Ex Parte Steinhardt et al

Patent Trial and Appeal Board

Mar 14, 2016

11544814 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111544,814 10/06/2006
7590 03/14/2016
STRIKER, STRIKER & STENBY
103 EAST NECK ROAD
HUNTINGTON, NY 11743
FIRST NAMED INVENTOR
Uwe Steinhardt
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3930 9919
EXAMINER
WOZNICKI, JACQUELINE
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
03/14/2016 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 UWE STEINHARDT and HEINZ KURZ
Appeal2014-002512
Application 11/544,8141
Technology Center 3700
Before JOHN C. KERINS, STEP AN ST AI CO VICI, and LEE L. STEPINA,
Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Uwe Steinhardt and Heinz Kurz (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner's decision rejecting claims 3, 9, 12, 15, 16,
18-21, 23, and 24.2 We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
According to Appellants, the real party in interest is Heinz Kurz
GmbH Medizintechnik. Appeal Br. 3 (filed Sept. 30, 2013).
2 Claims 1, 2, 7, 8, 11, 13, and 14 have been canceled and claims 4---6,
10, 17, and 22 have been withdrawn by the Examiner. Id.
Appeal2014-002512
Application 11/544,814
TI'-JVENTION
Appellants' invention "relates to an ossicle prosthesis which replaces
or bridges at least one component or parts of a component of the ossicular
chain." Spec. 1, 11. 3--4.
Claim 24, the sole independent claim, is representative of the claimed
invention and reads as follows:
24. An ossicle prosthesis located in a middle ear of a human
ear and connectible to at least one of a tympanic membrane, an
ossicular chain, an incus, stapes and an inner ear, comprising:
a first fastening element connectible to the tympanic
membrane;
a second fastening element;
a longitudinal shank having a first end and a second end
longitudinally opposite said first end, wherein the second end is
connected to said second fastening element and said first end
has a plurality of a rotary elements having a spherical surface
and located one after the other along an axis of said shank;
a receiving part rigidly connected to said first fastening
element and having a cylindrical cavity with a circumferentially
closed, uninterrupted inner wall surrounding said longitudinal
shank around its axis;
wherein said receiving part is made of an elastic material
selected from the group consisting of silicone and PTFE;
wherein said receiving part is inserted into the first
fastening element by being pressed into the first fastening
element;
wherein said rotary elements and said receiving part with
said cylindrical cavity surrounding said longitudinal shank
around its axis are configured such that said rotary elements
with said longitudinal shank can be extended through said
cylindrical cavity of said receiving part, and some of said
spherical elements which extend past said receiving part can be
cut off, while at least one of said rotary elements remains in
said cylindrical cavity of said receiving part, and wherein said
cylindrical cavity surrounding said longitudinal shank around
its axis has a diameter which is slightly smaller than a diameter
2
Appeal2014-002512
Application 11/544,814
of said rotary elements so that said cylindrical cavity of said
receiving part slightly presses against said at least one rotary
element received in said cylindrical cavity.
THE REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 3, 18, 19, 21, and 24 under 35 U.S.C.
§ 103(a) as being unpatentable over Appellants' Admitted Prior Art
(AAPA)3 and Hurst (US 3,710,399, iss. Jan. 16, 1973).
II. The Examiner rejected claims 9, 12, 15, 16, and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over AAPA, Hurst, and Prescott (US
6,168,625 Bl, iss. Jan. 2, 2001).
III. The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over AAP A, Hurst, and Knox (US 6, 197 ,060 B 1, iss. Mar. 6,
2001).
ANALYSIS
Rejection I
The Examiner finds that AAP A discloses most of the limitations of
claim 1 including "a first fastening element connectable to the tympanic
membrane; a second fastening element;" and "a receiving part rigidly
connected to said first fastening element." Non-Final Act. 5 (citing AAP A,
Fig. 1 of AAPA as annotated by the Examiner at Non-Final Act. 4 (mailed
July 12, 2013)). The Examiner relies on Hurst for teaching an ossicle
We derive our understanding of AAP A from the English machine
translation of DE 20 2005 003 782 Ul, pub. May 19, 2005, contained in the
image file wrapper of this application. See Spec. I, 1. 12.
3
Appeal2014-002512
Application 11/544,814
prosthesis including "a closed, uninterrupted cylindrical wall (Figure[] 2 and
Sec AA, item 4) surrounding the longitudinal shank that connects the first
tympanic membrane fastening element [9] with a second fastening element
(Figures 1 and 2, item 10)." Id. at 6-7. The Examiner concludes that:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify AAP A by using
circumferentially closed, uninterrupted inner walls surrounding
the longitudinal shank of AAP A as is taught by Hurst in order
to create a stable connection between the tympanic membrane
fastening element and a second fastening element.
Id. at 7.
Appellants argue that "even if the two struts 13, 13' of AAP A were
identified as the 'receiving part 33' of the present invention, the important
feature of a 'circumferentially closed cylindrical cavity' ... [is] still missing
in AAP A as a matter of principle because of the totally different geometries
of the two ossicle prostheses." Br. 8. Appellants assert that "a change from
the [above] disclosed configuration of AAP A with two parallel struts 13, 13;
to that of the present invention having all the features of claim 24 in
combination constitutes a critical change in operation of the device." Id.
Appellants argue that "[t]he two devices would simply not work in the same
way." Id.
We are not persuaded by Appellants' arguments because they are not
commensurate with the Examiner's rejection. Appellants cannot show non-
obviousness only by attacking the teachings of AAPA individually when the
rejection as articulated by the Examiner is based on a combination of AAPA
and Hurst. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). In this case, the Examiner's rejection is based on a modification of
AAPA's walls "by using circumferentially closed, uninterrupted inner walls
4
Appeal2014-002512
Application 11/544,814
surrounding the longitudinal shank of AAPA as is taught by Hurst." Non-
Final Act. 7; see also Hurst, Fig. 2 and Sec. AA. We agree with the
Examiner that "[t]he rejection of record relies upon AAPA in view of Hurst
to teach that both flexible and stable connections within ossicle prostheses
are known in the art." Ans. 11 (emphasis omitted). While Appellants are
correct that AAP A fails to teach a "circumferentially closed cylindrical
cavity" (see Br. 8), the Examiner acknowledged this precise point and relies
upon Hurst as disclosing this element of the claim (see Non-Final Act. 6-7).
Moreover, Appellants have not persuasively shown error in the Examiner's
reasoning for modifying the ossicle prosthesis of AAP A with the cylindrical
connector of Hurst.
We further note that Appellants do not sufficiently explain what the
alleged critical change in operation of the device of AAP A would be, nor
why AAPA's modified device would not function as intended. See Br. 8.
As the Examiner explains, Hurst teaches that "stable joints, with 'well-
defined' cylindrical cavities receiving longitudinal shanks[] are known in the
art of ossicle prostheses." Ans. 13 (citation omitted). Hence, the Examiner
has a reasonable basis for determining that AAPA's device, as modified by
Hurst, will function as intended, namely, as an auditory ossicle prosthesis to
transfer sound to the inner ear. Appellants have not persuaded us otherwise.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claims 3, 18, 19, 21, and 24, as unpatentable
over AAP A and Hurst.
5
Appeal2014-002512
Application 11/544,814
Rejections 11and111
Appellants do not present any other substantive arguments with
respect to Rejections II and III. See Br. 10. Therefore, for the same reasons
as discussed supra, we likewise sustain Rejections II and III.
SUMMARY
The decision of the Examiner to reject claims 3, 9, 12, 15, 16, 18-21,
23, and 24 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)(l )(iv).
AFFIRMED
6