COCHLEAR LIMITED

Patent Trials and Appeals Board

Feb 12, 2020

14832950 - (D) (P.T.A.B. Feb. 12, 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.
14/832,950 08/21/2015 Jürgen Van Vlem CID02237USCO1/25USU1 3412
106936 7590 02/12/2020
Merchant & Gould Cochlear
P.O. Box 2903
Minneapolis, MN 55402
EXAMINER
BERTRAM, ERIC D
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
02/12/2020 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 JÜRGEN VAN VLEM

Appeal 2019-004458
Application 14/832,950
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
BRENT M. DOUGAL, Administrative Patent Judges.

HOELTER, 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 11–18, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Cochlear
Limited.” Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The disclosed subject matter relates to cochlear implants, i.e., an
auditory prosthesis. See Spec. ¶¶ 1, 2. Apparatus claim 11 is the sole
independent claim, is illustrative of the claims on appeal, and is reproduced
below.
11. An auditory prosthesis comprising:
an implantable portion comprising:
a first anchor adapted to be secured to a first
location in a recipient;
a second anchor adapted to be secured to a second
location in the recipient; and
a deformable element disposed between the first
anchor and the second anchor, wherein the deformable element
is configured to automatically deform over a predetermined
period of time to accommodate a separation between the first
location and the second location due to anatomical growth.
EVIDENCE
Name Reference Date
Abel et al (“Abel”) US 2011/0106254 A1 May 5, 2011
REJECTION
Claims 11–13 and 15–18 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Abel.
Claim 14 is rejected under 35 U.S.C. § 103 as unpatentable over Abel.
ANALYSIS
The rejection of claims 11–13 and 15–18 as anticipated by Abel
Appellant presents distinct arguments for claims 11, 13, 15 (each
argued separately) and for claims 17 and 18 (argued together). See Appeal
Br. 11–24. No separate arguments are presented for dependent claims 12
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and 16. Accordingly, we select claims 11, 13, 15, and 17 for review, with
the remaining claims (i.e., claims 12, 16, and 18) standing or falling with
their respective parent claim. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 11
Claim 11 includes the limitation of a deformable element “configured
to automatically deform over a predetermined period of time . . . due to
anatomical growth.” Appellant contends that Abel does not anticipate this
limitation because “Abel’s device compensates for changes in pressure
caused by daily activities rather than separation due to anatomical
growth as claimed.” Appeal Br. 11.
The Examiner relies, in part, on Paragraph 6 of Abel for disclosing
this limitation. See Final Act. 4. Paragraph 6 of Abel states, in part:
During its lifetime, which may be many years, an ORP
[ossicular replacement prosthesis] may be subjected to billions
of vibrating cycles in the audio frequency range and must,
therefore, maintain its structure and function with minimal
deterioration.
Emphasis added. The Examiner also states that in view of Paragraph 70 of
Abel, “Abel allows for 0.5 mm to 1.0 mm deflection.” Ans. 4–5. The
Examiner finds that, “the specification does not seem to give any special
definition to the term [“anatomical growth”] other than any separation
(including separations as small as or even smaller than 1 nm) occurring due
to growth.” Ans. 4. Thus, the Examiner reasons, “[c]learly, anatomical
growth resulting in 1 nm of separation could easily be accommodated and
still allow for deflection.” Ans. 5.
Appellant acknowledges the Examiner’s reliance on Paragraphs 6 and
70 of Abel (see Appeal Br. 12, 15, Reply Br. 4), but contends “Abel’s
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invention is structured to compensate for daily variations in pressure rather
than the claimed accommodation of anatomical growth.” Appeal Br. 12; see
also id. at 13, Reply Br. 4. In fact, after referencing Paragraph 70 of Abel,
Appellant states, “[t]here is no indication on the record that deflection of
merely ‘approximately [] 0.5 mm to 1.0 mm’ is sufficient to accommodate
anatomical growth.” Appeal Br. 16. In response, the Examiner explains,
however, “that ‘anatomical growth’ is not defined in claim 11.” Ans. 4.
And, because claim 11 is silent as to the degree of anatomical growth
required, the Examiner determines that due to Abel’s permitted deflection,
“Abel could accommodate separations due to anatomical growth.” Ans. 4;
see also Abel ¶ 56 (“ORP 100, is compliant (becomes deformable)”).
The Examiner’s reasoning is persuasive. Appellant does not
persuasively explain how anatomical growth is not likely to occur over the
stated lifetime (i.e., “many years”) of Abel’s prosthesis. Abel ¶ 6; see also
Spec. ¶¶ 2 (“[a]s the skull of a juvenile grows”) 33 (“[i]n the described
context, this predetermined length of time can be at least one year, and can
accommodate anatomical growth during that year”). Nor does Appellant
explain how the permitted deflection of approximately 0.5 mm to 1.0 mm
fails to accommodate anatomical growth.
Appellant further states, “the Office Action gave no weight to the
differences between accommodating separation due to anatomical growth
and accommodating pressure changes caused by daily activities in Abel.”
Appeal Br. 14; see also Reply Br. 2. However, the Examiner responds that
“HOW the movement is caused is an intended use of the apparatus claims.”
Ans. 5 (citations omitted). Appellant disagrees stating:
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Whether Abel could accommodate the one nanometer of growth
described by the Examiner's Answer is irrelevant to anticipation
because claim 11 does not merely require a deformable element
that "could" accommodate separation-the claim recites, inter
alia, a deformable element configured to accommodate
separation due to anatomical growth.
Reply Br. 3; see also id. at 6. Appellant continues, “the particular
configuration of the deformable element creates structural differences
compared to Abel’s device.” Reply Br. 3; see also Appeal Br. 16 (“Such
attributes are different.”). Appellant states, “Applicant’s specification
clearly describes these differences,” and references Paragraph 33 thereof
which, as per Appellant, “describes [] the leniency of a deformable element”
as well as its behavior.2 Appeal Br. 14.
The Examiner acknowledges Appellant’s focus on the Specification in
identifying structural differences, but states, “it is noted that the features
upon which appellant relies are not recited in the rejected claims.” Ans. 5.
Appellant does not disagree, only stating “[t]he claimed recitation regarding
the configuration of the deformable element results in structural differences
from Abel.” Reply Br. 5. In short, Appellant does not explain where these
asserted structural differences are claimed, only that structural differences
exist between their device and Abel’s. Further, Appellant does not clearly
identify what exactly are these structural differences. Appellant does not
provide any evidence in support of this allegation, and it is not otherwise
self-evident from the record. “Attorney’s arguments in a brief cannot take
the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).

