Ex Parte Goodman et al

Patent Trial and Appeal Board

Feb 20, 2018

13989614 (P.T.A.B. Feb. 20, 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.
2000-112 6974
EXAMINER
FLORY, CHRISTOPHER A
ART UNIT PAPER NUMBER
3762
MAIL DATE DELIVERY MODE
13/989,614 07/27/2013
67074 7590 02/21/2018
HENRICKS SLAVIN AND HOLMES, LLP
ADVANCED BIONICS CORPORATION
840 APOLLO STREET
SUITE 200
EL SEGUNDO, CA 90245
James P. Goodman
02/21/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES P. GOODMAN and ADAM SMITH
Appeal 2017-000865
Application 13/989,6141
Technology Center 3700
Before ERIC B. GRIMES, DEBORAH KATZ, and
ELIZABETH A. LaVIER, Administrative Patent Judges.
LaVIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner’s rejection of claims 29 and 31—59. We have jurisdiction under
35 U.S.C. § 6(b). For the reasons set forth below, we REVERSE.
BACKGROUND
The Specification relates to housings for sound processors, such as
those used in cochlear implants. See generally Spec. 1—2.
Claim 29 is illustrative:
29. A sound processor for use with a cochlear implant, the
sound processor comprising:
1 Appellants state the real party in interest is Advanced Bionics AG. Appeal
Br. 3.
Appeal 2017-000865
Application 13/989,614
a housing including
a main portion including a power supply
receptacle,
a seal, defining a closed geometric shape with an
axis, carried by the housing main portion, and
a power supply receptacle cover movable in the
axial direction between an open state where the
power supply receptacle is accessible and a closed
state where the power supply receptacle is not
accessible,
the main portion, seal and power supply receptacle cover
being respectively configured and arranged such that
movement of the power supply receptacle cover from the
open state to the closed state results in a radial force
being applied to the seal by the power supply receptacle
cover,
the seal including a deflectable portion and defining a
material-free region into which the deflectable portion
deflects in response to the application of radial force by
the power supply receptacle cover,
sound processor circuitry carried within the housing; and
a communication device adapted to operably connect the
sound processor circuitry to the cochlear implant.
Appeal Br. 33 (Claims Appendix) (emphases added).
APPEALED REJECTION
Claims 29 and 31—59 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Narisawa2 and either Hang3 or Petchey.4 Final Act. 2.
2 Narisawa et al., 6,041,128, issued Mar. 21, 2000.
3 Hang et al., US 2011/0287688 Al, published Nov. 24, 2011.
4 Petchey et al., US 2013/0003329 Al, published Jan. 3, 2013.
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Appeal 2017-000865
Application 13/989,614
DISCUSSION
Appellants argue, inter alia, that none of the references teaches or
suggests “the seal including a deflectable portion and defining a material-
free region into which the deflectable portion deflects in response to the
application of radial force” as required by claim 29 (see Appeal Br. 15—16,
28), or the corresponding limitations in the only other independent claim on
appeal, claim 44 (see id. at 21, 30-31).5 We treat claim 29 as representative.
As Narisawa’s O-ring seal does not have a deflectable portion, the Examiner
relies on either Hang or Petchey for this limitation. See Final Act. 4—5.
Figure 5 of Hang is reproduced below:
5 Claim 44 requires “a seal. . . including a deflectable portion, and carried on
a surface of the housing main portion” and a “portion of the seal,” and “means
for creating an air gap between the surface of the housing main portion on
which the seal is carried and the portion of the seal to which the radial force
is applied.” Appeal Br. 36—37 (Claims Appendix).
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Appeal 2017-000865
Application 13/989,614
FIG.5
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Figure 5 of Hang shows a controller/power module 500 including lower
cabinet member 510, upper cabinet member 520, battery cabinet member
530, and two-way gasket 550. Hang 144. The groove 552 in Hang’s two-
way gasket 550 accepts the annular flange 534 of the battery cabinet
member 530. Id. 147.
Appellants argue that, upon application of (axial) force to close the
cabinet in Hang, “[n]o portion of the gasket 550 will be compressed into the
volume defined by the groove 552 because that volume is occupied by the
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Appeal 2017-000865
Application 13/989,614
flange 534 on which the gasket is mounted,” and that Hang teaches no other
alternative gasket mounting arrangements that would achieve such a result.
Appeal Br. 15. We agree. The Examiner responds that claim 29 “do[es] not
specify or require that the ‘material-free region’ remain material free” (Ans.
6), but as Appellants point out (see Reply Br. 5), this interpretation neglects
to account for the fact that claim 29 specifically requires that the material-
free region must remain available for the deflectable portion to deflect into
“in response to” the force applied.
Figure 1 of Petchey is reproduced below:
Figure 1
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Appeal 2017-000865
Application 13/989,614
Figure 1 of Petchey shows a cross-sectional view of a handset device, in
which ribbed gasket 31/1 provides a water-tight, impact-resistant seal
between front cover 18/1 rear cover 19/1. The front and rear covers are held
together by main screws 25/6. Battery door 20/1 is flush-mounted to the
rear cover. See Petchey ]Hf 27—28, 43.
Appellants argue that “Petchey illustrates and describes a front cover,
a rear cover and a gasket between the two. The battery door 20/1, which is
flush mounted to the opposite side of the rear cover 19/1, is not in contact
with the gasket 31/1.” Appeal Br. 27. The Examiner responds that the
gasket and the battery door in Petchey are “interrelated,” but that in any
case, “the benefits to the ribbed gasket taught by Petchey would be
recognized as readily applicable to the O-ring 45 of Narisawa regardless of
whether gasket 31/1 is positioned between the front and back covers, or the
front cover and the battery cover.” Ans. 7. Appellants reply:
The Examiner’s Answer failed, for example, to provide any
support for the implicit assertion that teachings concerning a
gasket, which is axially compressed between two structures that
are secured to one another with screws, are applicable to an O-
ring on a cover, such as the O-ring 45 on the Narisawa cover
42, that is intended to be removed and replaced during normal
usage. Petchey, who did not include a gasket for the battery
door 20/1, apparently came to a different conclusion than the
Examiner.
Reply Br. 9. We find that Appellants have the better position. Although the
Examiner is correct that Petchey describes the battery door as “coupled
with” the ribbed gasket (Ans. 7 (quoting Petchey 129) (emphasis omitted)),
the cited portion of Petchey refers to Figure 1, which does not show the
battery door in direct contact with the gasket. Rather, the battery door
attaches to the back cover. The Examiner’s suggestion (see Ans. 7) that
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Appeal 2017-000865
Application 13/989,614
Petchey’s ribbed gasket (which in Petchey is sandwiched between two cover
pieces secured together by screws and not designed to separate during
normal use) would be readily understood as equally useful in sealing
together two pieces (i.e., the battery door and the back cover) intended for
routine opening and closing, is not supported by the record. Accordingly,
we find that modifying Petchey as the Examiner suggests, and combining it
with Narisawa to arrive at the claimed invention, would not have been
obvious, except perhaps in hindsight.
As we find that the Examiner’s reliance on Hang or Petchey to teach
the missing limitations of Narisawa was in error, we reverse the rejection of
representative claim 29.
CONCLUSION
The rejection of claims 29 and 31—59 is reversed.
REVERSED
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