Ex Parte Daly

Patent Trial and Appeal Board

Mar 15, 2018

12401600 (P.T.A.B. Mar. 15, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/401,600 03/10/2009 Christopher N. Daly 5441-350A 6134
111614 7590
Hauptman Ham, LLP
2318 Mill Road
Suite 1400
Alexandria, VA 22314
03/19/2018 EXAMINER
CAREY, MICHAEL JAMES
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
03/19/2018 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):
cochlear@ ipfirm.com
pair_lhhb @ firsttofile. com
docketing @ ipfirm. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER N. DALY
Appeal 2016-002595
Application 12/401,600
Technology Center 3700
Before JOHN C. KERINS, KEN B. BARRETT, and
ARTHUR M. PESLAK, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Christopher N. Daly (“Appellant”)1 seeks our review under 35 U.S.C.
§ 134(a) of the Examiner’s rejection of claims 1—37. We heard oral
argument on January 4, 2018, and a transcript (“Tr.”) is included in the
record. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant identifies Cochlear Limited as the real party in interest. App.
Br. 2.
Appeal 2016-002595
Application 12/401,600
THE INVENTION
Appellant’s claimed invention pertains to the configuration of an
implantable medical device having an implantable component and an
external component. See Spec. ]Hf 2—3. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. An implantable medical device comprising:
an implantable component, comprising an implantable
memory module, configured to receive and store recipient-
specific operating parameters in said implantable memory
module; and
an external component, comprising an external memory
module, configured to communicate with said implantable
component to receive said recipient-specific operating
parameters, and to be configured using said recipient-specific
operating parameters,
wherein said implantable medical device is configured to
transfer said recipient-specific operating parameters upon
operationally coupling said implantable component with said
external component.
App. Br. 80 (Claims Appendix).
THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 1 and 5—12, and 16—30 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by Haubrich et al. (US 6,482, 154 Bl, iss. Nov.
19, 2002, hereinafter “Haubrich”);
2. Claims 2—\ are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Haubrich and Sweeney et al. (US 6,285,909 Bl, iss. Sept.
4, 2001, hereinafter “Sweeney”);
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3. Claims 13—15 and 35—37 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Haubrich and Adams et al. (US 6,390,971 Bl,
iss. May 21, 2002, hereinafter “Adams”);
4. Claims 31, 33, and 34 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Haubrich and Meadows et al. (US 6,553,263 Bl,
iss. Apr. 22, 2003, hereinafter “Meadows”); and
5. Claim 32 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Haubrich and Faltys et al. (US 6,219,580 Bl, iss.
Apr. 17, 2001, hereinafter “Faltys”).
ANALYSIS2
A. The Rejection of Claims 1 and 5—12, and 16—30
as Anticipated by Haubrich
1. Independent Claim 1—Device
Independent claim 1 is an apparatus claim reciting “[a]n implantable
medical device.” App. Br. 80 (Claims Appendix). The claimed device
comprises two stmctural elements, an implantable component and an
external component, each “configured to” perform certain functions
pertaining to “recipient-specific operating parameters.” As the Examiner
notes, the independent claim is not directed to any specific type of
implantable device. Ans. 3.
2 Appellant argues that the rejections should be reversed for allegedly
failing to comply with proper examination procedure. See, e.g., App. Br. 14
(arguing that the anticipation rejection should be reversed because “proper
procedures for claim construction are not followed.”). We have considered
Appellant’s “procedural” arguments to the extent they pertain to the
substance of the rejections on appeal.
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While it is self-evident that the recited “recipient-specific operating
parameters” are specific to the recipient, the Specification makes clear that
such parameters, within the meaning of the claims, encompass a broad
category of data that is well-known in the art. See Spec. 147 (In the context
of a cochlear implant embodiment, with emphasis added: “Other data may
also be stored, for example alternative speech processing schemes and the
user specific strategy for those schemes, or data of other types. All these
data will be discussed as user specific parameters for the purposes of the
discussion below, and are well understood by those skilled in the art”).
Claim 1 does not positively recite as structure the data that is “recipient-
specific operating parameters.” Rather, the data is the object of the
functional recitations. For example, the first limitation recites an
implantable component “configured to receive and store” the data in a
memory module. As Appellant agrees, the data need not be actually in the
device. Tr. 9:5—10 (“[Recipient-specific operating parameters] don’t
necessarily have to be in when the product is sold. In fact, they wouldn’t be
in there until after the machine is fitted.”).
