Ex Parte KURZ

Patent Trial and Appeal Board

Aug 16, 2016

14326632 (P.T.A.B. Aug. 16, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

HEINZ KURZ GmbH MEDIZINTECHNIK1
Patent Owner, Appellant
____________________

Appeal 2016-005729
Reissue Application 14/126,632
Patent US 6,579,317 B22
Technology Center 3900
____________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Heinz Kurz GmbH Medizintechnik is the Patent Owner and the real party
in interest (Appeal Brief 4).
2 Patent US 6,579,317 B2 (hereinafter “the ’317 patent”) issued
June 17, 2003 to Kurz.
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Patent US 6,579,317 B2
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STATEMENT OF THE CASE
The Patent Owner appeals under 35 U.S.C. § 134 the Examiner’s
rejection of claims 13–23 in the present reissue application, claims 1–12 of
the ’317 patent having been cancelled (Appeal Brief (hereinafter “App. Br.”)
6). The ’317 patent was the subject of Reexamination Control 95/000,662
and Appeal 2013-009718 (hereinafter “the ’9718 appeal”), which was
decided by the Board on May 22, 2014 (hereinafter “Orig. Dec.”; App.
Br. 5). We have jurisdiction under 35 U.S.C. §§ 6(b) and 134.
We AFFIRM.

The ’317 patent is directed to an arrangement for coupling an
implantable hearing device (Abstract). Representative independent claim 13
reads as follows (App. Br., Claims App’x, emphasis added):
13. An arrangement for coupling at least partially a hearing
device implantable in a middle ear or a passive auditory ossicles
prosthesis on an ascending bracket of a human ossicle chain,
the arrangement comprising:
a body,
a spherical joint connected to said body, and
a clip moveably coupled to said body through said
spherical joint and formed so as to automatically mount on the
ascending bracket, said clip having a plurality of spring tongs
which are axially displaceable over the ascending bracket,
wherein said spherical joint forms the movable coupling
between said body and said clip in that two bars of the
spherical joint extend away from a spherical joint connection to
said body between which two bars a sphere is moveably
supported in through-bores,
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wherein said through-bores are defined by diameters that
are smaller than a diameter of the sphere at positions where the
sphere is in contact with the two bars, and
wherein a rod member extends radially from a surface of
said sphere to connect said sphere to said clip.

The Examiner rejects various claims as unpatentable under 35 U.S.C.
§ 103(a) as follows:
1. Claims 13, 14, and 16–18 over Hüttenbrink3 in view of Treace,4
Müller,5 and Hahn.6
2. Claim 15 and 19–23 over Hüttenbrink in view of Treace, Müller,
Hahn, and Prescott.7
3. Claims 13–18 over Müller in view of Treace, and Hahn.
4. Claims 15 and 19–23 over Müller in view of Treace, Hahn, and
Prescott.

ANALYSIS
Only those arguments actually made by the Patent Owner have been
considered in this decision. Arguments that the Patent Owner could have
made but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).

