Daly, Christopher N.

Patent Trials and Appeals Board

Sep 16, 2020

13293758 - (R) (P.T.A.B. Sep. 16, 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.
13/293,758 11/10/2011 Christopher N. Daly 5441-350B 9709
111614 7590 09/16/2020
Pilloff Passino & Cosenza LLP
2000 Duke Street
Suite 300
Alexandria, VA 22314
EXAMINER
D ABREU, MICHAEL JOSEPH
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
09/16/2020 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):
mail@pilloffpassino.com
mcosenza@pilloffpassino.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER N. DALY
Appeal 2019-001953
Application 13/293,758
Technology Center 3700
Before JENNIFER D. BAHR, JOHN C. KERINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.

PESLAK, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellant1 filed a Request for Rehearing (“Request” or “Req. Reh’g”)
in response to our Decision of May 27, 2020 (“Decision” or “Dec.”). We
have jurisdiction under 35 U.S.C. § 6(b).
After consideration of Appellant’s Request, we grant the Request for
Rehearing of claim 20, deny the Request for Rehearing of claims 15 and 26,
and do not reach the Request for Rehearing of claim 31.

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.
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OPINION
Rehearing is limited to matters misapprehended or overlooked by the
Board in rendering the initial decision. 37 C.F.R. § 41.52(a)(1).
“Arguments not raised, and Evidence not previously relied upon. . . are not
permitted in the request for rehearing except as permitted by paragraphs
(a)(2) through (a)(4) of this section.” Id.
Claim 20
Appellant contends that “[c]laim 20 depends from claim 19, and the
rejection of claim 19 was reversed. We submit that by default the rejection
of claim 20 should also be reversed.” Req. Reh’g 2. Claim 19 is rejected as
unpatentable over Haubrich and claim 20 is rejected as unpatentable over
Haubrich and Faltys. Final Act. 6, 9. The Examiner’s reliance on Faltys
fails to cure the deficiencies in the rejection of claim 19 stated in our
Decision. Dec. 15–16; Final Act. 9. Therefore, we grant Appellant’s
Request for Rehearing and reverse the Examiner’s rejection of claim 20.
Claim 26
Claim 26 depends from claim 15 and recites “wherein the operating
parameters are stored in the implantable memory.” Appeal Br. 159 (Claims
App.). First, Appellant argues that “Claim 26 is a claim that is completely
incompatible with any interpretation of claim 15 . . . that covers the prior art
. . . because claim 26 affirmatively recites that the operating parameters are
stored in the implantable memory.” Req. Reh’g 3. Second, Appellant
argues that our findings concerning claim 26 are incompatible with the
rejection of claim 15 because we determined that “claim 15 does not
affirmatively require that the operating parameters be stored in the memory
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module of the internal component” but the claim “only requires that the
implantable component be configured to receive and store the operating
parameters.” Id. at 4 (quoting Dec. 17). Third, Appellant argues that we
overlooked certain arguments made in the Appeal Brief directed to claim 26.
Id. at 5–7. In connection with this argument, Appellant quotes part of the
Final Rejection and its argument that the limitation of claim 26 was not
disclosed in Haubrich at column 11, line 66, to column 13, line 21. Id. at 6.
In the Decision, we affirmed the rejection of claim 15 because, inter
alia, Appellant did not “address[ed] the disclosure of Haubrich at column 3
line 41 to column 4 line 25, which . . . supports a finding that Haubrich
stores operating parameters in the implantable memory.” Dec. 17. This
disclosure of Haubrich was also cited by the Examiner in the Final
Rejection. Final Act. 8. In connection with claim 15, we noted that the
Appeal Brief did not make any argument “addressing, let alone
demonstrating, that the disclosure of Haubrich column 3, line 41 to column
5, line 25 does not correspond to ‘operating parameters . . . specific to a
recipient of the implantable component.’” Id. at 9. After reviewing the
referenced portion of Haubrich, we found that “Haubrich, thus, discloses an
internal component with a memory that stores data relating both to the
patient (the ‘recipient’) and to operating commands for controlling the
function and operation of the IMD implanted in the patient.” Id. at 10–11.