Similarly, the recited external component has a memory module and
is “configured to communicate with said implantable component to receive”
the data. Additionally, the external component is “configured to ... to be
configured” using the data. See Tr. 11:13—12:14 (Appellant agreeing with
that understanding.). Thus, the external component need not be actually
“configured” using the data, but merely capable of being “configured” by
the data. See id.', see also id. at 13:6—21. This understanding is consistent
with the Specification, which explains that “external component 222 may be
a generic yet compatible with implanted component 224, and not otherwise
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programmed or customized for the recipient prior to being coupled with
implanted component 224.” Spec. 148; cf Ans. 3 (The Examiner
construing “[t]he appellant’s independent claims [as] directed toward a
generic implantable medical device.”); Tr. 9:11—18 (Counsel agreeing with
the characterization of claim 1 being “directed to the generic external
component, prior to being customized.”). The external component becomes
non-generic after being customized or programmed from the downloaded
recipient-specific data. Spec. 148. Claim 1 recites a device prior to such
customization.
Lastly, claim 1 recites that the implantable medical device (the overall
claimed device identified in the preamble) is “configured to transfer” the
data upon operationally coupling the two components. The Specification
indicates that such structure can be a transmitter. See Spec. 149 (“[I]n the
embodiment illustrated in FIG. 2B, recipient-specific parameter data is
transferred from implanted memory module 238 via transmitters/receivers
232, 242 to external memory module 228 when external component 222 is
brought into operational mode with implanted component 224, for example
at start-up or initialization.”).
The Examiner—construing the claims as directed to “any IMD
employing telemetry with an EMD in order to communicate operating
parameters” (Ans. 6)—found that Haubrich anticipates apparatus claim 1,
relying primarily on the disclosure in columns 3 through 5 and 12
through 13. Final Act. 3^4; see also Ans. 4. Haubrich “relates generally to
telemetry systems for uplink and downlink telemetry transmission between
an implantable medical device (IMD) and an external medical device (EMD)
such as a programmer or monitor.” Haubrich, 1:7—10. Haubrich discloses
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the specific example of a cardiac pacemaker as an implantable medical
device. Id., 3:41—46. The operating system of the implantable pacemaker
includes a memory for storing “a variety of. . . parameter values.”
Haubrich, 3:59-62; see App. Br. 46 (“The portions of column 3 pertaining to
the memory (the RAM) merely relate to the fact that the implantable
component of Haubrich has a memory that can store data.”). The external
medical device, programmer 20, “is a personal computer type,
microprocessor-based device incorporating a central processing unit 50,
which may be, for example, an Intel 80386 or 80486 or Pentium
microprocessor or the like.” Haubrich, 4:52—55. Each of the implantable
and the external devices has a transmitter and receiver for communicating
and exchanging data between the two devices. Id. at 4:33—34, 4:37-40,
12:64—67, and Figs. 1—3.
Appellant’s arguments, with particular emphasis on the “recipient-
specific operating parameters,”3 focus on action steps and how the device is
to operate. However, claim 1 is an apparatus claim and Appellant chose to
define broadly the apparatus using functional language. Appellant does not
3 Appellant’s argument that it “must guess at” the claim scope applied by
the Examiner is contradicted by Appellant’s arguments as to why the
Examiner’s reading of the claims on Haubrich is unreasonably broad and
incorrect. App. Br. 24; see, e.g., id. at 18 (“[The Examiner] has essentially
rewritten claim 1 (and the other claims) as follows . . . .”), 23 (analogizing
the Examiner’s position regarding patient-specific parameters, as understood
by Appellant, to a shirt off the rack and a box of cereal), 32 (“[T]he
Examiner interprets claim 1 backwards.”), and 38—39 (Appellant arguing
that the parameters identified by the Examiner are not the claimed
parameters.).
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explain how the type of data that is “recipient-specific operating parameters”
imparts a structural distinction. For example, Appellant concedes that “the
implantable component of Haubrich has a memory that can store data” but
argues that there is no disclosure of that memory storing the recipient-
specific operating parameters. App. Br. 46. This argument is misplaced
because claim 1 calls for a memory configured to store data but does not
require the act of placing data in memory. See Tr. 9:5—10 (“The claim
recites . . . that these devices are configured to receive [recipient-specific
operating parameters]. They don’t necessarily have to be in when the
product is sold.”).