2 To be clear, Appellant is not disputing Abel’s disclosure of a deformable
element, only that Abel’s element is not “structurally configured to
accommodate the claimed separation.” Reply Br. 3.
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The Examiner also states, “[i]f the prior art structure is capable of
performing the intended use, then it meets the claim.” Ans. 6. “Abel clearly
discloses that the prosthesis can deform to allow[/]permit rectilinear and
rotational movement between the two attachment points (par. 0015 and 0018
of Abel),” and that this can continue for “many years.” Ans. 5, Abel ¶ 6.
Accordingly, the Examiner reasons, “Abel clearly discloses that the
prosthesis can deform to accommodate movement that may be due to
anatomical growth.” Ans. 6. Appellant’s argument is not persuasive of
Examiner error on this point. Thus, and based on the record presented, we
sustain the Examiner’s rejection of independent claim 11, and dependent
claims 12 and 16.
Claim 13
Claim 13 depends from claim 12, and recites “wherein the
predetermined period of time comprises at least one year.” The Examiner
again references Paragraph 6 of Abel (see Ans. 6) and Appellant
acknowledges such reliance but argues that “a product lifetime of ‘many
years’ . . . does not mean that Abel’s ORP is configured to deform over
‘many years.’” Reply Br. 8; see also Appeal Br. 17, Reply Br. 9.
We specifically note Abel’s disclosure that the “ORP may be
subjected to billions of vibrating cycles” over its lifetime of “many years,”
and also Abel’s description of its device as “compliant (becomes
deformable).” Abel ¶¶ 6, 56. We further note Abel’s use of “an elastic
material covering all or part of the ORP or other elastic means within the
ORP.” Abel ¶ 21. In view of the foregoing, Appellant’s contention on this
point is not persuasive of Examiner error.
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Appellant also contends that the Examiner’s rejection “overlooks the
clear structural differences” between Appellant’s device and that of Abel.
Appeal Br. 17; see also Reply Br. 8. As the Examiner noted above, “the
features upon which appellant relies are not recited in the rejected claim.”
Ans. 5. Appellant further discusses the characteristics of “a viscoelastic
material” (Appeal Br. 18), but claim 13 is silent as to such material.
Accordingly, and for similar reasons discussed above, we are not
persuaded of Examiner error. We sustain the Examiner’s rejection of claim
13 as being anticipated by Abel.
Claim 15
Claim 15 depends from claim 11 and additionally recites “wherein the
deformable element comprises a viscoelastic material.” Appellant contends,
“Abel as applied does not disclose or suggest a deformable element that
comprises a viscoelastic material.” Appeal Br. 19; see also id. at 20. The
Examiner, on the other hand, explains:
Par. 0054 [of Abel] clarifies that the cover 126 may be formed of
an elastomeric material, such a silicone. Silicone and elastomers
are polymers, and ALL polymers have viscoelastic properties.
As evidence of this intrinsic property, the Examiner presents a
definition of ‘viscoelasticity’ from the Academic Press
Dictionary of Science and Technology (4th ed.), which states that
‘viscoelasticity’ is ‘The typical manifestation of this quality in a
polymer; the shear viscosity is expressed by the relaxation time,
which is the ratio of the viscous to the elastic characteristics in
the determinant property.[”] Additionally, the Examiner has
provided a PDF of a text book entitled ‘Introduction to Polymer
Viscoelasticity’ as further support as to the inherency of the
disclosed elastomer being viscoelastic (see Introduction and
Preface for broad definition; additional chapters go into detail of
the viscoelastic models and properties).
Ans. 6–7.
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Appellant does not respond or rebut these statements or these
references identified by the Examiner. See Reply Brief generally. Thus,
Appellant is not persuasive of Examiner error on this point. Accordingly,
we sustain the Examiner’s rejection of claim 15 as being anticipated by Abel
in view of Abel’s disclosure of using silicon, which is understood to be a
“deformable element [that] comprises a viscoelastic material” as recited.
Claim 17
Claim 17 depends from claim 11 and recites a prosthesis “further
comprising an acoustic actuator disposed between the first anchor and the
second anchor.” Appellant contends, Abel “does not disclose the claimed
