’s findings
regarding Grasso are “sufficient to establish a case of anticipation, we
submit that the following is sufficient to rebut such: the BRI of claim 4 has
not been considered in a manner consistent with the specification in the prior
art is not covered by the BRI of such.” Appeal Br. 100–101.
As explained above, there is no requirement that the Examiner make
an on-the-record claim construction and, by comparing the prior art to the
language of the claims and setting forth the basis of the rejection, an
examiner implicitly indicates his or her understanding of the BRI.
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Appellant’s conclusory argument is not indicative of Examiner error
in finding that Grasso discloses the elements of claim 4. We sustain the
rejection of claim 4.
Claim 5
Appellant argues that the rejection of claim 5 is insufficient because
the Examiner has not made an on-the-record claim construction. Appeal Br.
102. As explained above, this allegation is not persuasive of Examiner error
and does not relieve Appellant from a requirement to explain why the
Examiner’s findings regarding the prior art teachings are in error.
Appellant also traverses “the BRI of claim 5 vis-á-vis the traversal of
claim 3 below regarding any allegation that the normal functioning of a
cochlea corresponds to what we are claiming, and thus incorporate that
traversal by reference herein.” Appeal Br. 103. We assume Appellant is
referring here to the arguments made on pages 122 to 127 of the Appeal
Brief. We decline to consider these arguments, as claim 5 has not been
established to have the same scope as claim 3.
Appellant makes additional arguments regarding claim 5 on pages 128
to 129 of the Appeal Brief, namely that “Grasso does not disclose a push-
pull embodiment in combination.” It is not clear, however, particularly
because claim 5 does not recite push-pull and has not been established to
have the same scope as claim 3, how this argument establishes patentability
of claim 5. We, therefore, sustain the rejection of claim 5.
Claims 10 and 11
Independent claim 10 recites a hearing prosthesis with at least one
actuator and a force transfer apparatus “configured to transfer force from the
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at least one actuator to two separate locations of a beginning of a cochlea in
a reciprocating manner.” The Examiner finds that Grasso discloses actuators
(transducers 501, 502) and “a force transfer apparatus (Figure 5, drive face,
503 and 504) configured to transfer force from the [actuators] (501, 502) to
two separate locations of a beginning of a cochlea in a reciprocating
manner.” Final Act. 7 (citing Grasso ¶¶ 14, 25) (emphasis omitted). The
Examiner also asserts that “[c]laim 10 does not require force from a single
actuator [being] transferred to two separate locations.” Id. at 29.
Appellant argues that Grasso is “configured so that each actuator only
applies a force to the separate locations.” Appeal Br. 105. Appellant
appears to be arguing that claim 10 requires force from a single actuator
being transferred to two separate locations. It is not clear to us, however,
that claim 10 requires force from a single actuator being transferred to two
separate locations. If Appellant wishes the scope of claim 10 to require
force from a single actuator being transferred to two separate locations, then
claim 10 should clearly recite this scope. We are not persuaded that any
findings made by the Examiner contain error, and we sustain the rejection of
claim 10 as anticipated by Grasso.
This same analysis holds true for claim 11, which does not require
force from a single actuator being transferred to two separate locations. See
Appeal Br. 108–110. Further, regarding Appellant’s argument that claim 11
does not “recite that the actuator utilizes a fluid to transfer the force,” but
rather that “the transfer of force is from the actuator to the two separate
locations via a fluid,” it is unclear how this distinction renders the
Examiner’s finding erroneous. We therefore, likewise, sustain the rejection
of claim 11.
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Claims 18–21, 24, and 25
Appellant argues that claims 18 and 19 stand or fall with claim 2.
Appeal Br. 92, 99. Appellant has not established that either claim depends
from claim 2 or has the same scope as claim 2. For this reason, we are not
persuaded that claims 18 and 19 stand or fall with claim 2. Appellant also
argues that the Examiner erred in not explicitly setting forth a BRI for claim
18. Appeal Br. 95–96. As explained above, the Examiner need not
explicitly set forth a BRI on the record to establish prima facie obvious.
Independent claim 18 recites a hearing prosthesis having at least one
actuator and “configured to apply a first force to a round window” and a
“second force to an oval window” so that “deformation of the round window
due to the respective applied force is balanced by . . . a substantially opposite
deformation of the oval window, and deformation of the oval window due to
the respective applied force is balanced by . . . a substantially opposite
deformation of the round window.” Claim 19 depends directly from claim
18. The Examiner finds this disclosure in Grasso, including the “configured
to” functionality. Final Act. 8 (citing Grasso ¶¶ 6, 14, and 25).
Appellant argues, regarding claim 18, that the cited paragraphs of
Grasso disclose nothing about the claimed force/deformation balancing.
Appeal Br. 94. According to Appellant, all of the forces in Grasso are
applied to the round window. As explained above, we do not extend the
claimed “configured to” language to cover incidental force/deformation
balancing that may occur due to proximity of the round and oval windows,
even given Grasso’s disclosure that cochlear fluid incompressibility would
cause movement of the round window membrane 202 to create a
corresponding movement of the oval window membrane 201. For this
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reason, we do not sustain the Grasso anticipation rejection of claim 18, or of
claims 19–21, 24, and 25 that depend therefrom.
