Brian M. Conn et al.

Patent Trials and Appeals Board

Aug 22, 2019

13622096 - (D) (P.T.A.B. Aug. 22, 2019)

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.
13/622,096 09/18/2012 Brian M. Conn 5441-009A 4457
111614 7590 08/22/2019
Pilloff & Passino LLP
1940 Duke Street
Suite 200
Alexandria, VA 22314
EXAMINER
KOHARSKI, CHRISTOPHER
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
08/22/2019 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 BRIAN M. CONN and DENIS DUPEYRON1
__________

Appeal 2019-000394
Application 13/622,096
Technology Center 3700
__________

Before MICHAEL L. HOELTER, BRANDON J. WARNER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 4, 6, 8, 10–12, 14–16, 18–22, and 24–36.2 Final Act. 1

1 “The real party in interest is Cochlear Limited.” App. Br. 2. We refer to
the appealing party as “Appellant.”
2 The Examiner does not initially identify claim 36 as being rejected
(perhaps due to a numbering error (see Final Act. 6)), but the Examiner
identifies the recitations of claim 36 in a rejection (see Final Act. 11–13) and
finds such claim recitations obvious. Further, claim 36 is specifically
identified by the Examiner in the Examiner’s Answer. See Ans. 10.
Additionally, Appellant presents arguments regarding the rejection of claim
36. See App. Br. 103–106; Reply Br. 91–94.
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(Office Action Summary). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons explained below, we affirm the Examiner’s rejections of
claims 1, 4, 6, 8, 10–12, 14–16, 18–22, and 24–36 as being anticipated or
obvious under the respectively cited art.
CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to neurostimulation, and more
particularly to an implantable electrode interface that facilitates the upgrade,
servicing and replacement of interconnected system power and signal
generation componentry.” Spec. 1:12–14. Claims 1, 10, and 20 are
independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. An implantable electrode interface comprising:
a first stimulation signal channel for receiving a first
electrode stimulation signal;
a plurality of electrode signal channels electrically
interconnected or interconnectable to a plurality of electrodes
for neurostimulation; and,
a router electrically interconnected to said first
stimulation signal channel and to said plurality of electrode
signal channels, wherein said router is controllable to directly
route said first electrode stimulation signal to different first
successive sets of one or more of said plurality of electrode
signal channels.
REFERENCES
Schulman et al. US 5,522,865 June 4, 1996
Zilberman et al. US 5,824,022 Oct. 20, 1998
Faltys et al. US 6,219,580 B1 Apr. 17, 2001
Leysieffer et al. US 6,736,770 B2 May 18, 2004
Conn et al. US 2005/0096561 A1 May 5, 2005
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THE REJECTIONS ON APPEAL
Claim 31 is rejected under pre-AIA 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
Claims 1, 8, 10–12, 16, 18, 20, and 21 are rejected under pre-AIA 35
U.S.C. § 102(b) as anticipated by Schulman.3
Claim 22 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Schulman and Leysieffer.
Claims 15, 19, and 33 are rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Schulman and Zilberman.4
Claims 4, 6, 24–27, 29–32, and 34–36 are rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Schulman and Faltys.5
Claim 14 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Schulman and Conn.
Claim 28 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Schulman, Faltys, and Leysieffer.

