Peter B.J. Van Gerwen

Patent Trials and Appeals Board

Mar 23, 2022

2017008602 (P.T.A.B. Mar. 23, 2022)

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. 12/957,085 11/30/2010 Peter B.J. Van Gerwen 5441-366 1511 111614 7590 03/23/2022 Pilloff Passino & Cosenza LLP 2000 Duke Street Suite 300 Alexandria, VA 22314 EXAMINER KUHLMAN, CATHERINE BURK ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 03/23/2022 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 rpilloff@pilloffpassino.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PETER B.J. VAN GERWEN ____________________ Appeal 2017-008602 Application 12/957,085 Technology Center 3700 ____________________ Before JAMES P. CALVE, WILLIAM A. CAPP, and ALYSSA A. FINAMORE, Administrative Patent Judges. FINAMORE, Administrative Patent Judge. DECISION ON REHEARING STATEMENT OF THE CASE Appellant filed a Request for Rehearing on December 2, 2019 (“Req. Reh’g”) seeking reconsideration of our Decision on Appeal dated October 2, 2019 (“Dec.”). We have jurisdiction over the Request for Rehearing under 35 U.S.C. § 6(b). Except for any portion specifically withdrawn on rehearing, this Decision on Rehearing incorporates the Decision on Appeal, including any abbreviations defined therein for citations to the record, in accordance with 37 C.F.R. § 41.52(a)(1). Appeal 2017-008602 Application 12/957,085 2 ANALYSIS As request for rehearing “must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a)(1). A request for rehearing is not an opportunity to rehash arguments raised in the briefs on appeal, nor is it an opportunity to merely express disagreement with a decision. Furthermore, arguments not raised and evidence not previously relied upon in the briefs on appeal are not permitted generally. Id. “Appellant requests: (1) rehearing; (2) rehearing with a new panel of Judges appointed pursuant to the requirements of the Appointments Clause, per the precedential decision in Arthrex, Inc. v. Smith & Nephew, Inc., [941 F.3d 1320 (Fed. Cir. 2019)].” Req. Reh’g 8. Beginning with the latter, after Appellant filed its Request for Rehearing, the Supreme Court issued its decision in United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021) (“Arthrex”). Arthrex does not provide for rehearing by a new panel of judges. See id. at 1988. Turning to the former request, which is simply rehearing, Appellant contends that, by requiring Appellant to show error in the Examiner’s rejections, the Board misapprehends the standard of review set forth in Ex parte Frye, 2010 WL 889747 (BPAI Feb. 26, 2010) (precedential). Req. Reh’g 8 (“The Decision is a violation of Ex Parte Frye, the precedential decision mandating that the PTAB review anew, not just seek reversible error.” (emphasis omitted)). We disagree. As set forth in Frye, “[t]he panel . . . reviews the . . . rejection for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon.” Ex parte Frye, 2010 WL 889747 at *4 (emphasis added). Appeal 2017-008602 Application 12/957,085 3 Appellant also alleges that we overlook many of its arguments on appeal. Appellant reiterates these arguments and expresses its disagreement with our analysis of the arguments. Although Appellant’s disagreement with our analysis of the arguments indicates that we did not overlook the arguments, to be sure, we address Appellant’s alleged overlooked arguments below. In re Smith Appellant contends we overlook its argument that In re Smith, 871 F.3d 1375 (Fed. Cir. 2017) (“Smith”) requires an examiner to put the broadest reasonable interpretation (“BRI”) of a claim term on the record. Req. Reh’g 9-12, 40. Appellant acknowledges we determined that, in accordance In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011) (“Jung”), an express claim construction is not required, but Appellant maintains that Smith overrules Jung. Id. at 11; see also Dec. 6 (explaining that, according to Jung, there is no requirement to make an on-the-record claim construction and determining “the absence of an express claim construction, without more, is not persuasive of error”). We disagree with Appellant’s characterization of Smith as overruling Jung. In Smith, the Federal Circuit did not address Jung or require an express claim construction. Rather, the court determined that the construction of the claim term “body” to encompass other components, such as a mandrel and a cam sleeve, was not the BRI, which is an interpretation consistent with the specification. In re Smith, 871 F.3d at 1382-83. Put simply, the court, in Smith, restated the principle that the BRI is an interpretation consistent with the specification. Id. Thus, contrary to Appeal 2017-008602 Application 12/957,085 4 Appellant’s argument, Smith does not depart from the holding in Jung that there is no requirement for an examiner to make an on-the-record claim construction, and Appellant has not persuaded us that we have misapprehended or overlooked its arguments premised on Smith. Indefiniteness Appellant argues that our analysis of the Examiner’s rejection of claim 35 as indefinite constitutes a new ground of rejection because we limited the Examiner’s construction of the claim term “static.” Req. Reh’g 17. According to Appellant, the Examiner construed “static” to mean “characterized by a fixed or stationary condition” or “lacking movement,” and the Board limited the construction to only the latter. Id. (citing Ans. 10; Dec. 10). We disagree with Appellant that our analysis of the indefiniteness rejection of claim 35 constitutes a new ground of rejection. Our construction of “static” is not new, but rather one of the two alternative meanings that the Examiner put forth. Appellant also argues we use an improper dictionary definition to construe “static” as “lacking movement.” Req. Reh’g 18-27. Per Appellant, we improperly rely on a British definition of “static” as “not active or moving; stationary,” instead of an American one. Id. at 18-20. Appellant maintains that the American definition of “static” as “of bodies, masses, or forces at rest or in equilibrium” is the definition most applicable to the subject matter described in the Specification, and that a person of ordinary skill in the art would understand the conductor described in the Specification is at rest. Id. at 21-27. Appellant further asserts “our conductor is Appeal 2017-008602 Application 12/957,085 5 stationary.” Id. at 