Similarly, Appellant incorrectly argues that “claim 1 requires that the
‘recipient-specific operating parameters’ be transferred to the external
component, and that the external component is configured using the
recipient-specific operating parameters.” App. Br. 47; see also id. at 28, 33—
36. Claim 1 calls for a device “configured to transfer” the data and an
external component configured to be configured using the data. The
apparatus claim does not require the performance of the actions of
transferring or configuring. Appellant does not explain persuasively how the
type of data creates a structural distinction over Haubrich’s device having a
transmitter for transmitting data. The claim phrase “configured ... to be
configured using said recipient-specific operating parameters” requires
something capable of being “configured using” the data but does not require
a post-configuration customized device. See Spec. 137 (The external
component is generic initially and prior to the “configuration process.”). We
fail to see, and Appellant has not explained persuasively, how Haubrich’s
microprocessor-based device lacks the broadly claimed capability reflected
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in the “configured ... to be configured” language.4 See Haubrich, 4:52—5:2
(a microprocessor controlled by software stored in a memory); and 5:39-47
(“[I]t may be desirable to have an expansion cartridge containing EPROMs
or the like for storing software programs to control programmer 20 to
operate in a particular manner corresponding to a given type or generation of
implantable medical device.”).
Appellant has not identified any claimed structure allegedly missing
from Haubrich and has not appraised us of error in the Examiner’s finding
that Haubrich anticipates apparatus claim 1. Haubrich discloses all the
structural limitations, including those defined functionally, of claim 1, and
we affirm the rejection of claim 1 as anticipated by Haubrich.
2. Independent Claims 16 and 20—Method and Computer
Readable Medium
Independent claim 16 recites a method for programming an
implantable medical device. The claim recites the steps of “transferring the
recipient-specific operating parameters from the implantable component to
the external component” and “configuring said external component by
applying the recipient-specific operating parameters to the external
component.” Independent claim 20 recites a computer readable medium
having a program for controlling a processor to execute a method, with that
method reciting the same or similar “transferring” and “configuring” steps.
4 Appellant implies that it considers “configured using” to be broader than
“programmed.” Reply Br. 12 n.l (“Where the term ‘programmed’ is used
simply as an attempt at an apples-to-apples comparison for the purposes of
discussion. Appellant does not acquiesce that this corresponds to the recited
action of configuring.”).
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Appellant argues that Haubrich does not disclose the step of
configuring the external component by applying the recited parameters.
App. Br. 32—35, 49. Specifically, Appellant argues that the Examiner has it
“backwards” in that Haubrich’s implanted device is the element being
configured, not the external device. Id. at 32.
For these recited steps, the Examiner relied on Haubrich’s disclosure
in columns 12 and 13. Final Act. 5 (citing Haubrich, 12:64—13:21). In the
Answer, the Examiner further found that the step of configuring the external
device by applying the transferred recipient-specific operating parameters is
taught at Haubrich’s columns 9 and 14. Ans. 4 (citing Haubrich, 9:13—41,
14:37—64). Those portions of Haubrich indicate that the data sent from the
implanted device to the external device includes preliminary device status
information and an event signal, includes identifying information, to ensure
that the external device is connected only to the correct implanted device in
advance of the external device programming the implanted device. See
Haubrich, 12:64—13:21, 9:13—41, and 14:37—64. While Haubrich does
disclose that the implanted device transmits to the external device “requested
data and/or confirmation of programming [by the external device],” the
relied-upon portion does not indicate that that data is applied so as to
configure the external device. See Haubrich, 14:37-46.
The Examiner has not explained adequately how Haubrich discloses
the transmittal of recipient-specific data from the implanted device to the
external device where that data is applied in configuring the external device.
Accordingly, we cannot sustain the rejection of independent method claim
16, or of claims 17—19 which depend therefrom, or of independent computer
readable medium claim 20 and its dependent claim 21.
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3. Independent Claim 22—Device, Means-Plus-Function
Independent claim 22 is an apparatus claim reciting each of the
structural elements in terms of “means for” performing a function. Both
Appellant and the Examiner treat these limitations as governed by 35 U.S.C.
§ 112, sixth paragraph. App. Br. 52; Tr. 16:12—19; and Ans. 4. For such
limitations, the broadest reasonable interpretation is the corresponding
structure for performing the function as disclosed in the Specification and
equivalents thereof. In re Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed.
Cir. 1994) (in banc). Appellant argues that “the rejections are based solely
on alleged functionality of the prior art.” App. Br. 52.
Claim 22 recites, for example, “means for configuring said external
component by applying the recipient-specific operating parameters to the
external component.” We understand this limitation to be part of a
computer-implemented invention.