3 The Examiner rejects claims 1 and 8 separate from the rejection of claims
10–12, 16, and 18, and also separate from the rejection of claims 20 and 21.
See Final Act. 7–8. Nonetheless, the grounds are the same in all three
rejections, so these rejections are combined together here.
4 The Examiner rejects claims 15 and 19 separate from the rejection of claim
33. See Final Act. 10, 14. The grounds, however, are the same in both
rejections, so both rejections are combined together here.
5 The Examiner rejects claims 4, 6, 24, 30, 31, 35, and 36 separate from the
rejection of claims 25, 26, 32, and 34, and also separate from the rejection of
claims 27 and 29. See Final Act. 11, 15, 17. The grounds are the same in all
three rejections, so these rejections are combined together here.
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ANALYSIS
The rejection of claim 31 as being indefinite
Claim 31 ultimately depends from claim 1, and recites the additional
limitation of “wherein there are at least eight separate electrode signal
channels and at least 8 electrodes.” The Examiner contends that this
additional limitation is indefinite because “[t]here is no upper bound to the
number of either the electrode signal channels or electrodes.” Final Act. 6.
Appellant correctly responds that “Breadth is not Indefiniteness.” See
App. Br. 19 (referencing MPEP § 2173.04 having the same heading). The
Examiner explains that Appellant’s Specification “has not provided a
numerical range for N” or M (variables employed in Appellant’s Figure 1),
and as such, their range is “ultimately an unbound number.” Ans. 3, 4.
We understand that the limitation “at least eight” provides a lower
limit, but does not provide an upper limit. However, as clearly expressed in
MPEP § 2173.04, “[b]readth of a claim is not to be equated with
indefiniteness. In re Miller, 441 F.2d 689, 169 USPQ 597 (CCPA 1971); In
re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970) (‘Breadth
is not indefiniteness.’).” In particular, MPEP § 2173 states, “[t]he primary
purpose of this requirement of definiteness of claim language is to ensure
that the scope of the claims is clear so the public is informed of the
boundaries of what constitutes infringement of the patent.” Here, the
Examiner does not explain how or why one skilled in the art would fail to
understand that this limitation recites a requirement of at least eight
channels/electrodes. Accordingly, we do not sustain the Examiner’s
rejection of claim 31 as being indefinite.
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The rejection of claims, 1, 8, 10–12, 16, 18, 20, and 21
as anticipated by Schulman
Appellant presents overlapping arguments in an effort to refute the
anticipation rejection of these claims. See App. Br. 22–55. Rather than
address the various individual claims under this anticipation rejection, we
will, instead, address Appellant’s arguments.
Each of the above-rejected claims recites either “a router,” an
apparatus configured to “directly route,” or the step of “routing.”6 The
Examiner relies on item 66 of Schulman for this router disclosure (see Final
Act. 7, Ans. 4), but Appellant contends, “Schulman neither has express
disclosure or inherent disclosure of the router feature.” App. Br. 22.
The Examiner initially referenced “Merriam-Webster” for “how the
term ‘router’ can be defined,” but considered this dictionary definition not
suitable as a proper broadest reasonable interpretation (BRI) of this claim
term. Ans. 6. Instead, according to the Examiner, “the term router has been
defined using the [A]ppellant’s [S]pecification as above” stating, “[t]he
[A]ppellant’s router is a piece of circuitry that performs the functions listed
on page 17 lines 5–19.” Ans. 6. The Examiner explains that Schulman’s

6 Appellant’s Specification provides guidance as to the meaning of these
claim terms stating, “the router is controllable to route” and “[t]he router
may be adapted for receiving and directly routing the first electrode
stimulation signal” to different electrode signal channels. Spec. 4:12–18.
Appellant’s Specification also discusses using control logic “to control the
routing of one or more electrode stimulation signals received.” Spec. 15:6–
12; see also Spec. 17:5–19 (for exemplary operational information), Ans. 5
(for the Examiner’s discussion of Appellant’s Specification).
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election to employ different terminology “does not preempt Schulman’s
ability to anticipate the [A]ppellant’s vision.”7 Ans. 6.
There is merit to the Examiner’s findings and conclusions.
Anticipation is not an ipsissimis verbis test. See In re Bond, 910 F.2d 831,
832 (Fed. Cir. 1990); see also e.g., App. Br. 24, Ans. 5. The Examiner
references Schulman at column 3, lines 17–22 as support for correlating
Schulman’s element 66 to the recited “router” limitations.8, 9 Final Act. 7.
Further, Figure 2 of Schulman identifies item 66 as an “electrode switching
matrix” that is controlled by “output control logic” 88. This figure illustrates
an incoming signal that is subsequently routed to different electrodes 48, and
also to an indifferent electrode 49. See also Schulman 5:66 to 6:2, 9:41–62,
and 29:10–61. Appellant does not explain how Schulman’s item 66 is not a
“router” (or is not an apparatus configured to “directly route,” or is unable to
perform the step of “routing”) consistent with Appellant’s Specification. See
footnote 6 above. Instead, Appellant seeks to equate Schulman’s electrode