25; see also id. at 18 (“[W]e submit that our device is indeed stationary.”). Although Appellant proffers a distinction between two definitions for “static,” namely “not active or moving; stationary” and “bodies, masses, or forces at rest or in equilibrium,” we see no meaningful distinction between them. Both definitions support the construction of “static” as “lacking movement.” In particular, a body at rest lacks movement. Even if we were to construe “static” as “at rest,” as Appellant argues, the scope of claim 35 remains unclear. To wit, applying Appellant’s proposed construction of “static,” claim 35 requires that the conductor body is able to be at rest while conducting mechanical vibrations, and it is unclear how the conductor body can be at rest while conducting mechanical vibrations. Appellant further argues our construction of “static” is limited to only structures that have no vibrations and thus rules out everything in existence above absolute 0° Kelvin. Req. Reh’g 28. Appellant, however, mischaracterizes our construction. As set forth above, we construe “static” as “lacking movement,” without any prescription regarding vibrations or temperature. Appellant goes on to argue that a structure can be static and conduct vibrations. Req. Reh’g 29-30. In support of this argument, Appellant provides the two photographs reproduced below. Id. Appeal 2017-008602 Application 12/957,085 6 The top photograph shows a man with his ear against a railroad track. The second photograph shows an overpass above a road. According to Appellant, these photographs show static structures that conduct vibrations. Id. Claim 35 recites conducting mechanical vibrations with the conductor body static relative to a mastoid bone. The issue is not simply whether a static structure can conduct vibrations, as Appellant argues, but rather whether the recited conductor body can be static while conducting vibrations. The Examiner finds, and we agree, that “the examples in the photographs provided by Appellant are all of rigid structures, while the Appeal 2017-008602 Application 12/957,085 7 conductor is disclosed and claimed as flexible.” Ans. 3. We also agree with the Examiner that Appellant’s Abstract describes the flexible conductor’s transmission of vibrations as a transmission of mechanical movements. Id. at 2 (citing Spec., Abstract); see also Spec., Abstract (“In operation, mechanical movement (e.g., vibrations) may be transferred from the actuator to the middle or inner ear of the recipient by the flexible conductor. These vibrations then induce movement of perliymph in the recipient’s cochlea to cause, for example, perception of the sound by the recipient.” (emphasis added)). In view of the construction of “static” as “lacking movement,” the Examiner has demonstrated sufficiently that it is unclear how the recited conductor body can be static while conducting vibrations, as claim 35 requires. Appellant argues that, by construing the claim term “static,” we acknowledge that the meaning is definite and thus are conflating the standard for indefiniteness with the standard for enablement. Req. Reh’g 30-31. We disagree. The rejection of claim 35 as indefinite is not premised solely on the meaning of “static.” Rather, claim 35 is indefinite because it is unclear how the recited conductor body can be static while conducting vibrations. As we explain in the Decision on Appeal, “[a] claim is indefinite when it contains words or phrases whose meaning is unclear to a person of ordinary skill in the art.” Dec. 7 (citing Ex parte McAward, 2017 WL 3669566 at *5 (PTAB Aug. 25, 2017)). In view of the construction of “static” as “lacking movement” and the conduction of vibration requiring movement, the recitation of “conduct[ing] mechanical vibrations . . . with the conductor body static relative to a mastoid bone” obfuscates the meaning of “static” and renders it unclear. As we further Appeal 2017-008602 Application 12/957,085 8 explain in the Decision on Appeal, the recitation of conducting mechanical vibrations with a static conductor body describes how the device works, and “[t]hat this uncertainty may also raise a question of enablement does not show a deficiency in the Examiner’s indefiniteness rejection.” Id. Additionally, Appellant reiterates its arguments from the briefing on appeal and asserts we did not really address the arguments in violation of In re Frye. Req. Reh’g 31-39. We disagree with Appellant that we have overlooked the arguments in its briefing on appeal. We address these arguments in the Decision on Appeal (Dec. 6-10), and we further address them in the preceding discussion of the rejection of claim 35 as indefinite. In view of the foregoing, Appellant has not persuaded us that we have misapprehended or overlooked its arguments regarding the rejection of claim 35 as indefinite. We, therefore, maintain our decision to sustain the rejection of claim 35. Anticipation by Ball Claim 36 Appellant argues we overlook that claim 36 requires the conductor body, not a component connected to the conductor body, to be fixed relative to a mastoid bone and thus improperly construed claim 36 to cover any component of the hearing prosthesis as being fixed to a mastoid bone. Req. Reh’g 42. We disagree with Appellant. Claim 36 recites “the conductor body fixed to a mastoid bone.” Claim 36, however, does not specify how the conductor body is fixed to a mastoid bone or require that the conductor body is directly attached to a mastoid bone, as Appellant’s argument suggests. As set forth in the Decision on Appeal, the Examiner relies on Appeal 2017-008602 Application 12/957,085 9 Ball’s compliant connecting member 225B for disclosing the recited conductor body, and the Examiner shows that compliant connecting member 225B is fixed to a mastoid bone. Dec. 13. Specifically, the Examiner finds compliant connecting member 225B is fixed to a mastoid bone because compliant connecting member 225B is attached to output transducer 24 within housing 10 which is implanted or embedded within mastoid bone 14. Id. (citing Final Act. 5; Ans. 4). Appellant also argues we overlook its argument that the Examiner has not established certain components would rattle around, absent being fixed. Req. Reh’g 42. Appellant further argues there is no evidence that implanting and embedding a device into a mastoid bone is fixing the