Claim 1
Independent claim 1 does not specifically recite the oval and round
windows, instead reciting providing “mechanical stimulation to two separate
portions of a barrier between a middle ear and an inner ear in an alternating
manner.” The Examiner finds this disclosure in Grasso. Final Act. 5
(internal citations omitted).
Appellant argues that the Examiner is making “an end run around
proper BRI implementation.” Appeal Br. 138. Appellant traverses the
Examiner’s BRI, but fails to explain why the claim construction is wrong, or
provide an alternative construction aligned with the evidence of record.
Appellant’s argument is, therefore, unpersuasive. We sustain the rejection
of claim 1 as anticipated by Grasso.
Rejection I - Conclusion
For the reasons explained above, we sustain the rejection of claims 1,
4, 5, 10, and 11 as unpatentable over Grasso. We do not sustain the rejection
of claims 2, 3, 6, 18–21, 24, 25, and 31.
Rejection II; Anticipation by Adams – Claims 1–6, 10, 18–21, and 31
Claim 1
The Examiner finds that Adams discloses “a hearing prosthesis
(Figure 9) configured to provide mechanical stimulation to two separate
portions of a barrier between the middle ear and the inner ear in an
alternating manner to evoke a hearing percept.” Final Act. 11 (emphasis
omitted). According to the Examiner, Adams’ “piezoelectric transducers
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140 and 145 apply stimulation via vibratory motion, and are capable of
applying stimulation in an alternating manner.” Id. (citing Adams 8:6–16).
Appellant argues that the Examiner is making “an end run around
proper BRI interpretation.” Appeal Br. 138. Appellant traverses the
Examiner’s interpretation of claim 1 without explaining why the Examiner’s
claim construction is wrong, or providing an alternative construction based
on the evidence of record. This argument is, therefore, not persuasive of
Examiner error.
Appellant next argues that nothing in the cited portion of Adams
discloses the claimed stimulation in an alternating manner, or “any control
element that controls both actuators.” Appeal Br. 140.
The Examiner responds that the piezoelectric transducers 140, 145 of
Adams’ Figure 9 are “responsive to a potential difference, or electrical input,
and converting the electrical input to mechanical vibration.” Ans. 15 (citing
Adams, Abstract; 5:59–61; 6:56–61; 8:17–22). Since Adams’ transducers
140, 145 “produce mechanical vibration in response to their respective
electrical input, the transducers of Adams are capable of applying
stimulation in the claimed alternating manner.” Id. at 15–16.
The Examiner has the better position. Adams discloses an
embodiment in Figure 9 having a transducer 140 in an oval window 55 and a
transducer 145 in a corresponding round window 65. See Adams 8:6–16.
Appellant is correct that a controller would seem to be needed for Adams to
be able to perform the claimed alternating stimulation via transducers.
Adams, however, discloses such a controller. Adams discloses input to a
controller in describing that “electrical signals . . . are provided . . . to an
electronics unit 271 of an implantable hearing aid for . . . processing.” See
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Adams 10:22–26. Adams’ transducers “receiv[e] an electrical input signal
from electronics unit 271.” See id. at 9:39–42. Adams discusses that its
transducers can “vibrate in concert in response to their input electrical
signals.” See id. at 8:39–44. Appellant is, thus, incorrect that Adams fails to
disclose a controller for its transducers. Appellant also does not
persuasively explain why Adams’ controller (processor 271) is not
configured to provide the claimed alternating stimulation.
For these reasons, we sustain the rejection of independent claim 1 as
anticipated by Adams.
Claim 3
Claim 3 recites the hearing prosthesis being “configured to apply a
push-pull stimulation to the round window” and the oval window, such that
“push stimulation to the round window is accompanied by a pull stimulation
to the oval window, and visa-versa.” The Examiner finds this disclosure in
Adams. Final Act. 11 (Adams’ “piezoelectric transducers 140 and 145 apply
stimulation via vibratory motion, and are capable of applying stimulation in
an alternating manner, col. 8, lines 6-16”)). The Examiner, thus, contends
that vibration in Adams is created by the claimed push-pull stimulation. We
discern no error in this contention by the Examiner. Further, as explained
above, Appellant has not explained why Adams’ controller 271 cannot
stimulate the transducers in an alternating manner.
Further, regarding Appellant’s contention that the Examiner is
improperly combining embodiments of Adams (Appeal Br. 162–163), we
disagree. While there are certainly circumstances where a skilled artisan
would not understand elements of one embodiment to apply to other
embodiments, Appellant has not established that this is the case for the
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Examiner’s findings regarding Adams. Particularly, we note that the
controller 271 disclosed in Adams, and the signals sent therefrom to cause
the transducers to vibrate, would be understood by a skilled artisan to be the
intended controller for stimulating the alternate transducer embodiments
presented.
Further, Appellant traverses the Examiner’s interpretation of claim 3
without explaining why the Examiner’s claim construction is wrong, or
providing an alternative construction aligned with the evidence of record.
Appeal Br. 163–164. This argument is, therefore, not persuasive of
Examiner error. We sustain the rejection of claim 3.
Claim 4
Claim 4 recites, inter alia, stimulation that deforms portions (e.g.,
windows), while permitting other portions to deform in a substantially
opposite manner. The Examiner finds this disclosure in Adams. Final Act.
12 (citing Adams 6:54–61 and 8:6–16).