It is well-established that the corresponding structure for a
function performed by a software algorithm is the algorithm
itself. See WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d
1339, 1348-49 (Fed.Cir. 1999). Accordingly, “[i]n cases
involving a computer-implemented invention in which the
inventor has invoked means-plus-fimction claiming, this court
has consistently required that the structure disclosed in the
specification be more than simply a general purpose computer
or microprocessor.” Aristocrat Techs. Austl. Pty Ltd. v. Int’l
Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
EON Corp. IP Holdings LLC v. AT & TMobility LLC, 785 F.3d 616, 621
(Fed. Cir. 2015).
Neither the Examiner nor Appellant identifies adequately structure
disclosed in Appellant’s Specification allegedly corresponding to all the
limitations of claim 22. See, e.g., Final Act. 7—8; App. Br. 6 (identifying
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black box “processor” 226 and an individual step in a flowchart as
structure); Ans. 4; and Tr. 16:20-18:7. Because it is the Examiner that bears
the initial burden in this regard, we are constrained to reverse the rejection of
means-plus-function claim 22 and of claim 23 which depends therefrom. In
so doing, we do not reach the issue as to whether Appellant’s Specification
adequately discloses structure corresponding to each limitation.
4. Independent Claim 24—Device
Independent claim 24 recites an apparatus in a manner similar to that
of independent claim 1, namely utilizing functional limitations via several
“configured to” phrases. For this claim, Appellant incorporates its earlier
arguments that Haubrich does not disclose actually performing certain
functions with regard to the “recipient-specific operating parameters.” App.
Br. 53—54.5 However, Appellant does not identify how the type of data
creates a structural distinction in the apparatus of claim 24 and does not
identify any such structure missing from Haubrich’s system utilizing
implanted and external processors engaging in bi-directional data
transmittal. For reasons similar to those pertaining to apparatus claim 1, we
sustain the Examiner’s rejection of independent apparatus claim 24.
5. Dependent Claim 5—Device
Claim 5 depends directly from independent apparatus claim 1 and
recites that the implantable component is configured to receive a request
5 In the Reply Brief, Appellant argues, under the heading for claim 24:
“[T]he claims recite configuring the external component (e.g., the EMD) by
applying the recipient-specific operating parameters to the external
component. This is the opposite of claim 16.” Reply Br. 32. Claim 24 does
not recite structure in terms of the function of “applying.”
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from the external component prior to transferring the data. For this
structure, the Examiner (Final Act. 3) points to Haubrich’s external device
that “transmits a beacon or EMD discovery signal via downlink telemetry
and waits for a predetermined time for receipt of an uplinked IMD discovery
or ID signal” (Haubrich, 11:66—12:7). We are not persuaded that there is a
structural distinction by Appellant’s conclusory argument that a beacon or
discovery signal is not a “request” and that “there is clearly a difference
between what is recited and what is disclosed in Haubrich.” App. Br. 55—56.
The Examiner’s reading of the art onto the claim’s recitation of structure is
an appropriate application of the broadest reasonable interpretation of a
“request.” We affirm the rejection of claim 5.
6. Dependent Claims 6 and 25—Device
Dependent claims 6 and 25 depend, respectively, from apparatus
claims 1 and 24. Claim 6 recites “wherein said external component further
comprises an identification circuit, said external component configured to
transmit an identification code stored on said identification circuit.”
Claim 25 recites the same or similar language.
The Examiner points to Haubrich’s beacon/discovery signal for this
feature. Final Act. 4 (citing Haubrich, 11:66—12:7, 12:54—13:21). However,
that signal is seeking an identification from the implanted device and thus is
not indicative of a circuit of an external component configured as an
identification code transmitter. See Haubrich, 11:66—12:7. We find to be
persuasive Appellant’s argument that the Examiner is pointing to the
opposite of that recited. App. Br. 56—59. Accordingly, we cannot sustain
the rejection of claims 6 and 25, or of their respective dependent claims 7—9
and 26—30.
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7. Dependent Claim 10—Device
Apparatus claim 10 depends directly from claim 1 and calls for “an
external communication component” configured to couple with the external
component and provide to the external component the data from the
implantable component. The Examiner points to Haubrich’s telemetry
antenna. Final Act. 4 (citing Haubrich, 3:11—26). Appellant’s conclusory
argument that there is no disclosure of the claimed recitation is not
persuasive of error of the rejection of claim 10, or of claim 11, depending
therefrom and for which Appellant offers no separate argument. App.
Br. 62—63. We affirm the rejection of claims 10 and 11.