3 Hüttenbrink, DE 197 44 789 A1, published April 16, 1998. This decision
references the English language translation of record.
4 Treace, US 4,281,419, issued August 4, 1981.
5 Müller, US 6,537,199 B1, issued March 25, 2003.
6 Hahn, US 2,926,874, issued March 1, 1960.
7 Prescott, US 5,061,280, issued October 29, 1991.
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Rejection 1
Claims 13, 14, and 16–18 stand rejected as obvious over Hüttenbrink
in view of Treace, Müller, and Hahn. The Examiner relies on the findings of
fact set forth in the Right of Appeal Notice in the ’9718 appeal (Ans. 3–5).
In this regard, the Examiner finds that Hüttenbrink discloses the invention
substantially as claimed but fails to disclose “a ball and socket joint, i.e. a
spherical joint, connected to its body,” wherein the joint comprises two bars
with through-bores that moveably support a sphere (id. at 5). The Examiner
finds that “Treace teaches that spherical joints were well known in the art for
providing pivotal movement between the head and shaft of an auditory
prosthesis,” and a person of ordinary skill in the art would have understood
from Treace that any known ball and socket joint would have been equally
applicable for this function (id. at 6; see also Treace, col. 4, ll. 15–23). The
Examiner also relies on Figure 29 of Müller for disclosing that two-bar ball
and socket joints were known in the art (Ans. 6), and concludes that it would
have been obvious to a person of ordinary skill in the art to have modified
Hüttenbrink to “include a moveable joint as a two-bar ball and socket joint,
in order to bring into effect relative movement of the shaft and head of the
prosthesis.” Id.
The Examiner concedes that the above combination of Hüttenbrink,
Treace, and Müller does not result in a two-bar ball and socket joint having
through-bores provided on the two bars that movably support the ball
(Ans. 6–7). However, the Examiner finds that such two-bar spherical joints
having through-bores were known as evidenced by Hahn (id. at 7), and
concludes that:
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absent any teaching of criticality or unexpected results for the
use of the through-bore style spherical joint arrangement
claimed, it would have been obvious to those having ordinary
skill in the art at the time of the invention to have substituted
any known ball and socket type joint, as that of Hahn, for the
modified Hüttenbrink device joint as a matter of routine
engineering design choice of available and well known
functional equivalents for the ball and socket teaching of
Treace.
Ans. 8.
We agree with the Examiner, and address the Patent Owner’s
arguments infra. The Patent Owner initially argues that the statement that
“any known ball and socket joint would have been applicable” as found in
the Original Decision (Orig. Dec. 4) and referred to by the Examiner, was in
reference to canceled claim 1, whereas the present appeal involves claims
not before the Board in the ’9718 appeal (App. Br. 14). However, while
claims involved in the present appeal may be new, that fact does not detract
from applicability of the teachings of the prior art applied. As noted above,
the teachings of using any known ball and socket joint for providing a
movable joint is from Treace (Treace, col. 4, ll. 15–23). The Examiner can
properly rely upon such teachings, regardless of whether such teachings
were previously applied to a claim that has been canceled and not presently
on appeal.
The Patent Owner also argues the various prior art references
separately. For example, the Patent Owner argues that Hüttenbrink and
Treace disclose coupling to an eardrum instead of an implanted hearing
device, and that Treace does not include a clip (see, e.g., App. Br. 15–16).
However, such arguments are unpersuasive because they do not take into
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account what the collective teachings of the prior art would have suggested
to one of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425
(CCPA 1981); In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986). Both
Hüttenbrink and Müller disclose a clip, while Müller further discloses
coupling to an implanted hearing device (see Hüttenbrink, Figs. 1 and 2;
Müller, Figs. 1 and 2). The Patent Owner likewise argues that Müller fails
to disclose a two-bar ball and socket joint where the ball sits in through-
bores (App. Br. 17). However, Müller discloses two bars contoured to form
the ball and socket joint (Müller, Fig. 29; see also Ans. 17), while Hahn
further teaches a ball and socket joint including through-bores (Hahn, Fig.
1).
The Patent Owner argues a person of ordinary skill would not have
modified Hüttenbrink in the manner suggested because its stem (or body) is
inherently flexible, and thus, there is “no need for a spherical joint to operate
as designed.” App. Br. 18. According to the Patent Owner, the suggested
modification would change its “operation as intended.” Id. However, we
are in agreement with the Examiner that:
those in the art would have recognized from the combined
teachings that more than one way to fit a patient were available
at the time, and that exchanging a flexible connection for an
adjustable one was an obvious exchange of functional
equivalents.
Ans. 17.
While the Patent Owner argues that the Examiner offers no support
for the conclusion that it would have been obvious to modify Hüttenbrink in
the manner suggested (Reply Br. 5), the record clearly establishes that both
flexible connections and pivotable connections via spherical joints were
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known in the ossicular prosthesis art (see generally, Hüttenbrink, Treace,
and Müller). In this regard, “[w]hen a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
it, either in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, §103 likely bars its patentability.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We also note that “[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 421.
Moreover, the Patent Owner does not persuasively explain how the
modification of Hüttenbrink in the manner suggested would change its
operation. The flexibility of the stem in Hüttenbrink allows for movement
of the ends of the prosthesis disclosed thereby facilitating fitment. The use
of a ball and socket joint would allow for the same operation of allowing
movement of the ends of the prosthesis.
The Patent Owner also argues that “Hahn did not consider
constructing his spherical joint to be connected to the body.” App. Br. 20.
However, Hahn is merely relied upon by the Examiner for disclosing that in
two-bar type of ball and socket joints, the provision of through-bores in the
bars for movably supporting the ball was well-known (Ans. 7). The fact that
the ball of Hahn is not connected to “a body” does not detract from the fact
that it discloses a spherical joint of the type recited in claim 13.
The Patent Owner further submits arguments asserting deficiencies in
modifying Treace’s device, and the lack of reasoning to do so in the
Examiner’s rejection (Reply Br. 4). However, as noted above, Rejection 1 is
premised on modifying Hüttenbrink, Treace merely being relied upon for
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teaching that various spherical joints well-known in the art can be used to
allow for pivotal movement between the head and shaft of a prosthesis (Ans.
6).
Finally, the Patent Owner argues that the Examiner picks and chooses
elements found in the prior art that need further modification in order to
meet the claim limitations, which indicates improper hindsight (Reply Br. 6).
However, as noted above, a person of ordinary skill in the art is also a person
of ordinary creativity and “in many cases a person of ordinary skill will be
able to fit the teachings of multiple patents together like pieces of a puzzle.”
KSR, 550 U.S. at 420, 421. We agree with the Examiner that claim 13 as a
whole would have been obvious to a person of ordinary skill in the art in
view of the teachings of Hüttenbrink, Treace, Müller, and Hahn.
The Patent Owner does not argue separately the remaining claims
subject to Rejection 1. Correspondingly, in view of the above, Rejection 1 is
affirmed.