Appellant argues that Adams discloses an actuator in each window,
“result[ing] in some form of resistance one the windows vis-á-vis how the
cochlea normally works,” because having actuators in each window will
prevent the windows from being permitted to move (i.e., deform in a
substantially opposite manner). Appeal Br. 167–168.
We are not persuaded by Appellant’s argument, because Adams’
Figure 9 does not disclose the transducers filling the entirety of the windows
in such a way that we understand movement to necessarily be restricted. We
sustain the rejection of claim 4.
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Claim 5
Claim 5 recites that the alternating manner of mechanical stimulation
deforms “during a first temporal period, a first portion of the two portions
while deforming the second portion of the two portions in a substantially
opposite manner,” and “during a second temporal period separate from the
first temporal period, deforms the second portion while deforming the first
portion in a substantially opposite manner.” The Examiner finds this
disclosure in Adams. Final Act. 13 (citing Adams 6:54–61 and 8:6–16).
Appellant argues that nothing in the cited portions of Adams discloses
“the stimulation deforming the first portion while also deforming the second
portion in a substantially opposite manner.” Appeal Br. 170.
The Examiner responds, in addressing the argument against claim 18
and relevant to this analysis, that Adams’ transducers are capable of
performing the claimed function of “applying stimulation in the claimed
substantially balanced, opposing manner given sufficient electrical input.”
Ans. 19.
As discussed above in our analysis of Grasso, a skilled artisan would
understand that cochlear fluid is incompressible, such that stimulating the
round window creates a pressure wave in the cochlear fluid causing a
deformation of the oval window. Given such an understandings of ear
anatomy, we agree with the Examiner that Adams’ transducers can apply
“stimulation in the claimed substantially balanced, opposing manner given
sufficient electrical input.” Ans. 19.
Appellant also challenges the Examiner’s lack of a formal BRI
without explaining why the claim construction is wrong, and without
providing an alternative construction aligned with the evidence of record.
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As explained above, this argument is not persuasive. We sustain the
rejection of claim 5.
Claim 6
Appellant makes no argument that claim 6 is patentable over Adams if
claim 3 is not patentable over Adams. Thus, for the reasons explained above
regarding claim 3, the rejection of claim 6 as anticipated by Adams is
sustained.
Claim 10
Appellant argues that the Examiner erred by not explicitly setting
forth a BRI for independent claim 10. Appeal Br. 176. Appellant also
argues that “[w]e require a force transfer apparatus that can transfer force
from at least one actuator. That is, if there is one, it must be able to do it to
the two locations,” and “we need to understand why this is ‘consistent with .
. . applicant’s original specification.’ This is an assertion that is not
supported with anything. The Examiner has not supported her position, and
thus the rejection cannot stand.” Id. (emphasis omitted).
As explained above, there is no requirement that the Examiner create
such an express BRI on the record. See Jung, 637 F.3d at 1363. Thus,
Appellant’s general attorney argument the Examiner has failed to set forth a
claim construction does not apprise us of error. The same holds true for
Appellant’s argument that the Examiner has failed to support her position,
which does not explain, or provide evidence, of why the Examiner’s finding
is incorrect. We sustain the rejection of claim 10.
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Claim 18
Independent claim 18 recites a hearing prosthesis having at least one
actuator and “configured to apply a first force to a round window” and a
“second force to an oval window” so that “deformation of the round window
due to the respective applied force is balanced by . . . a substantially opposite
deformation of the oval window, and deformation of the oval window due to
the respective applied force is balanced by . . . a substantially opposite
deformation of the round window.” The Examiner finds that Adams
discloses the limitations recited in independent claim 18. Final Act. 14.
Appellant argues that the Examiner erred by not explicitly setting
forth a BRI. Appeal Br. 178. Appellant also argues that (1) Adams
discloses nothing about the claimed force/deformation balancing, and (2) the
Examiner provides no support for the finding that Adams is capable of
performing the claimed force/deformation balancing. See id. at 178–180.
Appellant states:
To the extent that such a statement is sufficient to establish an
initial case of anticipation, we hereby counter with an equal and
opposite assertion that the prior art is not capable of applying a
push-pull stimulation to the round window and a pull-push
stimulation to the oval window, where the push stimulation to
the round window is accompanied by a pull stimulation to the
oval window, and visa-versa.
Id. at 180.
As explained above, there is no requirement that the Examiner create
an explicit BRI on the record. See Jung, 637 F.3d at 1363. Thus,
Appellant’s general argument the Examiner has failed to set forth a claim
construction does not apprise us of error. The same holds true for
Appellant’s argument that the Examiner has failed to support her position,
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which does not explain, or provide evidence, regarding why the Examiner’s
finding is incorrect, particularly since claim 18 does not recite “pull-push.”
We sustain the rejection of claim 18.
Claim 19
Claim 19 depends from claim 18 and recites “the hearing prosthesis is
configured to apply a third force to the oval window when the first force is
applied to the round window,” and “the hearing prosthesis is configured to
apply a fourth force to the round window when the second force is applied to
the oval window.” The Examiner finds this disclosure in Adams. Final Act.
14 (citing Adams 3:37–51, 6:54–61, 8:6–16).
Appellant argues that the Examiner is improperly combining different
embodiments of Adams “for at least the pertinent reasons detailed above
with respect to claim 3.” Appeal Br. 181. As set forth in our analysis of
claim 3 above, we are not persuaded by Appellant’s arguments.