7 “The different choices that the [A]ppellant and Schulman have made as
lexicographers does not get over the fact that the claims of this application
rejected under 102(b) are anticipated by Schulman.” Ans. 6.
8 Schulman discusses “means for receiving transmissions” and “a processor
for processing such transmissions to . . . simultaneously or sequentially
generate and apply stimulation signals to a plurality of [electrode] channels.”
Schulman 3:17–22.
9 The PTO satisfies its initial procedural burden of establishing a prima facie
rejection by adequately explaining the shortcomings it perceives so that the
applicant is properly notified and able to respond. See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011). There is every indication the Examiner
satisfied this requirement of establishing a prima facie case by identifying
specific passages in the cited art where certain limitations are disclosed.
See, e.g., Final Act. 7. Appellant disagrees (see, e.g., App. Br. 22, 27, 29),
but we are not persuaded by Appellant’s contentions.
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switching matrix 66 to what is understood to be on-off light switches. See,
e.g., App. Br. 23, 26. Appellant does not explain how this is an apt analogy
or, assuming arguendo that it is an apt analogy, how such analogy does not
equally apply to Appellant’s own device.
Appellant further proffers an analogy to using “ground as the neutral.”
App. Br. 28. However, Appellant appears to disregard Schulman’s
connection to indifferent electrode 49, in addition to one or more of
electrodes 48. See Schulman 5:66–67, 9:58–62, Fig. 2. Hence, it appears
that Appellant is disregarding explicit teachings in Schulman in order to
make such argument. We are not persuaded that Schulman fails to disclose
the employment of a wholly separate “indifferent electrode” 49.
Appellant also contends that a prima facie case of anticipation was not
established as a matter of procedure due to the Examiner seeking guidance
from a dictionary as to the scope of certain claim terms. See e.g., App. Br.
30–43. However, as indicated above, the Examiner noted the existence of a
dictionary definition suggesting an ordinary meaning of “router.” See Ans.
6. Regardless, the Examiner “did not feel this was strong enough BRI, so
the term router has been defined using the [A]ppellant’s [S]pecification as
above.” Ans. 6.
The Examiner’s approach is consistent with procedure established by
our reviewing court. As the Federal Circuit has explained, the Examiner
“may look to extrinsic evidence so long as the extrinsic evidence does not
contradict the meaning otherwise apparent from the intrinsic record.”
Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed.
Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed.
Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a]
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word for guidance” in determining ordinary meaning); Praxair, Inc. v.
ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions,
including [Phillips v. AWH Corp., 415 F.3d 1303, 1322 (Fed. Cir. 2005)], do
not preclude the use of general dictionary definitions as an aid to claim
construction.”). In view of such guidance, and the Examiner’s explicit
reliance on Appellant’s Specification (see Ans. 6), we are not persuaded the
Examiner’s procedure was improper, or that the Examiner’s establishment of
a prima facie case is faulty.
Appellant also contends that the claim construction employed by the
Examiner was not made excruciatingly explicit. See e.g., App. Br. 32, 33,
37, 49. Suffice it to say, our reviewing court has provided the following
guidance on this point, “[t]here has never been a requirement for an
examiner to make an on-the-record claim construction of every term in
every rejected claim and to explain every possible difference between the
prior art and the claimed invention in order to make out a prima facie
rejection. This court declines to create such a burdensome and unnecessary
requirement.”10 Jung, 637 F.3d at 1363 (emphasis in original).
Appellant further contends that “Art Unit 3766 is forcing us to
shadowbox.” App. Br. 45. However, this argument is not persuasive