In the Request, Appellant instead directs us to where it argued that column
11, line 66, to column 13, line 21 of Haubrich does not disclose the
limitation of claim 26. Appellant, however, has not shown that we
misapprehended or overlooked an argument in the Appeal Brief asserting
that column 3, line 41, to column 5, line 25, of Haubrich does not disclose
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this limitation. This portion of Haubrich is the basis for our affirmance of
the rejections of claims 15 and 26. Therefore, we decline to modify our
prior decision regarding claim 26 because Appellant has not shown that we
misapprehended or overlooked any argument.
Claim 15
Appellant argues that “[n]othing that is stored in the implantable
portion of Haubrich can ‘configure the external component using said
operating parameters’ where the operating parameters are stored in the
implantable component.” Req. Reh’g 8. Appellant then repeats essentially
the same argument in an expanded format and argues that it traverses our
decision on claim 15 “for all the reasons we previously articulated in the
Appeal Brief and Reply Brief.” Id. at 11(citing Dec. 13). Appellant makes a
similar argument that “very few of our arguments presented in the Appeal
Brief, and our arguments in the Reply Brief (and there were a myriad of new
grounds of rejection in the Examiner’s Answer), are addressed in the
Decision.” Id. at 14.
Appellant’s substantive argument concerning Haubrich’s alleged lack
of disclosure of the limitations of claim 15 does not point to anything we
misapprehended or overlooked but merely disagrees with our finding that
Haubrich, in fact, discloses recipient specific operating parameters stored in
Haubrich’s implantable device as required by claim 15. Dec. 10–11.
Further, the argument about the configuration of the external device ignores
our determination that the limitation in claim 15 of “configur[ing] the
external component using said operating parameters” is a conditional
limitation because the claim only requires that the external component be
configured “upon the internal component verifying compatibility” but, claim
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15 does not require the internal component to do so. Id. at 12–13.
Appellant’s attempt to rely on all the arguments set forth in their Appeal
Brief and Reply Brief without citing any particular arguments that we
misapprehended or overlooked is improper. See 37 C.F.R. §
41.50(a)(1)(“The request for rehearing must state with particularity the
points believed to have been misapprehended or overlooked by the Board.”).
Likewise, Appellant fails to show what we misapprehended or overlooked in
connection with any allegedly new grounds of rejection by the Examiner in
the Answer. For all of these reasons, we decline to modify our prior
decision regarding claim 15.
Claim 31
Appellant contends that claim 31 was part of an “amendment filed on
September 26, 2017” that was not entered by the Examiner. Req. Reh’g 9–
10. Based on the alleged failure to enter the Amendment, Appellant argues
that we should reverse a rejection of claim 31 that was never made by the
Examiner, because we reversed a rejection of claim 1 that was actually made
by the Examiner. Id. However, the Examiner issued an Advisory Action on
January 2, 2019 stating that the Amendment was not entered.
1/2/19 Adv. Act. 1. Consequently, we do not reach claim 31 because the
claim has not been entered and, consequently, no rejection is before us for
review.
CONCLUSION
Appellant’s Request for Rehearing is granted with respect to claim 20
and denied with respect to claims 15 and 26.

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DECISION SUMMARY
Outcome of Decision on Rehearing:

Claims 35 U.S.C.
§
Reference(s)/Basis Denied Granted
15, 20, 26 103(a) Haubrich 15, 26 20
312
Overall
Outcome
15, 26 20

Final Outcome of Appeal after Rehearing:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 5, 7,
15, 16, 18,
19, 22, 25,
26
103(a) Haubrich 15, 16, 18,
26
1, 3, 5, 7,
19, 22, 25
8, 10, 11,
13, 14, 20,
21, 23, 24,
and 27–30
103(a) Haubrich, Faltys 8, 10, 11,
13, 14, 20,
21, 23, 24,
27–30
Overall
Outcome
15, 16, 18,
26
1, 3, 5, 7, 8,
10, 11, 13,
14, 19, 20–
25, 27–30

2 As noted, we do not reach the issue of claim 31.
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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).
GRANTED IN PART