Appellant also argues that the Examiner’s BRI “is not good,” because
Appellant is “not claiming the Sony Walkman,” but rather “a hearing
prosthesis . . . configured to apply forces . . . to the oval window and the
round window,” and “[i]t is impossible to construe claims 18 and 19
consistent with our specification and then refer to how the cochlea works in
normal operation.” Appeal Br. 182. This argument is not persuasive,
because it is conclusory and fails to provide sufficient explanation of
Examiner error.
Appellant next argues that, in Adams, there is no force application to
the round window during force application to oval window, and vice versa.
Appeal Br. 182. Appellant refers to arguments regarding claim 1 as an
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explanation for this position. Id. at 183. For the reasons explained above
regarding claim 1, we are not persuaded by this argument.
Appellant then argues that the Examiner is applying an incorrect
“‘capable of’ standard,” and has provided no evaluation or explanation of
why the prior art is capable of performing the claimed function. Appeal Br.
184–185. These arguments are not persuasive, because they are conclusory.
We sustain the rejection of claim 19.
Claim 20
Claim 20 recites that “the first and third forces have equal and
opposite magnitudes” and “the second and fourth forces have equal and
opposite magnitudes.” The Examiner finds this disclosure in Adams. Final
Act. 15 (citing Adams 3:37–51, 6:54–61, and 8:6–16, and referring back to
findings and reasoning regarding claims 18 and 19).
Appellant argues that the Examiner’s finding that Adams teaches the
force application and magnitudes is erroneous, because Adams’ actuators
being positioned in the round and oval windows “will result in some form of
resistance on[] the windows vis-á-vis how the cochlea normally works.”
Appeal Br. 186.
We are not persuaded by Appellant’s argument, because Adams’
Figure 9 does not disclose the transducers filling the entire windows in such
a way we understand would cause the alleged resistance on the windows.
Appellant also argues that Adams does not disclose the actuators
being “coordinated in any manner.” Appeal Br. 187. We disagree with
Appellant’s argument, because a skilled artisan would understand that
Adams’ actuators would be controlled in a coordinated manner by the
controller (electronics unit 271), given that Adams discusses that its
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transducers can “vibrate in concert in response to their input electrical
signals” from the electronic unit 271. Adams, 8:39–44.
Regarding Appellant’s contention that the Examiner is improperly
combining embodiments of Adams (Appeal Br. 187–188), we disagree. As
explained above regarding claim 3, while there are certainly circumstances
where a skilled artisan would not understand elements of one embodiment to
apply to other embodiments, Appellant has not explained why this is the
case for the Examiner’s findings regarding Adams. Particularly, we note
that Adams’ controller 271, which sends signals causing the transducers to
vibrate, would be understood by a skilled artisan to be the intended
controller for stimulating the alternate transducer embodiments disclosed
therein.
Appellant then argues that the Examiner is applying an incorrect
“‘capable of’ standard” and the Examiner has provided no evaluation or
explanation of why the prior art is capable of performing the claims
function. Appeal Br. 188–189. These arguments are not persuasive because
they are conclusory, and for the reasons explained above in our analysis of
Giannelli.
Claim 21
Claim 21 recites the hearing prosthesis being “configured to allow for
substantially free deformation of the round window” and the oval window.
The Examiner finds this disclosure in Adams. Final Act. 15 (citing Adams
3:37–51, 6:54–61, and 8:6–16, and referring back to findings and reasoning
regarding claims 18 and 19).
Appellant argues that the Examiner’s finding that Adams teaches the
“substantially free deformation” of the windows is erroneous, because
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Adams’ actuators being positioned in the round and oval windows “will
result in some form of resistance on[] the windows vis-á-vis how the cochlea
normally works.” Appeal Br. 186.
We are not persuaded by Appellant’s argument, because Adams’
Figure 9 does not disclose the transducers filling the entire windows in such
a way that “substantially free deformation” is understood by this panel to be
prevented. Further, it is unclear what aspects of the claimed design allow
the claimed substantially free deformation, and we therefore cannot compare
the structure of Appellant’s invention with that of Adams to see whether
structure necessary for substantial deformation allowance is missing. See
Spec. ¶ 86 (stating only that “[t]his is conceptually depicted with respect to
FIGs. 4C and 4D”).
Appellant then argues that the Examiner is applying an incorrect
“‘capable of’ standard” and the Examiner has provided no evaluation or
explanation of why the prior art is capable of performing the claims
function. Appeal Br. 190. These arguments are not persuasive because they
are conclusory, and for the reasons explained above in our analysis of
Giannelli.
Claim 31
Claim 31 recites stimulating each of the round and oval windows with
forces in opposite directions, and opposing phases. The Examiner finds this
disclosure in Adams. Final Act. 15–16 (citing Adams 6:54–61, 8:6–16).
Appellant traverses “the broadest reasonable interpretation” of the
claimed “configured to” language of claim 31, and asks “the USPTO to
state, on the record, the BRI of that claim phrase, and then explain how that
was developed pursuant to the requirements of MPEP 2111 and In re Smith
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and then detail how that covers the mere movement of the oval window in
the prior art.” Appeal Br. 192–193. As explained above, there is no
requirement that the Examiner create an express record of the BRI. See
Jung, 637 F.3d at 1363. Merely asserting that the claim construction is
insufficiently spelled-out or wrong does not apprise us of reversible error.
