COCHLEAR LIMITED

Patent Trials and Appeals Board

Jul 27, 2020

2019002588 (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.
14/042,954 10/01/2013 Werner Meskens CID02072USCO1/0015US01 2839
106936 7590 07/27/2020
Merchant & Gould Cochlear
P.O. Box 2903
Minneapolis, MN 55402
EXAMINER
HOQUE, NAFIZ E
ART UNIT PAPER NUMBER
2652
NOTIFICATION DATE DELIVERY MODE
07/27/2020 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):
USPTO106936@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WERNER MESKENS and OLIVER JOHN RIDLER
Appeal 2019-002588
Application 14/042,954
Technology Center 2600
Before CAROLYN D. THOMAS, ADAM J. PYONIN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection. 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. 3.
Appeal 2019-002588
Application 14/042,954

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STATEMENT OF THE CASE
Introduction
The Application relates to “systems, methods, and apparatuses that are
used to provide power to medical devices,” which can “include, for example,
cochlear implants or other auditory prostheses or devices.” Spec. ¶ 2.
Claims 1–28 are pending; of these, claims 1–7 and 25–27 are withdrawn and
not before us. Appeal Br. 5. Claims 8 and 15 are reproduced below for
reference:
8. An apparatus comprising:
a battery unit defining a battery unit receptacle for
receiving a battery comprising a first form factor;
a cable extending from the battery unit; and
an adapter connected to the cable, the adapter configured
to be matingly received in a housing receptacle, wherein the
housing receptacle is configured to matingly receive a battery
comprising a second form factor.
15. An apparatus comprising:
a housing comprising a battery receptacle;
a first receptacle terminal disposed within the receptacle for
receiving power; and
a second receptacle terminal disposed within the battery
receptacle for receiving a signal.

References and Rejections
The Examiner relies on the following prior art:
Name Reference Date
Faltys
Crawford
US 6,272,382 B1
US 8,177,112 B1
Aug. 7, 2001
May 15, 2012
Seligman
Bonebright
Minami
US 2004/0049243 A1
US 2008/0298627 A1
US 2013/0049675 A1
Mar. 11, 2004
Dec. 4, 2008
Feb. 28, 2013

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Application 14/042,954

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Claims 8, 9, 15–23, and 28 are rejected under 35 U.S.C. § 102(a)(1) as
being anticipated by Minami. Final Act. 5.
Claim 14 is rejected under 35 U.S.C. § 103 as being unpatentable over
Minami and Faltys. Final Act. 6.
Claims 10 and 11 are rejected under 35 U.S.C. § 103 as being
unpatentable over Minami and Bonebright. Final Act. 7.
Claims 12 and 24 are rejected under 35 U.S.C. § 103 as being
unpatentable over Minami and Seligman. Final Act. 7.
Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over
Minami and Crawford. Final Act. 8.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Except with respect to claim 21, we disagree with Appellant that the
Examiner erred and adopt as our own the findings and reasons set forth by
the Examiner, to the extent consistent with our analysis below. We add the
following primarily for emphasis.

Independent Claim 8
Appellant argues “Minami does not disclose or suggest the identical
invention as recited in amended[2] claim 8.” Appeal Br. 19. Particularly,

2 We note claim 8 is shown as “Original” in the claims listing of the Appeal
Brief. Appeal Br. 31. Although amendments were submitted after the final
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Appellant contends “Minami’s USB connector is adapted to be received in a
USB slot, rather than a housing receptacle configured to matingly receive a
battery” as claimed. Id. at 21. Appellant argues “the Examiner stretches
Minami and the claim language beyond any reasonable interpretation” when
citing to Minami’s USB connectable battery pack, as Minami’s “USB
connector is not a battery” (id. at 20, 21) and the recited “receptacle is the
portion of a device that is configured to matingly receive a battery, not an
entire device powered by a battery” (Reply Br. 3).
The Examiner explains the “claims are broad in nature and therefore
have been given broadest reasonable interpretation in light of specification.”
Ans. 3. The Examiner finds Minami’s USB power bank discloses the
limitations of claim 8, because Minami’s “adapter (USB connector) is
configured to be matingly received in a housing receptacle (received in the
USB slot of the battery housing receptacle battery pack 10), wherein the
housing receptacle is configured to matingly receive a battery comprising a
second form factor (see battery cell 11 in Fig. 8 inside the battery pack[)].”
Ans. 5 (emphasis added). We find this to be reasonable.3
Claim 8 recites two receptacles: a battery unit receptacle, and a
housing receptacle. Appellant does not dispute the Examiner’s mapping of
the recited battery unit receptacle to Minami’s cell phone (housing a
battery). See Ans. 4; Final Act. 5; Reply Br. 2–4; Minami Fig. 2. Nor does