Rejection 2
Claims 15 and 19–23 stand rejected as obvious over Hüttenbrink in
view of Treace, Müller, Hahn, and Prescott. Claim 15 depends from
claim 13, and further recites a “means for connection with the hearing device
or the auditory ossicles prosthesis.” App. Br., Claims App’x. In rejecting
these claims as obvious, the Examiner relies on the findings and conclusions
set forth relative to Rejection 1 discussed supra, and further relies on
Prescott for establishing that:
those in the art were well aware of the fact that an auditory
prosthesis could be separately attached to the prosthesis shaft
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by means of a plug connection. See for example Figure 2 [of
Prescott], with insert segment 34 of the prosthesis fitting within
the tubular shaft 24, i.e. the plug sleeve.
Ans. 8–9.
We generally agree with the Examiner, and address the Patent
Owner’s arguments infra. The Patent Owner argues that Prescott fails to
overcome the shortcomings of Rejection 1 (App. Br. 22), but as discussed
supra, we are not persuaded of any deficiencies with respect to Rejection 1.
The Patent Owner also argues that the prosthesis of Prescott “is not
configured so that the auditory prosthesis is separately attached to the shaft
using a plug connection,” but instead, Prescott disclose a snug fitment of
intermediate portion 26 within tubular shaft portion 24, which is retained by
silicone adhesive (App. Br. 22; see also Reply Br. 8).
However, we agree with the Examiner that whereas the Patent
Owner’s argument appears to imply that the claims at issue require a
removable connection, the claims do not recite removability (Ans. 20). The
components of Prescott are clearly separate and connected together,
regardless of whether they are removable. Moreover, as pointed out by the
Examiner (Ans. 20), the Patent Owner ignores Prescott’s further disclosure
that “first end 28 and insert segment 34 can be threaded into head portion 22
and shaft portion 24, respectively, or other suitable securing means could be
used, as desired.” See Prescott, col. 4, ll. 32–36. Such a connection would
have been understood by those in the art to be a removable connection (see
Ans. 20). Furthermore, while not relied upon for affirming the present
rejection, we also observe that Müller, also relied upon in the present
rejection, discloses coupling 23 for connecting hearing aid converter 13 and
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coupling rod 19 to coupling end 18 (with its spring arms 24) (see Müller,
col. 8, ll. 33–41; Fig. 2).
Thus, we are not persuaded that the Examiner erred with respect to
Rejection 2, and affirm the same.