8. Dependent Claim 12—Device
Claim 12 depends directly from apparatus claim 1, and pertains to a
subset of the operating parameters. Appellant argues that there is no
disclosure in Haubrich of any transfer of the subset of the parameters. App.
Br. 63. As discussed above, claim 1 is an apparatus claim that does not
require the occurrence of the act of transferring data. As such, Appellant’s
argument does not apprise us of error in the rejection of dependent apparatus
claim 12. We affirm the rejection of claim 12.
B. The Rejection of Claims 2—4
as Being Obvious Over Haubrich and Sweeney
Claim 2 depends directly from apparatus claim 1 and further recites
that the implantable component is “configured to be coupled to a
programming system, prior to implantation of said implantable component
in a recipient, and further configured to receive said recipient-specific
operating parameters therefrom.” App. Br. 80 (Claims Appendix). Claim 3,
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which depends from claim 2, identifies a cable as the structure that couples
the implantable component to the programming system. Id.
The Examiner found that Haubrich does not disclose that the
implantable device is coupled to a programming system prior to
implantation, and relied on Sweeney for the disclosure of that feature. Final
Act. 9-10 (citing Sweeney, Fig. 4, col. 7,11. 7—56). The Examiner reasons
that “[i]t would have been obvious to modify Haubrich to include
preprogramming the device before implantation when coupled by a cord
such as that taught by Sweeney in order to confirm the functionality of the
device before implantation.” Id. at 10. Sweeney pertains to implantable
cardiac defibrillators and pacemakers, and teaches the use of a programmer,
utilizing cables, to retrieve electronic cardiac data from a device that has
been removed from the patient and then to transfer that data to a second
implantable device. Sweeney, col. 1,11. 13—15, col. 7,11. 42—54 (“the second
pulse generator (the device to receive the patient specific data)”), and col. 9,
11. 7-53, Fig. 4.
We do not find persuasive Appellant’s argument that the Examiner
has failed to address the language of claim 2 reciting “configured to receive
said recipient-specific operating parameters [from the implantable
component].” App. Br. 68—70 (emphasis omitted). That language is a
functionally-recited structural limitation, and the Examiner’s well-founded
position as to that structure is readily discemable from the articulation in the
Final Action and the citations to the art therein. Appellant has not apprised
us of error in the Examiner’s rejection of dependent claims 2-4.
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C. The Rejection of Claims 13—15 and 35—37
as Being Obvious over Haubrich and Adams
Claim 13 depends directly from apparatus claim 1, and further limits
the implantable device to a prosthetic hearing device. Claim 35 depends
directly from apparatus claim 24 and recites the same or similar language.
The other claims subject to this rejection are dependent claims that further
specify the type of prosthetic hearing device, namely a cochlear implant
(claims 14 and 36) and a bone conduction device (claims 15 and 37).
The Examiner acknowledged that Haubrich does not disclose a
hearing device, and found that “Adams discloses a comparable telemetry
device wherein the implantable device is a prosthetic hearing device” and
reasoned that “[i]t would have been obvious to modify Haubrich to include
the implantable device as a prosthetic hearing device such as that taught by
Adams as the protocol defined by Haubrich would be seen as functional in
all implantable devices by a person having ordinary skill in the art.” Final
Act. 10 (citing Adams, Fig. 1, col 4,11. 13—31).
Appellant argues that it would not be obvious to add a hearing device
to Haubrich’s pacemaker as “it could wind up killing someone,” and that the
Examiner has “presented] absolutely no rationale to combine” and there is
no “allegation of predictability.” App. Br. 71—72 (claim 13), 74—75 (arguing
that no rationale has been provided for claims 14, 15, 36, and 37); see Reply
Br. 44-48; see id. at 47 (“Would someone put a vibrating bone conduction
device near the heart — a heart of a person that needs a pacemaker? Again,
this underscores how completely reckless and dangerous is the modification
to Haubrich.”). We do not find these arguments to be persuasive. The
Examiner’s articulated rejection does not result in a combined hearing aid
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and pacemaker, but rather involves the application, to a hearing device such
as disclosed in Adams, of Haubrich’s general teachings of telemetry
protocols for implantable devices, and the rejection is based on the reasoning
that persons of ordinary skill in the art of implantable devices6 would
recognize the predictable applicability of Haubrich’s general teachings to
other implantable devices.