action, these amendments have not been entered by the Examiner. See
Advisory Action mailed May 21, 2018; Appeal Br. 5.
3 See, e.g., In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969) (During
prosecution, “the applicant may then amend [the] claims, the thought being
to reduce the possibility that, after the patent is granted, the claims may be
interpreted as giving broader coverage than is justified.”).
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Application 14/042,954

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Appellant show the Examiner errs in finding Minami’s battery pack—having
a case (i.e., housing)—anticipates the recited housing receptacle. See
Advisory Act. 2. Minami discloses a USB connector is configured to be
matingly received in the case of the battery pack, because the USB slot
(which connects to the USB connector) is within the battery pack. See
Minami Figs. 2, 8, 11 (depicting battery pack case 40 for containing USB
slots); Ans. 4. Minami further discloses the case of the battery pack is
configured to matingly receive a battery as claimed, because the battery pack
is designed to house a battery in its case. See Minami Fig. 11; ¶ 66; see also
Final Act. 3 (“Minami disclose the battery cells 11 matingly received in a
housing receptacle (battery pack 10 which houses the battery cells 11)”).
For these reasons, Minami’s battery pack system discloses the limitations of
independent claim 8.
Accordingly, we are not persuaded the Examiner errs in finding
independent claim 8 to be anticipated.

Independent Claim 15
Appellant argues “Minami does not disclose or suggest a battery
receptacle having the terminals as claimed.” Appeal Br. 24. Particularly,
Appellant contends “the Office Action failed to show that Minami’s ‘USB
slot’ corresponds to the claimed ‘battery receptacle,’” and “even if Minami
discloses that data and power can be transmitted through a USB slot, such a
disclosure would not disclose or suggest a battery receptacle having the
specifically-claimed terminals.” Id. at 25 (emphasis omitted).
We are not persuaded the Examiner’s rejection is in error. Claim 15
recites “a housing comprising a battery receptacle,” a “first receptacle
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terminal disposed within the receptacle[4] for receiving power,” and “a
second receptacle terminal disposed within the battery receptacle for
receiving a signal.” Appeal Br. 32 (emphases added). We agree with the
Examiner that Minami’s battery pack case is a housing comprising a battery
receptacle, and Minami’s USB slots are disposed within the battery
receptacle as claimed, for the reasons discussed above with respect to
claim 8. See Final Act. 3; Minami Fig. 11 (depicting upper case 40a and
lower case 40b for housing battery 11 having USB slots 20).
The Examiner additionally finds Minami’s USB slots have both a
power receiving terminal and a signal receiving terminal. See Final Act. 3,
4; Minami ¶ 42. Appellant does not persuasively show this finding is in
error. As these USB slots are disposed within Minami’s battery receptacle,
so too are the terminals possessed by the USB slots. Thus, Minami discloses
a battery receptacle having the receptacle terminals as claimed.
Accordingly, we are not persuaded the Examiner errs in finding
Minami anticipates the limitations of independent claim 15.

Dependent Claim 21
Claim 21 recites the “apparatus of claim 8, wherein at least a portion
of the adapter is shaped to mimic the form factor of a disposable battery.”
Appeal Br. 33.
Appellant argues “Minami does not appear to disclose or suggest a
portion of an adapter shaped to mimic the form factor of a disposable battery
as in claim 21.” Appeal Br. 23. Appellant contends Minami’s “USB