Rejection 3
Claims 13–18 stand rejected as obvious over Müller in view of Treace
and Hahn. The Examiner relies on the findings of fact set forth in the Right
of Appeal Notice in the ’9718 appeal (Ans. 10–11). In this regard, the
Examiner finds that:
Referring to Fig. 29 and col. 12, lines 25–54, Müller depicts a
movable spherical joint in the form of ball 113 (the “sphere”)
supported in recesses formed by concave spring arms 119 (the
“bars”) that together form a ball receiver 121 at an upper side of
a spring arm connection site 118, with an elastic clamp (the
spring clip) formed by “spring arms” 119 at a lower side of the
connection site 118. Spreadable passage 87 receives a target
ossicle.
Ans. 10.
The Examiner further finds that:
Müller does not specifically describe that the elastic clamp clip
is for attachment to the ascending bracket, however those
having ordinary skill in the art would have understood from the
teaching that the elastic clamp clip is structurally suited for, and
inherently capable of, automatically mounting on such an
ossicular structure. To the extent that one might not consider
such mounting inherent, given the explicit discussion by Müller
that the invention is for mounting broadly on “part of the
ossicular chain” (column 5 at 62), it would have been obvious
to have modified the clips to facilitate engagement with any
specific part of the ossicular chain.
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Ans. 10–11.
Similar to Rejection 1, the Examiner further relies on Treace for
teaching that different types of spherical joints may be used to provide
pivotal movement (Ans. 11; see also Treace, col. 4, ll. 15–23) to conclude
that substitution of a different type of ball and socket joint would have been
routine to those in the art (Ans. 12). The Examiner further relies on Hahn
for disclosing a spherical joint wherein the bars have a through-hole to
conclude substituting such a spherical joint for the one in Müller would have
been “a matter of routine engineering design choice of available and well
known functional equivalents,” so that claim 13 would have been obvious to
those in the art (Ans. 12).
Similar to Rejection 1, the Patent Owner again argues that the
statements in the Original Decision as to the teachings of Müller were in
reference to canceled claim 1, and that claim 13 of the present appeal was
not before the Board when the Original Decision was rendered (App.
Br. 25). However, this line of argument is unpersuasive for reasons similar
to that set forth above relative to Rejection 1.
The Patent Owner also argues that modifying the upper end of spring
arms 119 of Müller to attach to the target ossicle would render Müller
inoperable (App. Br. 25; see also Reply Br. 9). However, the Patent Owner
appears to misunderstand the Examiner’s rejection, which is that the ball and
socket joint formed by the upper side/end of the spring arms 119 can be
substituted with the joint disclosed in Hahn, and if necessary, modify the
lower side/end of spring arms 119 in Müller so that spreadable passage 87
forming the elastic clamp clip can be attached to an ascending bracket (Ans.
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10–11). As the Examiner notes, claim 13 does not require connection at
both ends to an ossicular structure (id. at 21), and we do not understand the
Examiner’s rejection as suggesting such an attachment.
The Patent Owner also submits arguments directed to the structure of
Treace and its failure to disclose various limitations recited in claim 13
(App. Br. 26). However, Treace is not being relied upon for disclosing
structure that satisfies the various limitations of claim 13 (Ans. 21). As to
Hahn, the Patent Owner’s arguments (App. Br. 27) are substantively the
same as those submitted with respect to Rejection 1, which are unpersuasive
for the reasons already discussed.
The Patent Owner does not argue separately the remaining claims
subject to Rejection 3. Correspondingly, in view of the above, Rejection 3 is
affirmed.

Rejection 4
Claims 15 and 19–23 stand rejected as obvious over Müller in view of
Treace, Hahn, and Prescott. Rejection 4 is generally similar to Rejection 2
except that instead of relying on the factual findings and conclusions set
forth in Rejection 1, the Examiner relies on the factual findings and
conclusions set forth in Rejection 3 (Ans. 14). The Patent Owner’s
arguments regarding Rejection 4 are likewise substantively similar to those
submitted with respect to Rejection 2 (App. Br. 29), and are unpersuasive for
substantially the same reasons discussed supra.
The Patent Owner further argues that the Examiner misunderstands its
argument in that there is no movable coupling or connection disclosed in
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Prescott (Reply Br. 10–11). However, the Patent Owner again argues
Prescott individually. In the rejection, the movability of the coupling results
from the combination of Müller, Treace, and Hahn, which includes a
spherical hinge. Similar to Rejection 2, Prescott is merely relied upon for
disclosing separate attachment of the prosthesis to the shaft.
Thus, in view of the above, we affirm Rejection 4.

ORDER
Rejections 1–4 are 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)(1)(iv).

AFFIRMED

Patent Owner:
STRIKER STRIKER & STENBY
103 East Neck Road
Huntington, NY 11743