device to the mastoid bone. Id. at 43-44. In the Answer, the Examiner finds: [I]t would be clear to one of ordinary skill in the art that implanting or embedding within the mastoid bone would fix the housing relative to the mastoid bone, otherwise the device could become dislodged or “rattle” around within the mastoid bone or middle ear, therefore the conductor fixed to the actuator of the housing is also considered to be fixed to the mastoid bone. Ans. 4. Although Appellant criticizes the Examiner’s explanation as to why implanting or embedding within a mastoid bone discloses fixing to a mastoid bone, there is no dispute that Ball discloses its device is implanted or embedded within a mastoid bone. Ball expressly discloses “implanting an implantable hearing device into a mastoid bone” (Ball 5:14-15) and “[m]ost implantable devices are imbedded in the mastoid bone” (id. at 8:13). Ball’s Figure 4 shows various components, including output transducer 24, housed within device 10 embedded in mastoid bone 14. Ball does not expressly disclose device 10 is fixed to a mastoid bone. Determining whether a Appeal 2017-008602 Application 12/957,085 10 reference discloses a claim element, however, is not an ipsissimis verbis test. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). As implanting and embedding are types of fixation, the Examiner has demonstrated sufficiently that Ball’s compliant connecting member 225B, via its attachment to output transducer 24 housed within device 10, is fixed to a mastoid bone. Additionally, Appellant reiterates its arguments for claim 36 from the briefing on appeal. Req. Reh’g 44-53. We address these arguments in the Decision on Appeal (Dec. 5-6, 13-14), and we further address them in the preceding discussion of the rejection of claim 36. In view of the foregoing, Appellant has not persuaded us that we have misapprehended or overlooked its arguments regarding the rejection of claim 36. We, therefore, maintain our decision to sustain the rejection of claim 36. Claim 37 Appellant argues we have not properly construed claim 37. Req. Reh’g 53-55. Specifically, Appellant contends we are keeping the BRI of claim 37 a secret. Id. at 55. We disagree with Appellant that the BRI of claim 37 is a secret. Rather, as we explain in the Decision on Appeal, the Examiner construes claim 37 to encompass Ball’s compliant connecting member, which is coated with silicone. Dec. 15 (citing Final Act. 6; Ans. 4). Appellant further argues we overlook its argument that Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) bars a section 102 rejection. Req. Reh’g. 55. We disagree with Appellant that we overlook this argument. The Federal Circuit, in Net MoneyIN, held that “the prior art reference-in order to anticipate under 35 U.S.C. § 102-must not only Appeal 2017-008602 Application 12/957,085 11 disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, 545 F.3d at 1369 (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). In the Decision on Appeal, we explain how Ball discloses the limitations of claim 37 as arranged in the claim. To wit, claim 37 defines the flexible conductor body in terms of its function, namely, “hav[ing] an impedance mismatch with surrounding tissues when implanted in the recipient.” Dec. 15 (citing Appeal Br., Claims App.). For a claim element that is defined functionally, the Office meets its burden when there is a reason to believe that the functional limitation is an inherent characteristic of the prior art. Id. (citing In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997)). Like Appellant’s flexible conductor, Ball’s compliant connecting member includes a silicone coating and conducts sound vibrations from an actuator to a component of the ear. Id. at 15-16 (citing Spec. ¶¶ 25, 48; Ball 3:29-34, 6:60-62; 7:25-29, 7:32-35). In view of the similarities in function and structure between Appellant’s flexible body and Ball’s compliant connecting member, the Examiner has reason to believe Ball’s compliant connecting member has an impedance mismatch with surrounding tissues when implanted in the recipient, as recited in claim 37. Id. at 16. Appellant also argues: “[W]e presented evidence indicating that silicone does not always result in an impedance mismatch. Nowhere is this argument addressed.” Req. Reh’g 56. Appellant’s argument, however, does not include a citation to such evidence, and, after reviewing the briefing on appeal, we see no such evidence. Accordingly, as we explain in the Decision on Appeal, in view of claim 37 defining the flexible body in terms Appeal 2017-008602 Application 12/957,085 12 of the function of having an impedance mismatch with surrounding tissues and the Examiner’s reason to believe the function is an inherent characteristic of Ball’s silicone-coated compliant connecting member, the Examiner has met its burden to show Ball discloses the claimed subject matter, and Appellant has not shown otherwise. Dec. 16. Appellant reiterates its arguments for claim 37 from the briefing on appeal. Req. Reh’g 56-63. We address these arguments in the Decision on Appeal (Dec. 5-6, 14-16), and we further address them in the preceding discussion of the rejection of claim 37. In view of the foregoing, Appellant has not persuaded us that we have misapprehended or overlooked its arguments regarding the rejection of claim 37. We, therefore, maintain our decision to sustain the rejection of claim 37. Claim 38 Appellant argues we evaluate the Specification to construe some claims, including claim 38, but not others, such that the examination of the application is arbitrary and capricious. Req. Reh’g 63-64. We disagree with Appellant that the examination of the application is arbitrary and capricious. As we explain in the Decision on Appeal, the absence of an express claim construction, without more, does not show error in the Examiner’s rejection. Dec. 6 (citing In re Jung, 637 F.3d at 1363). In regard to claim 38 specifically, we explain that the recited sheath is defined in terms of its function, namely “acoustically decouple the conductor body, when implanted in the recipient, from tissue interior to the recipient and proximal to the conductor body.” Id. at 17. As Appellant’s Specification Appeal 2017-008602 Application 12/957,085 13 describes that sheath 206A and sheath 206B may be a coating made from silicone, we find the Examiner