Appellant also argues that Adams lacks disclosure of a push-pull
stimulation. Appeal Br. 193.
As explained above, the Examiner finds this disclosure in Adams.
Final Act. 11 (Adams’ “piezoelectric transducers 140 and 145 apply
stimulation via vibratory motion, and are capable of applying stimulation in
an alternating manner, col. 8, lines 6-16”)). The Examiner, thus, contends
that vibration in Adams is created by the claimed push-pull, which are forces
exerted in opposing directions. We discern no error in this contention by the
Examiner. Further, as explained above, Appellant has not explained why
Adams’ controller 271 does not stimulate the transducers in an alternating
manner when they vibrate in concert.
Appellant contends that claim 31 recites that “the first [applied force]
direction is normal to the surface of the round window and . . . the second
[applied force] direction is normal to the surface of the oval window.” The
Examiner finds that Adams’ piezoelectric transducers are capable of
providing such a normal force direction “as they are piezoelectric bi-element
vibratory transducers.” Final Act. 15.
The Examiner has the better position, because Appellant has provided
no explanation or disclosure in the Specification or briefing regarding what
aspects of the invention allow the claimed force direction to be normal to the
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window surfaces, and why Adams sensors cannot provide such a normal
force direction. We sustain the rejection of claim 31.
Conclusion
We sustain the rejection of claims 1–6, 10, 18–21, and 31 as
anticipated by Adams for the reasons explained above.
Rejection III; Obviousness over Grasso and Koskowich- Claims 7–9 and 32
Appellant argues, generally, that “[t]he rejections of the various
dependent claims are based upon the above misapprehensions of the
allegedly anticipated claims, as [] detailed above.” Appeal Br. 196. This
generalized argument is unpersuasive of Examiner error.
Claim 7
The Examiner finds that Grasso discloses the limitations of claim 7,
including “an actuator (Figure 5, transducers, 501 and 502) ([0025]),”
except for the device including two fluid chambers and the actuator being
“configured to displace the fluid chambers.” Final Act. 16. The Examiner
finds, however, that Koskowich discloses “a transducer configured to
provide mechanical stimulation to a barrier between a middle ear and an
inner ear to evoke a hearing percept (abstract),” the transducer comprising
“an actuator (Figure 2, piezoelectric transducer assembly, 26) and a fluid
chamber (Figure 2, fluid cavity, 54),” the actuator 26 being “configured to
displace the fluid in the fluid chamber (54) to hydraulically transfer force
from the actuator (26) to the cochlea, thereby stimulating the cochlea
(abstract; [0026]; [0028]).” Id. at 16 (emphasis omitted). The Examiner
reasons that it would have been obvious to provide Adams’ transducer with
Koskowich’s “actuator displacing fluid in the fluid cavity . . . because
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Koskowich teaches the transducer provides improved performance ‘in
conveying the impression of sound to the inner ear of a subject’ with
reduced power consumption.” Id. at 16–17 (citing Koskowich ¶¶ 28
(discussing its “piezoelectric transducer membrane assembly 26 [improving]
performance and reduc[ing] power draw”), 39 (discussing improving
performance of its microactuator)).
Appellant generally argues that “Grasso discloses the [ossified] oval
window,” and “[n]o one would substitute the device of Koskowich in
Grasso, because that would defeat the purposes of the arrangement of
Grasso.” Appeal Br. 222. This conclusory argument is not indicative of
Examiner error.
Appellant challenges the Examiner’s reasoning and argues that the
combination of Adams and Koskowich is “essentially a section 102 rejection
utilizing multiple references.” Appeal Br. 222–226. Appellant contends that
the Examiner’s reasoning – that a skilled artisan would have considered the
proposed combination to reduce power consumption – is “an improperly
officially noticed finding of fact, if only because the [E]xaminer did not
specifically identify that she was taking official notice.” Id. at 226–227.
Appellant further argues that the Examiner relies on impermissible
hindsight. Id. at 227–228.
As explained below in our analysis of Rejection IV, which Appellant
addressed prior to Rejection III in the briefing, Koskowich explicitly
discloses its device improving performance and reducing power draw. See
Koskowich ¶¶ 28, 39. Given such disclosure, Appellant has not persuaded
us that the Examiner’s reasoning lacks a rational basis, as it comes directly
from Koskowich. Further, because the Examiner’s reasoning comes directly
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from Koskowich (see Koskowich ¶¶ 28, 39), it does not rely on
impermissible hindsight.
Appellant next argues that if “the Examiner is suggesting to use the
actuators of Koskowich where the actuators of Grasso are,” Grasso’s
embodiment of FIG. 5 requires two actuators, and its round window niche is
tiny, such that “there is not enough room to put two of the Koskowich
actuators therein. Would not work. Accordingly, the modification is not
enabled.” Appeal Br. 228 (citing In re Morsa, 713 F.3d 104 (Fed. Cir.
2013)).
The Examiner responds that “the test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference,” and the rejection of claim 7 states that
“‘[t]he modified device of Grasso et al. and Koskowich includes an
‘actuator’ (construed as two piezoelectric [transducer] membrane assemblies
26 [of Koskowich]) and two fluid chambers (construed as two fluid cavities
54’ [as shown in Koskowich])” and describes “the resultant structure of the
proposed modification” and a “description of the modification of Grasso in
view of Koskowich in the motivation statement itself.” Ans. 28; Koskowich
¶ 28 (“Placing the piezoelectric transducer membrane assembly 26 between
the back cavity 60 and the fluid cavity 54 allows the piezoelectric transducer
26a to directly drive the relatively incompressible fluid body 54a contained
in fluid cavity 54”).