4 We consider this sole recited instance of “the receptacle” as referring to the
battery receptacle.
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connector (which the Office Action contended corresponds to the claimed
adapter) has the form factor of a USB connector,” and “[s]imply by a USB
slot and a battery being in the same housing, does not mean that a USB plug
mimics the form factor of a battery.” Id. at 22, 23.
We are persuaded the Examiner’s rejection of claim 21 is in error.
The Examiner’s analysis rests on construing the “mimic” limitation broadly:
“[a]s long as any part of the adapter shape ‘mimics’ a battery, the limitation
is met because the claim recites a ‘portion of the adapter,’” and the “‘at least
a portion of the adapter is shaped’ can be infinitesimal and the infinitesimal
portion can mimic the shape of any battery. For example, the edges are
flat.” Ans. 6 (emphasis omitted). This analysis, however, construes the
“mimic the form factor” limitation to cover essentially any object, and thus
reads the express limitation out of the claim. See Texas Instruments, Inc. v.
U.S. Int'l Trade Com'n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (“[T]o
construe the claims in the manner suggested by TI would read an express
limitation out of the claims. This, we will not do . . . .”). The Examiner has
not identified, nor do we see, any portion of Minami’s adapter (i.e., a USB
connector) that reasonably mimics the form factor of a disposable battery.
Based on the foregoing, we agree with Appellant that the Examiner
has not established Minami anticipates all elements of dependent claim 21.
See Reply Br. 4. We do not sustain this rejection.

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Dependent Claim 14
Claim 14 recites the “apparatus of claim 8, wherein the battery unit is
disposed in a housing comprising an ear hook for wearing on an ear.”
Appeal Br. 32.
Appellant argues the Examiner’s “rationale to combine Minami and
Faltys is faulty,” because “Minami already purports to provide ‘a battery
pack which can be suitably used as a portable power supply’ with ‘an output
connector for supplying electric power to an external battery-driven device
connected to the output connector.’” Appeal Br. 29. Appellant asserts “the
provided rationale [does not] appear to support why one would modify the
battery pack of Minami to include an ear hook for wearing on an ear.” Id.
We are not persuaded the Examiner’s combination rationale is in
error. Contrary to Appellant’s argument, the Examiner does not find one of
skill in the art would modify Minami’s battery pack to include an ear hook.
See id. Rather, the Examiner finds one of ordinary skill would connect
Minami’s battery pack to an ear hook. See Final Act. 6.5
The Examiner finds one would combine Minami’s teachings with the
disclosure in Faltys of a “behind the ear (BTE) unit 120 that includes a
battery,” because “connecting [Minami’s] external battery pack to a behind
the ear hearing unit would yield a predictable result of charging the hearing
unit.” Ans. 9; Faltys Fig. 1B, 9:8–24. We find the Examiner’s analysis to
constitute reasoning sufficient to support the conclusion of obviousness.
Minami, as cited, teaches a USB power supply for charging devices. See

5 In the event of further prosecution, the Examiner may wish to determine
whether the claims are indefinite for repeated but separate uses of terms such
as “housing,” “receptacle,” and “a battery.”
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Application 14/042,954

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Final Act. 6; Minami Fig. 2. Faltys, as cited by the Examiner, teaches a
removable behind-the-ear device powered by a battery. See Ans. 9; Faltys
9:8–24. Appellant has not shown that charging Faltys’s device with
Minami’s power supply was “uniquely challenging or difficult for one of
ordinary skill in the art” or “represented an unobvious step over the prior
art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007).
Based on the foregoing, we are not persuaded the Examiner errs in
finding the limitations of claim 14 obvious in view of the combined
teachings of Minami and Faltys. See Ans. 9.

CONCLUSION
We are persuaded the Examiner errs in the rejection of dependent
claim 21.
We are not persuaded the Examiner errs in finding independent claims
8 and 15 to be anticipated by Minami. Appellant does not present separate
substantive arguments for the remaining claims. See Appeal Br. 23–28.
Thus, we sustain the Examiner’s rejections of claims 8–20, 22–24, and 28.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8, 9, 15–23,
28
102 Minami 8, 9, 15–20,
22, 23, 28
21
14 103 Minami, Faltys 14
10, 11 103 Minami, Bonebright 10, 11
12, 24 103 Minami, Seligman 12, 24
Appeal 2019-002588
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13 103 Minami, Crawford 13
Overall
Outcome
8–20, 22–24,
28
21

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 IN PART