has a reason to believe Ball’s silicone coating acoustically decouples the conductor body from tissue interior to the recipient and proximal to the conductor body, as recited in claim 38. Id. at 17-18 (citing Spec. ¶¶ 25, 48; Ball 3:29-34, 6:60-62; 7:32-35); see also In re Schreiber, 128 F.3d at 1478 (“[W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” (quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)). In view of the foregoing, Appellant has not persuaded us that we have misapprehended or overlooked its arguments regarding the rejection of claim 38. We, therefore, maintain our decision to sustain the rejection of claim 38. Independent Claim 31 Appellant argues Ball discloses transmitting vibrations, whereas independent claim 31 recites conducting mechanical vibrations. Req. Reh’g 64. Appellant further argues that, by keeping the BRI of independent claim 31 a secret, the Office has not demonstrated that it is properly construing the claim. Id. at 64-65. As we explain in the Decision on Appeal, the absence of an express claim construction, without more, does not show error in the Examiner’s rejection. Dec. 6 (citing In re Jung, 637 F.3d at 1363). Moreover, we Appeal 2017-008602 Application 12/957,085 14 disagree with Appellant that the BRI of independent claim 31 is a secret. Rather, as Appellant acknowledges, the Examiner construes conducting mechanical vibrations, as recited in independent claim 31, to encompass Ball’s disclosure of mechanically communicating vibrations and transmitting the vibrations to the inner ear. Req. Reh’g 64 (“What is the difference between conduct, which we recite, and transmit, which is what is disclosed in Ball.”); Ans. 4 (citing Ball 2:27-30, 3:24-38, 3:51-55, 4:48-51, 6:38-40). Although Ball does not expressly disclose conducting mechanical vibrations, there is no ipsissimis verbis test for determining whether a reference discloses a claim element. In re Bond, 910 F.2d at 832. As conducting mechanical vibrations, mechanically communicating vibrations, and transmitting vibrations are all ways of moving vibrations through a medium, the Examiner has demonstrated sufficiently that Ball’s compliant connecting member 225B, which mechanically communicates and transmits vibrations, discloses the recited elongate flexible conductor body adapted to vibrationally conduct mechanical vibrations. Appellant also argues we ignore its arguments as to why independent claim 31 is not anticipated in violation of In re Frye and reiterates its arguments from the briefing on appeal. Req. Reh’g 65-74. We disagree with Appellant that we overlook the arguments in its briefing on appeal. We address these arguments in the Decision on Appeal (Dec. 5-6, 10-11), and we further address them in the preceding discussion of the rejection of independent claim 31. In view of the foregoing, Appellant has not persuaded us that we have misapprehended or overlooked its arguments regarding the rejection of Appeal 2017-008602 Application 12/957,085 15 independent claim 31. We, therefore, maintain our decision to sustain the rejection of independent claim 31. Prima Facie Case of Obviousness Appellant argues we overlook its argument that the Examiner’s history of rejecting the claims for indefiniteness and lacking enablement calls into the question the Examiner’s ability to assess the prior art and interpret the claims as obviousness requires. Req. Reh’g 75-76, 163. We disagree with Appellant that we overlook this argument. Rather, in the Decision on Appeal, we explain that any uncertainty as to the scope of the claimed subject matter does not impugn the Examiner’s determination of obviousness. Dec. 43. In particular, we explain that “[a] determination that the language of a claim would have been unclear to a person of ordinary skill in the art is not tantamount to a misunderstanding the invention or a mischaracterization of the level of ordinary skill in the art.” Id. Appellant also reiterates its arguments from the briefing on appeal. Req. Reh’g 76-79. We address these arguments in the Decision on Appeal (Dec. 43) and above in the preceding discussion of obviousness. Obviousness Based on Gilman and Hortmann Independent Claim 1 Appellant argues that incorporating Hortmann’s wire, which looks like a Slinky, into Gilman’s silicone elastomer tube would not result in a longitudinally-rigid conductor, as independent claim 1 requires. Req. Reh’g 80-81. Although Hortmann’s wire filament 45 is coiled, similar to a Slinky, Hortmann teaches “[t]he wire filament makes it possible to achieve a Appeal 2017-008602 Application 12/957,085 16 stable shaping of the curvature of tube 43 to match the respective anatomical conditions.” Hortmann 4:42-44, Fig. 2. As Hortmann teaches its wire filament provides for stable shaping of tube 43, the Examiner has demonstrated sufficiently that adding Hortmann’s wire filament 45 to Gilman’s silicone elastomer tube would result in a longitudinally-rigid conductor. Appellant also argues we overlook its argument that Gilman’s fluid, as opposed to its tube, is the conductor. Req. Reh’g 81-83. Appellant similarly argues Gilman’s tube is flexible and, therefore, is not a vibration conductor. Id. at 84. Appellant further argues we overlook its argument that the Office is not properly implementing the BRI standard and keeping the BRI for independent claim 1 a secret. Id. at 83-84. Beginning with the BRI for independent claim 1, as we explain in the Decision on Appeal, the absence of an express claim construction, without more, does not show error in the Examiner’s rejection. Dec. 6 (citing In re Jung, 637 F.3d at 1363). Albeit not explicit, the BRI of independent claim 1 is not a secret. As set forth in the Decision on Appeal, the Examiner construes the recited flexible conductor to encompass Gilman’s liquid transmission means 140, which includes liquid filled tube 142 that is made from a silicone elastomer. Id. at 28. Furthermore, the Examiner does not rely on only Gilman’s tube for disclosing a flexible conductor, as Appellant’s argument suggests. Rather, the Examiner finds that Gilman’s liquid transmission means 140 discloses a flexible conductor because liquid filled tube 142 is made from silicone elastomer. Id. As it comprises both a silicone elastomer tube, which is flexible, as well as a fluid for conducting vibrations, the Examiner has demonstrated sufficiently that Gilman’s liquid Appeal 2017-008602 Application 12/957,085 17 transmission means 140 discloses a flexible conductor adapted to transport sound vibrations. Appellant argues we misapprehend its argument that Hortmann is not a longitudinally-rigid and laterally-flexible conductor, as recited in independent claim 1. Req. Reh’g 84-85. According to Appellant, the Examiner has repeatedly found that metal wires are longitudinally rigid and laterally flexible, and we mischaracterize the Examiner’s rejection as relying on something other than Hortmann’s platinum wire for disclosing the recited longitudinally-rigid and laterally-flexible conductor. Id. Contrary to Appellant’s argument, we do not mischaracterize the Examiner’s rejection. In rejecting independent claim 1, the Examiner finds Gilman discloses an elongate flexible conductor, namely liquid transmission means 140, but is silent as to the conductor being longitudinally rigid. Final Act. 6. The Examiner further finds Hortmann’s wire 45 allows for stable shaping of the curvature of tube 43. Id. The Examiner determines it would have been obvious to “incorporate a wire similar to that shown by Hortmann into the conductor tube taught by Gilman” to result in the subject matter of independent claim 1. Id. at 7. In the Answer, the Examiner confirms the Examiner is relying on the combination of Gilman’s liquid transmission means, which comprises a fluid-filled silicone elastomer tube, and Hortmann’s wire, to result in a longitudinally-rigid and laterally-flexible elongate flexible conductor. Ans. 7. As set forth in the Decision on Appeal, “[a]ccording to the Examiner ‘incorporation of a wire, even a coiled wire, into a silicone elastomer tube, as in the combination of Gilman in view of Hortmann, will create a tube which is laterally flexible (since it can be bent) Appeal 2017-008602 Application 12/957,085 18 and longitudinally rigid (since it will hold a longitudinal shape).’” Dec. 29 (quoting Ans. 7). Additionally, Appellant reiterates its arguments regarding the rejection of independent claim 1 from the briefing on appeal. Req. Reh’g 85-100. We address these arguments in the Decision on Appeal (Dec. 5-6, 27-32), and we further address them in the preceding discussion of the rejection of independent claim 1. In view of the foregoing, Appellant has not persuaded us that we have misapprehended or overlooked its arguments regarding the rejection of independent claim 1. We, therefore, maintain our decision to sustain the rejection of independent claim 1. Claim 5 Appellant argues we misapprehend its argument about impedance mismatch. Req. Reh’g 101. Specifically, Appellant maintains its argument about impedance mismatch regards the prior art cited in Gilman, not Gilman. Req. Reh’g 101. We disagree with Appellant that we misapprehend this argument. Gilman discloses that prior art hearing aids suffer from sound losses resulting from impedance mismatch. Gilman 4:35-52. For example, sound going from an air-filled tube with a 2 millimeter bore into the air space of the middle ear can suffer a reduction in sound energy of 88%. Id. at 4:38-43. Gilman further discloses that, unlike conventional hearing aids, its invention provides reduced losses, depending on the size of the bore of the tube. Id. at 4:53-63. In particular, Gilman discloses that its invention “suffers substantially no loss if the bore of the tube is the same as that of the cochlea,” and that “the loss is only 36% if the bore of the tube is one-half the Appeal 2017-008602 Application 12/957,085 19 bore of the cochlea.” Id. at 4:53-59. Although Gilman discloses that prior art hearing aids suffer sound losses due to impedance mismatch, Gilman nonetheless discloses its invention experiences a 36% loss of sound. As we explain in the Decision on Appeal, “[i]n view of Gilman’s disclosure that losses are the result of impedance mismatch, a 36% loss at the operative intersection of the end of the tube with the cochlea indicates there is an impedance mismatch between the tube and the cochlea.” Dec. 33. Thus, the Examiner has demonstrated sufficiently that Gilman discloses “the flexible conductor is configured to have an impedance mismatch with surrounding tissues when implanted in the recipient,” as recited in claim 5. Appellant also argues that the rejection is arbitrary and capricious because, without an express BRI of claim 5, Appellant cannot tell whether Gilman discloses the conductor recited in the claim. Req. Reh’g 101-102. We disagree with Appellant. As we explain in the Decision on Appeal, the absence of an express claim construction, without more, does not show error in the Examiner’s rejection. Dec. 6 (citing In re Jung, 637 F.3d at 1363). Furthermore, the lack of express claim construction does not inhibit Appellant from ascertaining whether Gilman discloses the recited conductor. As set forth in the Decision on Appeal, the Examiner construes the recited conductor to encompass Gilman’s liquid transmission means 140, and the Examiner explains that liquid transmission means 140 has an impedance mismatch with surrounding tissues. Id. at 32-33 (citing Final Act. 7). Appellant further argues our decision to sustain the rejection of claim 5 constitutes a new ground of rejection. Req. Reh’g 102. We disagree. Like the Examiner, we find Gilman’s liquid transmission means 140 has an impedance mismatch with surrounding tissues because Appeal 2017-008602 Application 12/957,085 20 Gilman discloses the tube may be half the size of the bore of the cochlea and transmits 64% of the sound energy, i.e., loses 36% of the sound energy. Dec. 33; Final Act. 7. Appellant reiterates its arguments regarding claim 5 from the briefing on appeal. Req. Reh’g 103-110. We address these arguments in the Decision on Appeal (Dec. 5-6, 32-33), and we further address them in the preceding discussion of the rejection of claim 5. In view of the foregoing, Appellant has not persuaded us that we have misapprehended or overlooked its arguments regarding the rejection of claim 5. We, therefore, maintain our decision to sustain the rejection of claim 5. Claim 10 Appellant reiterates its argument that the rejection of claim 10 is flawed for failing to evaluate the BRI. Req. Reh’g 110; Appeal Br. 99-100; Reply Br. 122-124. Contrary to Appellant’s argument, however, we expressly evaluate the BRI in the Decision on Appeal. Namely, we explicitly construe “sheath” as “a close-fitting covering.” Dec. 34. Appellant further argues that Hortmann’s tube does not fall within our construction of “sheath.” Req. Reh’g 110-111. We disagree. As we explain in the Decision on Appeal, the Examiner finds Hortmann discloses wire 45 embedded in tube 43 such that tube 43 is disposed over wire 45. Dec. 34. As tube 43 is disposed over wire 45, tube 43 is a close-fitting covering for wire 45 and thus discloses a sheath in accordance with our construction. Appeal 2017-008602 Application 12/957,085 21 In view of the foregoing, Appellant has not persuaded us that we have misapprehended or overlooked its arguments regarding the rejection of claim 10. We, therefore, maintain our decision to sustain the rejection of claim 10. Claim 26 Appellant argues we fail to address its argument that seals do not prevent movement in the longitudinal direction. Req. Reh’g 111-112. We disagree with Appellant that we overlook this argument. In the Decision on Appeal, we explain why this argument does not apprise us of error in the Examiner’s finding that Gilman’s sealing material 92 discloses the fixation device recited in claim 26. Dec. 35-36. To wit, Gilman discloses sealing material 92 holds tube 142 in place. Id. at 35 (citing Final Act. 8). “By holding tube 142 in place . . . Gilman’s sealing material 92 prevents tube 142 from moving in any direction.” Id. at 36. Appellant maintains and reiterates its arguments regarding claim 26 from the briefing on appeal. Req. Reh’g 112-114. We address these arguments in the Decision on Appeal (Dec. 5-6, 35-36), and we further address them in the preceding discussion of the rejection of claim 26. In view of the foregoing, Appellant has not persuaded us that we have misapprehended or overlooked its arguments regarding the rejection of claim 26. We, therefore, maintain our decision to sustain the rejection of claim 26. Appeal 2017-008602 Application 12/957,085 22 Independent Claim 13 For independent claim 13, Appellant relies on its arguments regarding independent claim 1. Req. Reh’g 122. We address these arguments in the Decision on Appeal (Dec. 5-6, 27-32), and we further address them in the preceding discussion with respect to independent claim 1 (see supra pp. 15-18). For the same reasons as independent claim 1, Appellant has not persuaded us that we have misapprehended or overlooked its arguments regarding the rejection of independent claim 13. We, therefore, maintain our decision to sustain the rejection of independent claim 13. Claim 27 Appellant argues we overlook its argument that leading Gilman’s liquid filled tube 142 around the malleus is not flexing the conductor about a portion of the mastoid bone as recited in claim 27 because the malleus and incus are not the mastoid bone. Req. Reh’g 123-124. Appellant also argues we overlook its argument that Gilman’s tube being made from a flexible material does not disclose the recited step of flexing the conductor about a portion of the mastoid bone. Id. at 124. As we explain in the Decision on Appeal, the Examiner relies on Gilman’s transmission means 140 being inserted through the mastoid bone and led around the mallus and incus to disclose the recited step of flexing the conductor about a portion of the mastoid bone. Dec. 38 (citing Final Act. 8). As shown in Gilman’s Figures 1 and 2, liquid filled tube 142 of liquid transmission means 140 passes through mastoid bone 62 and bends around malleus 40 and incus 42. Gilman 3:41-43, 5:11-16, Figs. 1-2. As leading liquid filled tube 142 around the mallus and incus results in bending the Appeal 2017-008602 Application 12/957,085 23 portion of the tube distal to the portion in the mastoid bone, the Examiner has demonstrated sufficiently that Gilman discloses flexing the conductor about a portion of the mastoid bone, as recited in claim 27. Appellant reiterates its arguments regarding claim 27 from the briefing on appeal. Req. Reh’g 124-125. We address these arguments in the Decision on Appeal (Dec. 5-6, 38-39), and we further address them in the preceding discussion of the rejection of claim 27. In view of the foregoing, Appellant has not persuaded us that we have misapprehended or overlooked its arguments regarding the rejection of claim 27. We, therefore, maintain our decision to sustain the rejection of claim 27. Claim 28 For claim 28, Appellant relies on its arguments regarding claim 26. Req. Reh’g 125-126. We address these arguments in the Decision on Appeal (Dec. 5-6, 35-36, 39-40), and we further address them in the preceding discussion with respect to claim 26 (see supra p. 21). For the reasons above with respect to claim 26, Appellant has not persuaded us that we have misapprehended or overlooked its arguments regarding the rejection of claim 28. We, therefore, maintain our decision to sustain the rejection of claim 28. Claim 29 Appellant argues we overlook its argument that implanting something in a mastoid bone does not automatically correspond to fixing something to a mastoid bone. Req. Reh’g 126-127. We disagree with Appellant that we Appeal 2017-008602 Application 12/957,085 24 overlook this argument. In the Decision on Appeal, we explain why this argument does not apprise us of error in the Examiner’s finding that Gilman’s liquid filled tube 142 being implanted through a mastoid bone discloses “fixing the flexible conductor in the recipient to a mastoid bone of the recipient at a location along the flexible conductor between the first end and the second end of the flexible conductor,” as recited in claim 29. Dec. 40-41. Specifically, we explain that there is no ipsissimis verbis test for determining whether a reference discloses a claim element, and that we see no meaningful distinction between “implanting” and “fixing.” Id. at 41 (citing In re Bond, 910 F.2d at 832). In view of the foregoing, Appellant has not persuaded us that we have misapprehended or overlooked its arguments regarding the rejection of claim 29. We, therefore, maintain our decision to sustain the rejection of claim 29. Claim 20 For claim 20, Appellant relies on its arguments regarding claim 10. Req. Reh’g 127. We address these arguments in the Decision on Appeal (Dec. 33-35, 38), and we further address them in the preceding discussion with respect to claim 10 (see supra p. 20). For the reasons above with respect to claim 10, Appellant has not persuaded us that we have misapprehended or overlooked its arguments regarding the rejection of claim 20. We, therefore, maintain our decision to sustain the rejection of claim 20. Appeal 2017-008602 Application 12/957,085 25 Obviousness Based on Gilman, Hortmann, and Leysieffer For claim 12, Appellant argues we overlook its arguments, and Appellant reiterates its arguments from the briefing on appeal. Req. Reh’g 115-116. We disagree with Appellant that we overlook the arguments for claim 12. As we explain in the Decision on Appeal, Appellant’s arguments against the Examiner’s reasoning for combining the teachings of Gilman, Hortmann, and Leysieffer do not apprise us of error because “[t]he Examiner’s proposed combination is a combination of familiar elements according to known methods, namely the addition of Leysieffer’s stimulation electrode assembly to Gilman’s system, as modified by Hortmann, to provide a hearing aid having both electrical and mechanical stimulation capabilities.” Dec. 42. In view of the foregoing, Appellant has not persuaded us that we have misapprehended or overlooked its arguments regarding the rejection of claim 12. We, therefore, maintain our decision to sustain the rejection of claim 12. Obviousness Based on Ball, as Evidenced by Saadat Independent Claim 1 Appellant argues we misapprehend its argument that the Examiner has not addressed the “laterally-flexible” requirement of independent claim 1. Req. Reh’g 131-136. Although Appellant acknowledges that, in the Answer, the Examiner, expressly addresses the “laterally-flexible” requirement, Appellant alleges the Examiner previously determined that a person of ordinary skill in the art would not understand the meaning of the term “laterally-flexible” and, therefore, cannot show Ball discloses Appeal 2017-008602 Application 12/957,085 26 something within the BRI of the term. Id. Appellant similarly alleges the Examiner previously determined that a person of ordinary skill in the art would not understand the meaning of the term “longitudinally-rigid” and cannot properly construe the term. Id. at 129-130. At the outset, we disagree with Appellant that the Examiner previously determined the meaning of each of the terms “laterally-flexible” and “longitudinally-rigid” would be unclear to a person of ordinary skill in the art. Contrary to Appellant’s argument, the Examiner determined, with respect to a withdrawn rejection, that the combination of the terms “laterally-flexible” and “longitudinally-rigid” to describe the conductor renders the meaning of each term unclear. Final Act. 4 (“It is therefore unclear what Applicant means by the term ‘longitudinally rigid’ in combination with the term ‘laterally flexible’ in claims 1 and 13. In other words, it is unclear how a stiff rod-like structure is also flexible and meandering.”). Moreover, as we explain above with respect to Appellant’s argument challenging the Examiner’s prima facie case of obviousness, the Examiner’s history of rejecting the claims for indefiniteness and lacking enablement does not call into the question the Examiner’s ability to assess the prior art and interpret the claims. See supra pp. 14-15; see also Dec. 43 (“A determination that the language of a claim would have been unclear to a person of ordinary skill in the art is not tantamount to a misunderstanding the invention or a mischaracterization of the level of ordinary skill in the art.”). Appellant also argues we overlook its argument that Saadat does not show Ball’s stainless steel wire is longitudinally rigid, as independent claim 1 requires. Req. Reh’g 128-129, 137-142. Specifically, Appellant Appeal 2017-008602 Application 12/957,085 27 contends that, although Ball’s wire is made from stainless steel, Ball’s wire is a spring and thus not longitudinally rigid. Id. We disagree with Appellant that we overlook this argument. As we explain in the Decision on Appeal, Appellant’s argument does not apprise us of error because independent claim 1 does not simply recite the conductor is longitudinally rigid but rather requires that the conductor is both laterally flexible and longitudinally rigid. Dec. 19-20 (“The claim requires a conductor that is both rigid and flexible, namely rigid in the longitudinal direction and flexible in the lateral direction. . . . The Examiner explains that Saadat’s resilient stainless steel wire is longitudinally rigid and laterally flexible because ‘it can be bent and it will also hold a longitudinal shape.’”). Appellant further argues we overlook its argument that “an assertion that something would have been obviously present in the prior art is not an assertion to modify Ball, but an assertion that Ball has features corresponding to claim 1.” Req. Reh’g 130. Appellant ostensibly maintains that the Examiner’s rejection is premised on anticipation, not obviousness, because the Examiner determines a person of ordinary skill in the art would have understood Ball’s stainless steel wire is longitudinally rigid. A finding of anticipation, however, also renders a claim invalid for obviousness. See Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (“[A] disclosure that anticipates under § 102 also renders the claim invalid under § 103, for ‘anticipation is the epitome of obviousness.’” (quoting In re Fracalossi, 681 F.2d 792 (CCPA 1982)); see also Application of Pearson, 494 F.2d 1399, 1402 (CCPA 1974) (“[T]his court has sanctioned the practice of nominally basing rejections on § 103 when, in fact, the actual ground of rejection is that the claims are anticipated by the prior art. The Appeal 2017-008602 Application 12/957,085 28 justification for this sanction is that a lack of novelty in the claimed subject matter, e.g., as evidenced by a complete disclosure of the invention in the prior art, is the ‘ultimate or epitome of obviousness.’” (citations and footnote omitted)). Appellant reiterates its arguments from the briefing on appeal and asserts we did not address the arguments. Req. Reh’g 142-155. We disagree with Appellant that we overlooked the arguments in its briefing on appeal. We address these arguments in the Decision on Appeal (Dec. 5-6, 18-22), and we further address them in the preceding discussion of the rejection of independent claim 1. In view of the foregoing, Appellant has not persuaded us that we have misapprehended or overlooked its arguments regarding the rejection of independent claim 1. We, therefore, maintain our decision to sustain the rejection of independent claim 1. Claim 39 Appellant argues our finding that Ball’s complaint connecting member 225B discloses a flexible conductor comprising the wire recited in claim 39, namely “the wire is adapted to transport the sound vibrations from the actuator to the ear component,” is conclusory. Req. Reh’g 156-157. We disagree with Appellant. As we explain in the Decision on Appeal, we find Ball’s compliant connecting member 225B discloses the recited wire because, according to Ball, the compliant connecting member is fabricated from wire and communicates vibrations from output transducer 24 to stapes 34. Dec. 23 (citing Ball 3:29-34, 6:60-62, 7:2-5). Although Ball expressly discloses communicating vibrations, as opposed to transporting Appeal 2017-008602 Application 12/957,085 29 vibrations as recited in claim 39, there is no ipsissimis verbis test for determining whether a reference discloses a claim element. In re Bond, 910 F.2d at 832. As communicating vibrations and transporting vibrations are both ways of moving vibrations through a medium, the Examiner has demonstrated sufficiently that Ball’s compliant connecting member 225B discloses the wire recited in claim 39. Claim 40 Appellant maintains and reiterates its arguments from the briefing on appeal regarding claim 10, from which claim 40 depends. Req. Reh’g 157-162. We address these arguments in the Decision on Appeal (Dec. 5-6, 24). Additionally, Appellant incorporates by reference its arguments for claim 39. Req. Reh’g 162. We address these arguments in the Decision on Appeal (Dec. 22-24), and we further address them in the preceding discussion with respect to claim 39 (see supra pp. 28-29). In view of the foregoing, Appellant has not persuaded us that we have misapprehended or overlooked its arguments regarding the rejection of claim 40. We, therefore, maintain our decision to sustain the rejection of claim 40. Obviousness Based on Ball, as Evidenced by Saadat, and Schaefer Appellant argues claim 22 should have been examined as reciting a result-effective variable. Req. Reh’g 117-118. Appellant also argues “[m]ere assertions of lack of criticality are not sufficient to presumptively render this claim obvious.” Id. at 118. Appellant further argues we are Appeal 2017-008602 Application 12/957,085 30 incorrect that the Examiner did not find the diameter size recited in claim 22 is known to work within the confines of the middle ear. Id. at 118-119. At the outset, we disagree with Appellant that claim 22 should have been examined as reciting a result-effective variable. Obviousness may exist where a recited value is close to the value in the prior art. See, e.g., In re Aller, 220 F.2d 454, 456 (CCPA 1955) (determining a recited process performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% is obvious over a prior art process performed at a temperature of 100°C and an acid concentration of 10%). As set forth in the Decision on Appeal, the Examiner determines Schaefer’s diameter of 127 microns is close to the diameter of 100 microns recited in claim 22. Dec. 25 (citing Final Act. 12). We also disagree that we incorrectly characterize the Examiner’s rejection. The Examiner does not rely on Schaefer for teaching the recited diameter is known. Rather, the Examiner finds Schaefer’s diameter of 127 microns is close to the diameter of 100 microns recited in claim 22 because Schafer teaches the diameter fits the middle ear. Dec. 25-26 (citing Final Act. 12; Ans. 14; Schaefer 4:57-62, 5:3-4, 5:66-6:2, Fig. 1). Moreover, the Examiner’s rejection of claim 22 is not based solely on the lack of criticality for the recited diameter, as Appellant argues. Rather, as set forth in the Decision on Appeal, the Examiner finds that Schaefer teaches a diameter close to the recited diameter, and that Appellant’s Specification does not describe the criticality of the recited diameter. Dec. 25 (citing Final Act. 12). As also set forth in the Decision on Appeal, when the prior art value is close to the recited value, an applicant must show Appeal 2017-008602 Application 12/957,085 31 the criticality of the recited value. Id. at 26 (citing In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)). Appellant reiterates its arguments from the briefing on appeal and asserts we did not address the arguments in violation of In re Fyre. Req. Reh’g 119-121. We disagree with Appellant that we overlooked the arguments in its briefing on appeal. We address these arguments in the Decision on Appeal (Dec. 24-27), and we further address them in the preceding discussion of the rejection of claim 22. In view of the foregoing, Appellant has not persuaded us that we have misapprehended or overlooked its arguments regarding the rejection of claim 22. We, therefore, maintain our decision to sustain the rejection of claim 22. Appeal 2017-008602 Application 12/957,085 32 CONCLUSION1 Outcome of Decision on Rehearing: Claim(s) 35 U.S.C. § Basis Denied Granted 35 112, second paragraph Indefiniteness 35 31-33, 36-38 102(b) Ball 31-33, 36-38 1, 4, 5, 9-11, 13-15, 17, 20, 23, 25-30 103(a) Gilman, Hortmann 1, 4, 5, 9-11, 13-15, 17, 20, 23, 25-30 12 103(a) Gilman, Hortmann, Leysieffer 12 1, 39, 40 103(a) Ball 1, 39, 40 22 103(a) Ball, Schaefer 22 Overall Outcome 1, 4, 5, 9-15, 17, 20, 22, 23, 25-33, 35-40 1 The order of the rejections in the tables summarizing the conclusion of this Decision on Rehearing differs from the order of the rejections in the table in the Decision on Appeal (Dec. 43-44). In this Decision on Rehearing, we address the rejections in the order Appellant addresses them in the Request for Rehearing, and the order of the rejections in the tables corresponds to this order. Appeal 2017-008602 Application 12/957,085 33 Final Outcome of Appeal after Rehearing: Claim(s) 35 U.S.C. § Basis Affirmed Reversed 35 112, second paragraph Indefiniteness 35 31-38, 41 102(b) Ball 31-33, 36-38 34, 35, 41 1, 4, 5, 9-11, 13-15, 17, 20, 23, 25-30 103(a) Gilman, Hortmann 1, 4, 5, 9-11, 13-15, 17, 20, 23, 25-30 12 103(a) Gilman, Hortmann, Leysieffer 12 1, 39, 40 103(a) Ball 1, 39, 40 22 103(a) Ball, Schaefer 22 Overall Outcome 1, 4, 5, 9-15, 17, 20, 22, 23, 25-33, 35-40 34, 41 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). DENIED