Appellant has provided only attorney argument, unsupported by a
detailed explanation and/or evidence, that two piezoelectric transducer
membrane assemblies 26 of Koskowich could not be utilized in Grasso, and
it is not evident from the disclosures of Grasso and Koskowich that this is
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the case. For this reason, we are not persuaded by this argument on this
point, and we sustain the rejection of claim 7 as unpatentable over Grasso
and Koskowich.
Claims 8 and 9
Claim 8 recites the device being configured to hydraulically amplify
displacement of the actuator at locations where the device contacts the
cochlea. The Examiner finds this disclosure in Koskowich. Final Act. 17
(citing Koskowich ¶ 28 and the analysis of claim 7).
Appellant argues that there is nothing in Koskowich’s paragraph 28 or
the analysis of claim 7 about amplification. Appeal Br. 229.
The Examiner responds that
Since the modified device of Adams and Koskowich teaches
displacement of the actuator (26) is hydraulically transmitted to
the cochlea via fluid in cavity (54) (Koskowich, [0028]), the
structure of the prior art is capable of performing the claimed
function of hydraulic amplification of the actuator
displacement. Since the prior art structure is capable of
performing the claimed function, the prior art meets the claim.
Ans. 26.
Here, Appellant has the better position. While amplification may be a
known concept, the Examiner has provided no support for the finding that
Koskowich teaches a device that is configured to perform, or is capable of
performing, amplification. It certainly has not been established that every
actuator is configured to amplify. For this reason, we do not sustain the
rejection of claim 8 as obvious over Adams and Koskowich. Claim 9
depends from claim 8. Thus, for the same reasons, we do not sustain the
rejection of claim 9 as obvious over Adams and Koskowich.
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Claim 32
Claim 32 depends from claim 31, and recites the force transfer
apparatus being “configured to transfer force from the at least one actuator
to the two separate locations via fluid flow in the transfer apparatus.”
Appellant traverses the rejection of claim 32 “on the same grounds as we
traversed claim 10 regarding the at least one actuator. In this regard, these
claims rise and fall with claim 10 on this issue.” Appeal Br. 230–231.
Because we sustain the rejection of claim 10 above, we likewise sustain the
rejection of claim 32.
Conclusion
We sustain the rejection of claims 7 and 32 as unpatentable over
Grasso and Koskowich, but not the rejection of claims 8 and 9.

Rejection IV; Obviousness over Adams and Koskowich – Claims 7–9, 11, 32
Claim 7
The Examiner finds that Adams discloses the limitations of claim 7,
except for the device including two fluid chambers and the actuator being
“configured to displace the fluid chambers.” Final Act. 18. The Examiner
finds, however, that Koskowich discloses “a transducer configured to
provide mechanical stimulation to a barrier between a middle ear and an
inner ear to evoke a hearing percept (abstract),” the transducer comprising
“an actuator (Figure 2, piezoelectric transducer assembly, 26) and a fluid
chamber (Figure 2, fluid cavity, 54),” the actuator 26 being “configured to
displace the fluid in the fluid chamber (54) to hydraulically transfer force
from the actuator (26) to the cochlea, thereby stimulating the cochlea
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(abstract; [0026]; [0028]).” Id. (emphasis omitted). The Examiner reasons
that it would have been obvious to provide Adams’ transducer with
Koskowich’s “actuator displacing fluid in the fluid cavity . . . because
Koskowich teaches the transducer provides improved performance ‘in
conveying the impression of sound to the inner ear of a subject’ with
reduced power consumption.” Id. at 19 (citing Koskowich ¶¶ 28 (discussing
its “piezoelectric transducer membrane assembly 26 [improving]
performance and reduc[ing] power draw”), 39 (discussing improving
performance of its microactuator)).
Appellant argues that “the rejection is essentially a section 102
rejection utilizing multiple references” because the Examiner found “various
references that allegedly teach each element, and then declared it obvious to
combine because it would be good,” giving no thought “to the fact that the
references teach two separate arrangements or how actually one would
combine the two references.” Appeal Br. 213 (emphasis omitted). This
conclusory argument is not persuasive, because it fails to address the
Examiner’s proffered reasoning or persuade us that the reasoning lacks a
rational basis. We are also not persuaded by attorney argument that the
Examiner’s proposed combination would require drilling into the cochlea,
lacking evidence to establish that fact. Appellant provides additional
statements about (1) no one thinking about the combined elements of claim
7, (2) elegance, and (3) power consumption, which statements do not
amount to a coherent argument against the Examiner’s reasoning. Id. at
214–217.
Appellant “traverse[s] the [Examiner’s] assertion that the person of
ordinary skill in the art would recognize that the device of Koskowich would
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provide reduce power consumption relative to the device of Adams” because
“the record is completely devoid of any support or rationale for why this is
the case” and “the device of Adams is completely different from the device
of Koskowich.” Appeal Br. 217. While Appellant provides other reasons
why Koskowich uses its transducers, Appellant does not provide a
persuasive argument that a skilled artisan would not have considered the
proposed combination to reduce power consumption as reasoned by the
Examiner.