acoustic actuator.” Appeal Br. 21. The Examiner disagrees stating “[a]ll
embodiments of Abel disclose a piston 22/122/222 that moves due to
acoustic vibrations” and that “[t]his appears to be exactly what an ‘acoustic
actuator’ is.” Ans. 7.
Appellant’s Specification employs the term “acoustic actuator” in
terms of an “actuator element” (Spec. ¶ 25), but this term is also understood
as simply an “actuator” (Spec. ¶ 17). Appellant seeks to differentiate the
operation of Abel’s piston-type actuator by stating “an acoustic actuator is a
component that generates motion rather than merely being able to conduct
motion generated elsewhere.” Appeal Br. 22, Reply Br. 11.
Such differentiation is not consistent with the description in
Appellant’s Specification. For example, Paragraph 18 of Appellant’s
Specification provides guidance as to the operation of Appellant’s actuator
stating “stimulator unit 220 generates drive signals that cause actuation of
actuator 240. This actuation is transferred to stapes prosthesis.” Thus,
Appellant’s Specification describes a more passive actuation device that
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awaits receipt of a signal before actuating and transferring such actuation
further along. Abel operates in a same manner. For example, Abel
describes a deformable coupling exposed to sound vibrations originating
with the eardrum and stating “these vibrations may be transmitted across the
coupling means with minimal acoustic damping or attenuation.” Abel ¶ 13.
Hence, Appellant’s contention that an “actuator is a component that
generates motion” is not wholly consistent with Appellant’s Specification.
Regardless, the Examiner states that using “the appellant’s definition, and
especially given the lack of recited structure in the claim as to what, exactly,
constitutes an acoustic actuator,” the Examiner reasons that Abel’s piston
device 22/122/222 “appears to be exactly what an ‘acoustic actuator’ is.”
Ans. 7.
The Examiner has the better position on this point. Accordingly, we
are not persuaded the Examiner erred in rejecting claims 17 and 18 as being
anticipated by Abel. We sustain their rejection.
The rejection of claim 14 as unpatentable over Abel
Claim 14 depends from claim 11 and further recites, “wherein the first
anchor comprises a bone screw and wherein the second anchor comprises at
least one of a stapes prosthesis and an ossicular chain prosthesis.” The
Examiner references Paragraphs 7, 21, and 52 of Abel as rendering this
limitation obvious. See Final Act. 6, Ans. 7. Appellant does not address the
recitation to a bone screw, but contends that “Abel describes a deformable
element that is part of an ossicular chain prosthesis rather than between
a bone screw and a stapes or ossicular chain prosthesis.” Appeal Br. 24.
To be clear, the “between” language relied upon by Appellant above
can be found in parent claim 11. The Examiner does not explain how Abel’s
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prosthesis can be said to be “between” anchors 40, 42 (see Abel Fig. 2) for
purposes of claim 11 (“acoustic actuator disposed between the first and
second anchor” (Final Act. 4)), yet, at the same time, also satisfy the claim
14 limitation that one of the anchors be the prosthesis itself. Unlike
Appellant’s device, which separates actuator 240 from stapes prosthesis 254
(Spec. para 17, Fig. 1B), Abel discloses and describes an ‘all-in-one’ unit.
See Abel generally. Thus, while Abel can satisfy the “between” limitation
of claim 11 (see Abel Fig. 2 depicting ORP 10 between attachments points
40, 42), there is no indication that Abel’s ORP is also one of the anchors as
per the claim 14 limitation. Indeed, Abel disclose various devices that can
connect to Abel’s ORP for anchoring purposes (see Abel ¶¶ 7, 52), yet
nowhere is it made clear that one of the anchoring devices itself is Abel’s
ORP.
Accordingly, and based on the record presented, the Examiner has not
explained how, for claim 14 purposes, Abel satisfies the requirement that the
deformable element (i.e., Abel’s ORP (see Abel ¶ 21)) be both between the
anchors and also be an anchor. We reverse the Examiner’s rejection of
claim 14 as being unpatentable over Abel.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference Affirmed Reversed
11–13,
15–18
102(a)(1) Abel 11–13, 15–
18

14 103 Abel 14
Overall
Outcome
11–18
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No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART