Bj¿rn, G¿ran et al.

Patent Trials and Appeals Board

Aug 31, 2020

13451171 - (R) (P.T.A.B. Aug. 31, 2020)

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.
13/451,171 04/19/2012 Göran Björn 5441-324 2369
111614 7590 08/31/2020
Pilloff Passino & Cosenza LLP
2000 Duke Street
Suite 300
Alexandria, VA 22314
EXAMINER
MATTHEWS, CHRISTINE HOPKINS
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
08/31/2020 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 GÖRAN BJÖRN, MARCUS ANDERSSON, and
STEFAN MAGNANDER
____________

Appeal 2017-001856
Application 13/451,1711
Technology Center 3700
____________

Before STEFAN STAICOVICI, WILLIAM V. SAINDON, and
BRANDON J. WARNER, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 In this Decision we also reference the Appeal Brief filed February 8, 2016
(“Appeal Br.”) and the Examiner’s Answer dated September 14, 2016
(“Ans.”). According to Appellant, the real party in interest is Cochlear
Limited, the assignee of this application. Appeal Br. 2.
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Appellant filed a Request for Rehearing on July 22, 2019 (hereinafter
“Request for Rehearing” or “Req. Reh’g”) under 37 C.F.R. § 41.52, seeking
rehearing of our Decision dated May 22, 2019 (hereinafter “Decision” or
“Dec.”). In our Decision, we affirmed the Examiner’s rejection of claims 1,
3, 6–13, 15, 20–24, and 26–33; we reversed the Examiner’s rejection of
claims 4 and 16; and we entered new grounds of rejection for claims 1, 3, 4,
6–13, 16, 21–24, 26–31, and 33. Dec. 19. We have considered Appellant’s
arguments but do not modify our Decision.
Preliminarily, we note that, under 37 C.F.R. § 41.50(b), in response to
a new ground of rejection, an appellant may either (1) reopen prosecution by
submitting an amendment or new evidence, or (2) request rehearing pursuant
to 37 C.F.R. § 41.52. Dec. 20. If rehearing is requested, arguments not
raised, and evidence not previously relied upon, are not permitted. Cf. 37
C.F.R. § 41.52(a) (allowing an appellant to present new argument
responding to a new ground of rejection, or present new arguments that the
Board’s decision contains an undesignated new ground of rejection). In this
case, Appellant submitted argument and new evidence. Although
submission of new evidence may be considered a request to reopen
prosecution, this does not appear to be Appellant’s intent. See, e.g., Req.
Reh’g 1 (stating both “[w]e request rehearing” and “we prove this with
evidence”); Exhibits A–D, F–G, I–L; Req. Reh’g 16–29, 34–38, 40–41, 43–
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53, 55–58 (making arguments based on the “Exhibits”).2 Accordingly, we
treat Appellant’s Request for Rehearing as such, but do not enter the new
evidence. The new evidence must be re-submitted to the Examiner in a
proper manner in the event further prosecution occurs.
I. CLAIMED SUBJECT MATTER
The claims are directed to a hearing prosthesis, comprising a
transcutaneous bone conduction device, wherein an external vibrator
generates vibrations that are transmitted through the skull bone to the
cochlea to aid auditory perception. Spec. ¶¶ 6–8, 21. Claims 1, 15, and 21
are independent, and are reproduced below:
1. An implantable component of a hearing prosthesis,
comprising:
an implantable bone fixture; and
one or more magnets disposed in an implantable housing coupled
to the bone fixture via a bridge extending from the housing to
the bone fixture between the housing and bone fixture,
wherein the one or more magnets are configured to
magnetically couple to an external component of the
prosthesis.

15. An implantable component of a hearing prosthesis,
comprising:
an implantable bone fixture; and
an implantable magnetic assembly removably attached to the
implantable bone fixture and including at least one magnet

2 The MPEP states that a request for rehearing accompanied by new
evidence does not constitute a proper request for rehearing under 37 C.F.R.
§ 41.50(b)(2) and will be treated as a submission reopening prosecution
before the examiner, under 37 C.F.R. § 41.50(b)(1). See MPEP
§ 1214.01(II). We exercise our discretion to address Appellant’s arguments
on rehearing because Appellant does not appear to be seeking to reopen
prosecution.
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coupled to and laterally offset from a longitudinal axis of the
bone fixture, wherein all boundaries of the at least one magnet
are located within an angle about a longitudinal axis of the
bone fixture that is less than 360 degrees, and wherein the at
least one magnet is configured to magnetically couple to an
external component of the prosthesis, wherein the
implantable component of the hearing prosthesis is
configured such that the implantable magnetic assembly is
both attachable and removable from the implantable bone
fixture while the implantable bone fixture is osseointegrated
to a skull bone of a recipient of the implantable component.

21. An implantable component of a hearing prosthesis,
comprising:
at least one magnet; and
an implantable bone fixture, wherein
the at least one magnet is disposed in an implantable housing,
and
the housing is flexibly coupled to the bone fixture.

Appeal Br. 56–58 (Claims Appendix).

II. SUMMARY OF THE DECISION ON REHEARING
In our Decision, we sustained the Examiner’s rejection of:
Claims 1, 3, 6–11, 21, 22, 26–28, 31, and 33 as being anticipated
under pre-AIA 35 U.S.C. § 102(a) by Ball (US 2012/0029267 A1, published
Feb. 2, 2012);
Claim 12 as being obvious under pre-AIA 35 U.S.C. § 103(a) over
Ball in view of Parker (US 2009/0247811 A1, published Oct. 1, 2009);
Claims 13 and 29 as being obvious under pre-AIA 35 U.S.C. § 103(a)
over Ball in view of Berrang (US 6,648,914 B2, issued Nov. 18, 2003);
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Claims 15, 20, and 32 as being obvious under pre-AIA 35 U.S.C.
§ 103(a) over Ball in view of Westerkull (US 2007/0053536 A1, published
Mar. 8, 2007), as evidenced by Asnes (US 2010/0209873 A1, published
Aug. 19, 2010);
Claim 23 as being obvious under pre-AIA 35 U.S.C. § 103(a) over
Ball in view of Parker (US 2009/0245554 A1, published Oct. 1, 2009)
(“Parker II”); and
Claims 24 and 30 as being obvious under pre-AIA 35 U.S.C. § 103(a)
over Ball in view of Westerkull (US 7,160,244 B2, published Jan. 9, 2007)
(“Westerkull II”). See generally Dec. 19.
We did not sustain the rejection of claim 4 as being obvious under
pre-AIA 35 U.S.C. § 103(a) over Ball, or the rejection of claim 16 as being
obvious under pre-AIA 35 U.S.C. § 103(a) over Ball in view of Westerkull
II. See Dec. 7–8, 15–16.
In our above-noted affirmance of the Examiner’s rejections of claims
1, 3, 4, 6–13, 16, 21–24, 26–31, and 33, we designated new grounds of
rejection. See generally Dec. 19. In particular, we designated a new ground
of rejection for claims 1 and 21 as being anticipated by, or obvious over,
Ball. Id. at 10–14. Because claims 3, 6–13, 22–24, 26–31, and 33 depend
from a claim for which we entered a new ground of rejection, we pro forma
entered a new ground of rejection for those claims. Id. at 14–15, 17–18. We
entered a separate new ground of rejection of claim 4 as being obvious over
Ball. Id. at 15–16. Further, we entered a new ground of rejection for claim
16 as being obvious over Ball in view of Westerkull, as evidenced by Asnes.
Id. at 7–8.
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Appellant only requests rehearing on claims 1, 8, 11, 16, 21, and 31–
33 based on the following rejections: claims 1, 8, 11, 21, 31, and 33 as being
anticipated, and obvious, over Ball; and claims 16 and 32 as being obvious
over Ball in view of Westerkull, as evidenced by Asnes. Thus, we do not
reconsider our Decision on claims 3, 4, 6, 7, 9, 10, 12, 13, 15, 20, 22–24, and
26–30.
On rehearing, our review is limited to matters misapprehended or
overlooked by the Board in rendering the original decision. 37 C.F.R.
§ 41.52. We have considered Appellant’s arguments but do not modify our
Decision.
III. ANALYSIS
First, we address arguments as to the obviousness rejection of claims
16 and 32 over Ball in view of Westerkull, as evidenced by Asnes. Then,
we address Appellant’s arguments as to the anticipation and obviousness
rejections of claims 1, 8, 11, 21, 31, and 33 over Ball. Lastly, we address
Appellant’s arguments regarding the Administrative Procedure Act.
A. Obviousness in View of Ball and Westerkull as Evidenced by Asnes
(Claims 16 and 32)
Dependent Claim 32
Claim 32 recites that the implantable component of independent claim
15 is a component of “a passive transcutaneous bone conduction device.”
Appeal Br. 59 (Claims App.). In our Decision, we agreed with the Examiner
that Ball discloses an implantable component that is part of a passive
transcutaneous bone conduction device. Dec. 8–9. Specifically, we agreed
that Ball’s implantable component is passive because the drive coil that
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provides the audio signal to the implantable component is located externally.
Id. (citing Ball ¶¶ 15–17, Fig. 2).
Appellant argues that the location of the transducer makes Ball’s
implant an active device, not a passive device. See Req. Reh’g 14–83.
Appellant alleges that an actuator is an example of a transducer, and that the
location of the transducer is what categorizes a device as passive or active.
Id. at 23–29, 72–77. Appellant argues that Ball is an active transcutaneous
bone conduction device because Ball’s implant vibrates. Id. at 29–83.
Appellant’s arguments do not persuade us that we misapprehended or
overlooked anything in our Decision. Appellant conflates “actuator” and
“transducer.” Req. Reh’g 14 (arguing, “Ball discloses that transduction to
generate vibrations. . . . That makes the implant a vibrating actuator.”), 15
(“transducer – a generic term for an actuator”). While some things may be
both an actuator and a transducer, actuators and transducers are not one and
the same. Accord id. at 24 (discussing the terms in a general sense). For the
type of bone conduction system relevant to the case at hand, vibrations are
initiated by a device, and those vibrations are propagated in a series of
vibrations until they reach the relevant biological structures in the ear. Spec.
¶ 5. Thus, knowing what is vibrating is not the end of the analysis—there is
a cascading series of vibrations. Accordingly, Appellant’s arguments that
Ball’s implant vibrates cannot itself establish that Ball’s device is either
active or passive. See, e.g., Req. Reh’g 30, 34–35.
Appellant argues that Ball’s implant is “active” because “the
transducer is located in the implant.” See, e.g., Req. Reh’g 30–33. As we
stated in our Decision, “[w]hether some component is a transducer is
irrelevant.” Dec. 9. Instead, the relevant inquiry is the location of the
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actuator—i.e., the structure that causes the series of vibrations. Dec. 9;
Spec. ¶¶ 24–26. Ball’s actuator is external to the body. Dec. at 9
(explaining, “the external component in Ball converts electrical energy into
an electromagnetic signal using a drive coil (i.e., an actuator)” (citing Ball
¶¶ 15, 16, 18)); see also Req. Reh’g 34. Ball’s implantable component does
not contain the actuator; instead, Ball’s implant vibrates only because it is
vibrated by the external component. Dec. 9. Because Ball’s implant can
only react to the vibrations that are delivered to it, Ball’s implant is passive.
Id.
This understanding of “active” and “passive,” espoused in our
Decision and reiterated here, is entirely consistent with the Specification.
Our analysis closely hews to the Specification’s explanation of how to know
which component is the “active” and “passive” component:
External component 140 also comprises a sound processor (not
shown), an actuator (also not shown) and/or various other
functional components. In operation, sound input device 126
converts received sound into electrical signals. These electrical
signals are processed by the sound processor to generate control
signals that cause the actuator to vibrate. The actuator converts
the electrical signals into mechanical vibrations for delivery to
internal component 150.
Spec. ¶ 24. This paragraph explains that the external component contains
the actuator, which takes the electrical input signal and converts this into
mechanical vibrations (like Ball’s external component). The external
structure causes the vibrations which are transferred to the internal
component and the skull. The Specification next explains:
Internal component 150 comprises a bone fixture 162 such as a
bone screw to secure an implantable magnetic component 164 to
skull 136. Typically, bone fixture 162 is configured to
osseointegrate into skull 136. Magnetic component 164 forms a
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magnetic coupling with one or more magnets disposed in
external component 140 sufficient to permit effective transfer of
the mechanical vibrations to internal component 150, which are
then transferred to the skull.
Spec. ¶ 25. This paragraph explains that the internal component transfers
the vibrations created by the externally-located actuator to the skull (like
Ball’s internal component). Next:
The exemplary transcutaneous bone conduction device
illustrated in FIG. 1 has all active components, such as the
actuator, located externally. As such, the device illustrated in
FIG. 1 is commonly referred to as a passive transcutaneous bone
conduction device.
Spec. ¶ 26. This paragraph confirms that the external component, which has
the actuator that causes the vibrations, is active, and that the internal
component, which has no actuator and is vibrated by the external
component, is passive (like Ball).
Accordingly, our affirmation of the Examiner’s finding that Ball’s
implant is a passive device was supported by the record. We do not modify
our Decision as to the rejection of claim 32.3

3 Appellant submitted new evidence in support of its arguments regarding
active and passive, which we did not enter. See, e.g., Appellant’s Exhibits
A–D, F–G, I–L (not entered). The active vs. passive issue was squarely
before the Examiner, who found in the Final Rejection of April 29, 2015,
that “Ball teaches the implantable component is . . . passive,” by pointing out
Ball’s “external signal drive coil.” Final Act. 12. Thus, Appellant could
have submitted this evidence to the Examiner but chose not to.
In any event, if we did consider the newly submitted evidence, it is not
persuasive. In comparing a prior art reference to the claimed invention, the
important comparison is the scope of the claim, under its broadest
reasonable interpretation in light of the Specification, with the disclosure of
the prior art reference. The non-entered evidence cannot unteach what is
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Dependent Claim 16
Claim 16 depends from claim 15 and recites that “the angle about the
longitudinal axis is less than 90 degrees.” Appeal Br. 58 (Claims App.). We
found that the Examiner had misconstrued the claim but was nevertheless
correct that the prior art described the limitation, so we entered a new
ground of rejection for claim 16. Dec. 7–8. We explained that the “angle”
described in the claim is the angle defined by the boundaries of the magnets
around the longitudinal axis of the bone fixture. Id. at 7. Figure 4A of
Appellant’s drawings illustrates the angle as item 402, which is defined by
the boundaries of housing 353A relative to longitudinal axis 401. Id. We
concluded that Figure 4 of Ball discloses the claimed angle, even taking into
account that patent drawings are not necessarily drawn precisely to scale.
Id. at 8 (“things shown clearly in drawings cannot be disregarded”) (citing In
re Mraz, 455 F.2d 1069, 1072 (CCPA 1972)).
Appellant argues that Ball’s figures do not show the claimed angle.
See Req. Reh’g 98–102. Appellant argues that Ball does not indicate that
the drawings are to scale, and that the MPEP states that “[w]hen the
reference does not disclose that the drawings are to scale and is silent as to
dimensions, arguments based on measurement of the drawing features are of
little value.” Id. at 99 (quoting MPEP § 2125(II)). Appellant further alleges
that the drawings in Ball are “lousy drawing[s].” Id. at 100–102 (citing to
PlaSmart, Inc. v. Wang, No. 2010-011455, 2011 WL 486182, at *5 (BPAI

taught in Ball, nor does it shed new light on how a person of ordinary skill in
the art would interpret the scope of the claims. Thus, even if we were to
consider the new evidence, we find nothing that shows we misapprehended
or overlooked anything in our Decision.
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Feb. 9, 2011) and PlaSmart, Inc. v. Kappos, 482 F. App’x 568 (Fed. Cir.
2012)).
As an initial matter, MPEP § 2125(II), quoted by Appellant, further
states:
However, the description of the article pictured can be relied on,
in combination with the drawings, for what they would
reasonably teach one of ordinary skill in the art. In re Wright,
569 F.2d 1124, 193 USPQ 332 (CCPA 1977) (“We disagree with
the Solicitor’s conclusion, reached by a comparison of the
relative dimensions of appellant’s and Bauer’s drawing figures,
that Bauer ‘clearly points to the use of a chime length of roughly
1/2 to 1 inch for a whiskey barrel.’ This ignores the fact that
Bauer does not disclose that his drawings are to scale. ...
However, we agree with the Solicitor that Bauer’s teaching that
whiskey losses are influenced by the distance the liquor needs to
‘traverse the pores of the wood’ (albeit in reference to the
thickness of the barrelhead)” would have suggested the
desirability of an increased chime length to one of ordinary skill
in the art bent on further reducing whiskey losses.” 569 F.2d at
1127, 193 USPQ at 335-36.).
MPEP § 2125(II) (emphasis added). In other words, even when a drawing is
not to scale, the drawing can be used for what it would reasonably teach one
of ordinary skill in the art.
In any event, we did not rely on Ball’s drawings for precise
measurements or for the exact proportions of the device shown therein.
Instead, we focused on the broader picture of what a person of ordinary skill
in the art would have understood given what was shown. As explained in
our Decision, regardless of precision, the combination of the drawings with
Ball’s disclosure describes the claimed limitation. Dec. 7–8; Mraz, 455 F.2d
1072 (“[W]e did not mean that things patent drawings show are to be
disregarded. . . . [T]eachings of patent drawings, even as to features
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unexplained by the specification, [may] prove[] dispositive.”). We reviewed
Figures 2 and 4 with Ball’s specification and found that one of ordinary skill
in the art would conclude that Ball teaches the claimed angle. Dec. 7–8.
Regardless of the scale or the precision of Ball’s drawings, a person of
ordinary skill in the art would understand by virtue of their own appreciation
of what is being described, that the angle in Figure 4 would be less than 90
degrees about the longitudinal axis in the lowermost flange 401 with respect
to the boundaries of magnet 202, given the divergent proportions of the two
structures. Id. Thus, we are not apprised of error in our Decision to enter a
new ground of rejection for claim 16 in view of Ball, Westerkull, and Asnes.
B. Anticipation and Obviousness over Ball
(Claims 1, 8, 11, 21, 31, and 33)
Independent Claims 1 and 21
Independent claims 1 and 21 recite an implantable component of a
hearing prosthesis that has an implantable bone fixture and one or more
magnets disposed in a housing and coupled to the fixture with a bridge.
Appeal Br. 56, 58 (Claims App.). Claim 21 further recites that the housing
is flexibly coupled to the bone fixture. Id. In our Decision, we concluded
that the membrane in Ball (as relied on in the Examiner’s rejection) was not
a housing, but one of ordinary skill would understand that Ball contains a
housing flexibly coupled to the bone fixture as claimed. Dec. 10–14. Thus,
we concluded that claims 1 and 21 were anticipated by, or obvious in view
of, Ball. Id.
Appellant argues that the Decision does not sufficiently establish that
there is a housing in Ball or that one of ordinary skill in the art would place a
housing in Ball. Req. Reh’g 110–112. Although acknowledging that the
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Decision does state that the internal magnets are encased, Appellant argues
that there is no evidence that a person of ordinary skill in the art would
recognize any of the findings made in the Decision. Id. Appellant further
argues that the figures relied upon are “lousy drawings.” Id. In regards to
claim 21, Appellant separately argues that the Decision does not discuss the
flexibility recitation of the claim. Id. at 103.
Appellant’s arguments are not persuasive. As explained in our
Decision, a person of ordinary skill in the art would consider Ball’s device to
have a housing even when Ball does not explicitly state the implanted
component has a housing. Dec. 11–14 (citing Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (citing Lindemann
Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1463
(Fed. Cir. 1984))). We explained that, practically speaking, “[i]t makes little
sense to the skilled artisan to screw a flexible membrane sack full of
magnets to a person’s skull.” Dec. 11; see also id. at 13 (“there would be
little purpose for bone screws 215 and connector 216 if the magnets just
floated inside the body”); In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985)
(admonishing that obviousness requires “consideration of the ordinary skill
of the art,” with an emphasis on “skill” rather than “stupidity”). Further, we
explained how Ball’s explicit disclosures would further suggest to such a
skilled artisan that Ball uses a housing. Dec. 12–13 (citing Ball ¶¶ 16, 19
and Figs. 2, 4). Lastly, we explained how similar prior art structures used
housings. Id. at 13 (citing Parker ¶ 57 and Berrang, Abstract); see also id. at
12 (“the prior need not teach, and preferably omits, what is well known in
the art” (quoting Hybritech, 802 F.2d at 1384)).
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Given all of the above, we determine that we did not misapprehend or
overlook any matter when we entered a new ground of rejection that claims
1 and 21 are anticipated by Ball, or would have been obvious in view of
Ball.
Dependent Claim 8
Claim 8 depends from claim 1 and states that the implantable
component further comprises at least two magnets, the at least two magnets
being disposed in respective housings coupled to the bone fixture via
respective structures that extend from the respective housings to the bone
fixture. Appeal Br. 56–57 (Claims App.). Appellant did not previously
argue claim 8 separately from independent claim 1. However, we entered a
new ground of rejection on claim 1, necessitating a pro forma new ground of
rejection of claim 8. Dec. 14.
Appellant now takes issue with Ball meeting the claim language.
Req. Reh’g 104–105. Appellant argues that Figure 4 of Ball does not show
what is claimed and that the screws shown in Figure 2 of Ball would be
incompatible with the flanges shown as 401 in Figure 4. Id. at 104.
Appellant argues that we may not rely on the figures in Ball to show the
claimed language. Id. at 105.
Initially, we note that Appellant waived any argument of this issue
when it chose not to argue claim 8 in the original appeal. The same
argument Appellant now makes could have been made then. Our pro forma
designation of a new ground for claim 8 did not “open the door” to
previously waived arguments, because it did not modify the substance of the
Examiner’s rejection of claim 8. See 37 C.F.R. § 41.52(a) (“Arguments not
raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41,
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or 41.47 are not permitted in the request for rehearing.”). For this reason,
we are not apprised of any matter misapprehended or overlooked in our
Decision.
In any event, even if we were to review the Examiner’s rejection of
claim 8 for the first time, Appellant’s argument would not be persuasive. As
shown in Figure 2 of Ball, there are two magnets (202 and 203) in their
respective housings (e.g., the “conspicuous box-like shape,” Dec. 13) that
are coupled to the bone fixture (215) via the connector member (216). The
location of the screws in Figure 2 does not alter the fact that the two magnets
are connected by a connector member. We have addressed Appellant’s
disagreement of using the figures in Ball in our discussion of claim 16.
Accordingly, even if the waived argument would have been timely raised,
we would not have found it persuasive.
Dependent Claim 11
Claim 11 depends from claim 1 and states that at least a portion of the
bridge of the implantable component extends from the housing towards the
bone fixture in a “compound direction.” Appeal Br. 57 (Claims App.). We
entered a new ground of rejection of claim 1, necessitating a pro forma new
ground of rejection on claim 11. Dec. 14. Appellant did not previously
argue claim 11 separately from independent claim 1.
Appellant now takes issue with Ball meeting the compound direction
limitation. Req. Reh’g 106–108. Appellant argues that Figure 4 of Ball
does not show where the screws would go as pictured in Figure 2. Id. at
106–107 (“because the screws shown in figure 2 would be incompatible with
element 216.”). Appellant points to their Specification and Figure 6 for a
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description of “arms having compound extension directions.” Id. at 107–
108.
As we explained above with respect to claim 8, Appellant could have
made this exact argument before, but waived the argument. Because
Appellant never argued claim 11, we could not have misapprehended or
overlooked any matter regarding claim 11 in our Decision. See 37 C.F.R.
§ 41.52(a) (“Arguments not raised, and Evidence not previously relied upon,
pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the request for
rehearing.”).
In any event, even if we were to review the Examiner’s rejection of
claim 11 for the first time, Appellant’s argument would not be persuasive.
The Examiner rejected claim 11 by citing to Figure 2 of Ball and explaining
that, “the angle between the longitudinal axis of (215) and the housings
(202) and (203),” is approximately 90 degrees. Final Act. 6–7; Ans. 4–5.
Reviewing Ball’s Figure 2, we understand that the Examiner’s finding is that
the bridge of the implantable component is bent to accommodate the shape
of the skull. See Ball Fig. 2. Although Ball’s specification does not
explicitly state the angle to which the bridge is bent, a person of ordinary
skill in the art reviewing the combination of the specification and the
drawings would understand that the implanted component attached to the
underlying skull bone would not be straight. See Ball ¶¶ 7–8, 16, 19. It is
shown as bent in the figure, and would be understood as being bent because
the device is shaped to conform to a generally round surface (the skull).
Thus, we agree with the Examiner that the angle between the longitudinal
axis of bone fixture (215) and the housings (202 and 203) meets the claim
language by the bridge extending in a compound direction in order to be
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fixed to the skull bone. Accordingly, even if the waived argument would
have been timely raised, we would not have found it persuasive.
Dependent Claim 31
Claim 31 recites that the implantable component of independent claim
21 is a component of “a passive transcutaneous bone conduction device.”
Appeal Br. 59 (Claims App.). We have addressed already Appellant’s
arguments on this topic above in our discussion of claim 32. For similar
reasons, we do not modify our Decision as to the rejection of claim 31.
Dependent Claim 33
Claim 33 depends from claim 21 and states that the implantable
magnetic assembly comprises a monolithic structure and includes at least
one housing and an arm extending between the housing and the fixture.
Appeal Br. 59 (Claims App.). In our Decision, we sustained the Examiner’s
rejection but pro forma designated it as a new ground of rejection due to
claim 33’s dependence from claim 21, for which we designated a new
ground of rejection. Dec. 15. We held that the Examiner had adequately
explained that Ball discloses a signal transducer 203 and a connector
member 216. Id. (citing Ans. 6). For the reasons we expressed with respect
to claims 1 and 21, we found that Ball’s signal transducer magnet 203 is
enclosed in a housing. See Dec. 10–14; see also supra. We also found that
the claimed arm is the connector member in Ball. Dec. 15.
Appellant argues that two separate components cannot collectively be
monolithic. See Req. Reh’g 84–97. Appellant points to the Specification
and Figures 4B and 7 to show that the housing appears without any seams or
joints in the arms. Id. at 86 (quoting Spec. ¶ 41). Appellant argues that the
Decision does not explain a monolithic structure explicitly or inherently in
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Ball and that we may not rely on Ball’s figures because they are not drawn
to scale. Id. at 92–96.
We are not persuaded we misapprehended or overlooked any matter in
finding that Ball teaches the claimed monolithic structure. Ball discloses a
housing, as explained supra in regards to claims 1 and 21. Ball further
discloses a monolithic structure encompassed of an arm and a housing,
consistent with Appellant’s Specification describing that “portions of the
housings (e.g., the portions facing the skin of the recipient) may be part of
the same component as arm structure 351.” Spec. ¶ 45 (emphasis added).
Ball’s housings and arm structure are part of the same component because
they are connected to connector member 216. Dec. 15. We have addressed
Appellant’s arguments regarding Ball’s figures above in our discussion of
claim 16. In view of the above, we are not persuaded we misapprehended or
overlooked any matter in our affirmance (pro forma designated a new
ground) of the Examiner’s rejection of claim 33.
C. Administrative Procedure Act
Appellant argues that reconsideration is appropriate because our
Decision violated the Administrative Procedure Act (“APA”). See, e.g.,
Req. Reh’g 82, 93, 99–100. Appellant argues that the broadest reasonable
interpretation of certain claim phrases were not developed on the record and
such determinations are material. Id. at 82, 93 (citing Dickinson v. Zurko,
527 U.S. 150, 165 (1999)). Further, Appellant argues that the Board has not
followed the rules of patent examination procedure promulgated in the
MPEP and that all parties to the examination must be put on notice that
“proportions of features and drawings are not evidence.” Id. at 99–100.
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Appellant’s arguments are unavailing. It is unclear which sections of
the APA were allegedly violated by the Decision. However, it appears that
Appellant merely disagrees with the Board’s determination that Ball meets
the challenged claim language and structures their argument that the
broadest reasonable interpretation of the challenged claim language was not
developed on the record to support the rejections. We have provided our
analysis on the record. See, e.g., Dec. 8–9. Mere disagreement with the
Board’s Decision is not a proper basis for rehearing nor a showing that the
Decision violated the APA.
IV. CONCLUSION
Claims 1, 8, 11, 16, 21, and 31–33 are before us on Appellant’s
Request for Rehearing. For the reasons set forth above, Appellant’s Request
for Rehearing is denied.
Outcome of Decision on Rehearing:

Claims 35 U.S.C. § Reference(s)/Basis Denied Granted
1, 8, 11, 21,
31, 33 102(a) Ball
1, 8, 11, 21,
31, 33

1, 8, 11, 21,
31, 33 103(a) Ball
1, 8, 11, 21,
31, 33

16, 32 103(a) Ball, Westerkull 16, 32
Overall
Outcome
1, 8, 11, 16,
21, 31–33

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Final Outcome of Appeal after Rehearing:

Claims
35
U.S.C.
§
Reference(s)/
Basis Affirmed Reversed
New
Ground
1, 3, 6–11,
21, 22,
26–28, 31,
33
102(a) Ball
1, 3, 6–11,
21, 22,
26–28, 31,
33

1, 3, 6–11,
21, 22, 26–
28, 31, 33
1, 3, 4, 6–
11, 21, 22,
26–28, 31,
33
103(a) Ball 4
1, 3, 4, 6–
11, 21, 22,
26–28, 31,
33
12 103(a) Ball, Parker 12 12
13, 29 103(a) Ball, Berrang 13, 29 13, 29
15, 16, 20,
32 103(a)
Ball,
Westerkull 15, 20, 32 16 16
23 103(a) Ball, Parker II 23 23
24, 30 103(a) Ball, Westerkull II 24, 30 24, 30
Overall
Outcome
1, 3, 6–13,
15, 20–24,
26–33
4, 16
1, 3, 4, 6–
13, 16, 21–
24, 26–31,
33

V. DECISION
Appellant’s Request for Rehearing is denied.