Appellant argues that the Examiner’s reasoning – that a skilled artisan
would have considered the proposed combination to reduce power
consumption – is “an improperly officially noticed finding of fact, if only
because the [E]xaminer did not specifically identify that she was taking
official notice.” Appeal Br. 217–218.
Koskowich specifically discloses its device improving performance
and reducing power draw. See Koskowich ¶¶ 28, 39. Given such
disclosure, Appellant has not persuaded us that official notice is required to
support the Examiner’s reasoning, as it comes directly from Koskowich.
Appellant also argues that if the proposed combination uses
Koskowich’s outer component “to push one of the windows, that would
certainly increase the amount of power consumption because now you are
moving the second [power] component and the window.” Appeal Br. 218.
This attorney argument is unsupported and not persuasive.
Appellant also argues that the rejection “is a clear example of the
forbidden hindsight reasoning.” Appeal Br. 218. Because the Examiner’s
reasoning comes directly from Koskowich (see Koskowich ¶¶ 28, 39), it
does not rely on impermissible hindsight.
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Claims 8 and 9
Claim 8 recites the device being configured to hydraulically amplify
displacement of the actuator at locations where the device contacts the
cochlea. The Examiner finds this disclosure in Koskowich. Final Act. 19
(citing Koskowich ¶ 28 and the analysis of claim 7).
Appellant argues that there is nothing in Koskowich’s paragraph 28 or
the analysis of claim 7 about amplification. Appeal Br. 220.
The Examiner responds that
Since the modified device of Adams and Koskowich teaches
displacement of the actuator (26) is hydraulically transmitted to
the cochlea via fluid in cavity (54) (Koskowich, [0028]), the
structure of the prior art is capable of performing the claimed
function of hydraulic amplification of the actuator
displacement. Since the prior art structure is capable of
performing the claimed function, the prior art meets the claim.
Ans. 26.
Here, Appellant has the better position. While amplification may be a
known concept, the Examiner has provided no support for the finding that
Koskowich teaches a device that is configured to perform amplification. It
certainly has not been established that every actuator is configured to
amplify. For this reason, we do not sustain the rejection of claim 8 as
obvious over Adams and Koskowich. Claim 9 depends from claim 8. Thus,
for the same reasons, we do not sustain the rejection of claim 9 as obvious
over Adams and Koskowich.
Claims 11 and 32
Claim 11 depends from claim 10. Claim 32 depends from claim 31.
Both claims recite the force transfer apparatus being “configured to transfer
force from the at least one actuator to the two separate locations via fluid
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flow in the transfer apparatus.” Appellant traverses the rejection of claim 11
and 32 “on the same grounds as we traversed claim 10 regarding the at least
one actuator. In this regard, these claims rise and fall with claim 10 on this
issue.” Appeal Br. 221. Because we sustain the rejection of claim 10 above,
we likewise sustain the rejection of claims 11 and 32.
Conclusion
We sustain the rejection of claims 7, 11, and 32 as unpatentable over
Adams and Koskowich, but not the rejection of claims 8 and 9.
Rejection V; Obviousness over Adams and Grasso – Claims 24–30
Claim 26
Independent claim 26 recites a method including, inter alia, applying
stimulation to the round and oval windows. The Examiner finds that Adams
discloses “a method (abstract), comprising” capturing sound energy and
applying stimulation to round and oval windows based on the captured
sound energy, the stimulations to the round and oval windows having
“substantially nonidentical bandwidths.” Final Act. 21–22 (citing Adams
8:12–16 (“A combined mechanical coupling bandwidth results at cochlea 60
from the superposition of the substantially nonidentical bandwidths
contributed by first and second piezoelectric transducers 140 and 145 at oval
window 55 and round window 65 respectively.”). The Examiner finds that,
although Adams does not disclose applying stimulations with an opposite
phase, Grasso teaches a stimulation method and applying stimulation in an
opposite phase. Id. at 22. The Examiner reasons that it would have been
obvious to modify Adams’ method “such that the first and second
stimulations are applied with an opposite phase as taught by Grasso, because
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Grasso teaches applying stimulations having an opposite phase permits the
cochlear membranes to accommodate the pressure wave generated by each
stimulation.” Id. at 22 (citing Grasso ¶¶ 6, 9, 23).
Appellant argues that “[w]e argued against this rejection and the
response to arguments presents disparate facts combined with stock
language that is not targeted to the facts at hand that effectively blows off
any Applicant argument about a rationale to combine.” Appeal Br. 197.
This argument is not indicative of Examiner error.
Appellant also argues that the cited portions of Adams disclose only
an apparatus and not a method. This argument is not persuasive because the
Examiner cites to the abstract of Adams, which specifically discloses a
method. Further, Adams is prior art for all that it teaches, rather than merely
the portions cited by the Examiner.
Appellant next argues that “there is no BRI of claim 26 on the
record,” and “the USPTO cannot come up with a BRI that meets the
requirements of proper claim examination that encompasses Grasso.”
Appeal Br. 198. As explained above, there is no requirement that the
Examiner create an express record of the BRI. See Jung, 637 F.3d at 1363.
Thus, this argument does not apprise us of Examiner error.
Appellant next argues that the Examiner’s proffered reason for
modifying Adams to have the opposite phase stimulation of Grasso “[i]s
[n]othing, and represents a section 102 rejection using multiple references.”