Appellant also speculatively argues that that Examiner took official
notice of common knowledge, that “Appellant previously traversed the
assertion that it would have been common knowledge in the art that the
protocol defined by Haubrich would be seen as functional in all implantable
devices,” and that the Examiner’s rejection should be reversed as a matter of
procedure. App. Br. 73—74 (citing Manual of Patent Examining Procedure
(MPEP) § 2144.03(B), (C)); Reply Br. 46-47. Even assuming arguendo
that the Examiner’s reasoning—which notably does not include the phrase
“common knowledge”—constitutes the taking of official notice, it is not
enough for an applicant to merely assert that he or she is traversing the
notice. “To adequately traverse such a finding, an applicant must
specifically point out the supposed errors in the examiner’s action, which
6 We have considered but do not find persuasive Appellant’s argument that
the Examiner must have applied an incorrect definition of the person of
ordinary skill in the art because such a person would not bodily incorporate a
hearing prosthesis into a pacemaker. App. Br. 77—78. The Examiner’s
obviousness rejections are not based on such a bodily incorporation of
physical structures, and the art of record evidences a high level of skill
commensurate with the Examiner’s proposed combination of the references’
teachings. See Ans. 6 (The Examiner referring to the “art area” as pertaining
broadly to a system having an implantable device employing telemetry with
an external device in order to communicate operating parameters.”).
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would include stating why the noticed fact is not considered to be common
knowledge or well-known in the art.'” MPEP § 2144.03(C) (emphasis added)
(citing 37 C.F.R. § 1.111(b)); see Response After Final Office Action
(4/17/15), 16 (“The purported traversal: “Absent a citation by the PTO of a
reference that can be evaluated for all its teachings, Applicant hereby
traverse the assertion that it would have been common knowledge in the art
that the protocol defined by Haubrich where the seat [sic] is functionally all
implantable devices. Applicant thus requests, reiving on §2144.03, that
the PTO cite a reference, and exactly identify where such a reference
teaches the alleged knowledge in the art, or else allow the claims.”).
Additionally, Appellant’s procedural argument is contrary to KSR in that
Appellant effectively is demanding that the Examiner produce a prior art
reference explicitly teaching a reason to combine the references’ teachings.
See KSR Inti. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]he analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for [one] can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”); id.
at 419 (“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.”). Nonetheless, we determine that the Examiner’s
findings and reasoning are supported adequately by the prior art references
of record, which indicate, inter alia, a high level of skill and sophistication
in the art.
As to the dependent claims that each further limit the hearing device
to the respective one of two specific types—claims 14, 15, 36, and 37—we
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do not find to be persuasive Appellant’s argument that the Examiner
improperly “lumps them into the same category” notwithstanding that they
operate differently and thus fails to provide a rationale. App. Br. 74—75; see
Reply Br. 47—48. The Examiner points to a paragraph in Adams that
characterizes a cochlear implant and a bone conduction device as alternative
embodiments of a prosthetic hearing device. See Final Act. 10 (citing
Adams, col. 4,11. 13—31). This evidence is adequate to support the
Examiner’s determination that one of ordinary skill in the art would have
found the use of either type to be obvious.
We affirm the Examiner’s rejection of claims 13—15 and 35—37 as
unpatentable over Haubrich and Adams.
D. The Rejection of Claims 31, 33, and 34
as Being Obvious Over Haubrich and Meadows
The claims subject to this rejection depend indirectly from claim 25.
For the reasons given above, we cannot sustain the rejection of claim 25.
The Examiner found that Meadows discloses the receipt of an identification
code from the external component but has not explained adequately how the
cited portion of Meadows discloses that subject matter. Final Act. 11 (citing
Meadows, col. 7,11. 43—57). Accordingly, the use of Meadows in this
rejection does not cure the underlying defect in the rejection of claim 25, and
we cannot sustain the rejection of dependent claims 31, 33, and 34.
E. The Rejection of Claim 32
as Being Obvious Over Haubrich and Faltys
Claim 32 depends from claim 25, the rejection of which we cannot
sustain for the reasons set forth above. In the rejection of claim 32, the
Examiner relied on Faltys for the disclosure of a speech processor as recited
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Appeal 2016-002595
Application 12/401,600
in claim 32 but did not rely on Faltys in a manner that cures the underlying
defect of the rejection of claim 25. See Final Act. 11 (citing Faltys,
Fig. 2A). Accordingly, we cannot sustain the rejection of dependent
claim 32.
DECISION
The decision of the Examiner to reject claims 6—9, 16—23, and 25—34
is reversed. The decision of the Examiner to reject claims 1, 2—5, 10—15, 24,
and 35—37 is affirmed.
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)(l)(iv).
AFFIRMED-IN-PART
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