Appeal Br. 199 (emphasis omitted). To this end, Appellant argues that the
cited paragraphs of Grasso do not disclose stimulations having opposite
phases. Id. at 199–201. More specifically, Appellant contends that
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paragraph 9 of Grasso disparages the prior art, rather than teaching opposite
phases.
The Examiner responds that
Grasso states “because the cochlear fluid is incompressible, a
movement of the round window membrane 202 requires a
corresponding movement of the oval window membrane 201”,
for patients without an ossified oval window membrane
([0009]), thus a deformation of one membrane (round or oval)
of the cochlea creates a pressure wave in the cochlear fluid that
results in a deformation of the other membrane (round or oval)
([0006]). The embodiment of paragraph [0023], depicted in
Figure 4A and further elaborated upon in Figure 4B describes
inducing stimulation of opposite phase. Accordingly, Grasso
teaches the benefit of applying stimulations in opposite phase
permits the cochlear membranes to accommodate the pressure
wave generated by each stimulation.
Ans. 22 (emphasis omitted).
Appellant replies that Grasso’s oval window membrane is ossified,
and therefore “accommodates nothing.” Reply Br. 120. Appellant argues
that Grasso’s round window can “flex at a location away from the location
where the force is applied - to the round window,” and is the only membrane
that “accommodates anything.” Id.
The Examiner has the better position. We decline to limit the
combined teachings of Adams and Grasso to an implant for an ear with an
ossified oval window. Given a device used for an ear with a non-ossified
oval window, we discern no error in the Examiner’s finding that Grasso
teaches that stimulations in opposite phase permits the cochlear membranes
to accommodate the pressure wave generated by each stimulation.
Appellant also argues that Grasso uses a device permitting one portion
of the round window to flex in an opposite direction because it is directed to
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dealing with an ossified oval window. Appeal Br. 200. This argument does
not apprise us of Examiner error.
Claims 27 and 28
Claim 27 recites the stimulations being “respective pushing
stimulations on the round and oval windows.” Claim 28 recites the
stimulations being “respective pulling stimulations on the round and oval
windows.” The Examiner finds this disclosure in Adams’ “pushing or
pulling on the round and oval windows” since Adams’ transducers 140, 145
“are piezoelectric bi-element transducers that vibrate.” Final Act. 22.
According to the Examiner, “vibratory motion of each transducer 140 and
145 results in pushing and pulling forces applied to the round and oval
windows,” and the stimulations “are construed as the force applied from one
deformation of each transducer, which is a push or a pull.” Id. (citing
Adams 5:49–63, 8:6–16).
Appellant argues that Adams does not disclose pushing and pulling,
because Adams’ “force is normal to the bonding plane” and “left-to-right in
FIG. 9.” Appeal Br. 204–205. Appellant’s argument is not persuasive,
because it is unclear why Adams “amplify[ing] a piezoelectric action in a
direction approximately normal to the bonding plane” (Adams 5:57–59)
precludes the claimed pushing and pulling.
Appellant also argues that the Examiner has not cited any passages
disclosing a method. Appeal Br. 206. As explained above, at least Adams’
abstract discloses a method.
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Claim 29
Claim 29 recites third and fourth stimulations, and the relative phases
of the first through fourth stimulations. The Examiner finds this disclosure
in Adams. Final Act. 23 (citing Adams 1:33–59, 7:40–53, 8:6–16).
Appellant argues that Grasso does not disclose the claimed opposite
phases. Appeal Br. 210. These arguments are not persuasive, because they
do not address Grasso’s opposite phase disclosure as discussed above.
Appellant also argues that the cited disclosure is from separate
embodiments of Adams, and the Examiner has not provided a reason to
combine the separate embodiments. Appeal Br. 210. This argument is not
persuasive for the reason explained above, and also because it fails to
explain which Examiner findings are asserted to be from different
embodiments.
Claim 30
Appellant makes no argument that claim 30 is patentable over Adams
and Grasso if claims 27 and 28 are not patentable over Adams and Grasso.
Appeal Br. 211. Thus, for the reasons explained above regarding claims 27
and 28, we sustain the rejection of claim 30.
Claims 24 and 25
Appellant makes no argument that claims 24 and 25 are patentable
over Adams and Grasso if claim 26 is not patentable over Adams and
Grasso. Appeal Br. 212. Thus, for the reasons explained above regarding
claim 26, we sustain the rejection of claims 24 and 25.
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CONCLUSION
We have carefully considered each of the extensive arguments set
forth by Appellant on pages 42–231 of the Appeal Brief and throughout the
153 pages of the Reply Brief. The table below summarizes whether such
arguments were persuasive of Examiner error.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 10, 11,
18–21, 24,
25, 31
102(a)(1) Grasso 1, 4, 5, 10,
11
2, 3, 6, 18–
21, 24, 25,
31
1–6, 10, 18–
21, 31
103 Adams 1–6, 10, 18–
21, 31

7–9, 32 103 Grasso,
Koskowich
7, 32 8, 9
7–9, 11, 32 103 Adams,
Koskowich
7, 11, 32 8, 9
24–30 103 Adams, Grasso 24–30
Overall
Outcome
1–7, 10, 11,
18–21, 24–
32
8, 9

AFFIRMED IN PART