10 It also appears that Appellant is contesting the Examiner’s claim
construction as somehow being faulty. See e.g., App. Br. 32, 34, 39.
However, as noted above, the Examiner’s claim construction is expressly
based upon Appellant’s Specification. Additionally, Appellant states “the
functionality of the cited portion of our specification is not the functionality
of the router.” Reply Br. 20. This appears to be in direct contradiction with
the language found on, for example, pages 4, 15, and 17 of Appellant’s
Specification.
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because Appellant acknowledges that the Examiner referenced column 29,
lines 10–61 of Schulman. This portion of Schulman teaches the use of “a
pair of output channels to generate a bipolar output using any pair of
electrodes in the electrode array.” The Examiner also references other
specific portions of Schulman (see Final Act. 9) and thus, Appellant’s
attempt to categorize the Examiner’s rejection as requiring “shadowboxing”
is not persuasive. In summation, we are not persuaded the Examiner’s
rejection lacks sufficient support in Schulman or that the Examiner did not
identify where such support can be found. See e.g., Final Act. 7–9, App. Br.
50–54.
It might also be useful to point out that once a prima facie case has
been presented by the Examiner, “the burden shifts to [Appellant] to rebut
the prima facie case with evidence and/or argument,” and does not remain
with the Examiner. Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007).
In conclusion, and as noted above, Appellant’s contentions are not
persuasive that the Examiner erred in relying on Schulman as anticipating
claims 1, 8, 10–12, 16, 18, 20, and 21. We sustain the rejection.
The rejection of claim 22
as unpatentable over Schulman and Leysieffer
Claim 22 depends from claim 20 and includes the additional limitation
of “wherein the device is configured to generate the first electrode
stimulation signal via a processor of the device.” The Examiner identifies
Schulman “Fig. 1, Element 10, Col 4 Ln 42-64” for teaching this limitation.
Final Act. 10. Appellant addresses only the written text, stating “[t]here is
nothing about such generation of electrode stimulation signals in column 4,
lines 42–64.” App. Br. 57. Appellant is apparently disregarding Schulman’s
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disclosure of microprocessor 30 that is coupled to data transmitter 34. See
Schulman 4:59–61. Appellant is also apparently disregarding the teachings
illustrated in Schulman’s Figure 1 which illustrate data transmitter 34 (part
of wearable system 10) having an output signal delivered to receiver 40 (part
of the implant 12). See also Ans. 8. Instead, Appellant asks that “Art Unit
3766 simply identify the exact text of column 4, lines 42-64, alleged to teach
the recitations of claim 22.” See e.g., App. Br. 58, 60. We choose to not
fault the Examiner if Appellant elects to disregard certain text (and an
associated figure) that were specifically identified by the Examiner. See
Final Act. 10; see also Jung supra.
Appellant also appears to have misunderstood the language of claim
22 which recites a device “separate from and remote from the implantable
apparatus” as having the recited “processor.” This is because Appellant
addresses “processor 46” (App. Br. 59) which is part of implant 12, instead
of processor 30 (that the Examiner addresses) which is part of remote
wearable system 10. See Schulman Fig. 1, Ans. 8.
Additionally, Appellant alleges the Examiner took “official notice”
(App. Br. 60), but this is not the case, as the Examiner identified specific
evidence from Schulman, as discussed above. Further, Appellant disputes
the Examiner’s reason for combining Schulman with Leysieffer’s
biocompatible housing (i.e., “to block the seepage of ear fluid” (Final Act.
10)) contending that because of the way implants are inserted, “[n]o ear fluid
will ever reach the housing of Schulman.” App. Br. 61. Appellant also
contends that “a prima facie case of obviousness has not been established.”
App. Br. 62. Appellant provides no support for such contentions, and we
have been instructed that “attorney argument [is] not the kind of factual
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evidence that is required to rebut a prima facie case of obviousness.” In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). For similar reasons
previously addressed, these contentions are not persuasive.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred regarding the rejection of claim 22 as being obvious in
view of Schulman and Leysieffer. We sustain the Examiner’s rejection of
claim 22.
The rejection of claim 33
as unpatentable over Schulman and Zilberman
Claim 33 depends from claim 1 and further recites a remote processor
“wherein the processor is configured to control the router to directly route
said first electrode stimulation signal.” The Examiner relies on Zilberman
for teaching this limitation, and concludes that it would have been obvious to
combine the teachings of Schulman with those of Zilberman’s separate
processor “in order to reduce the size of the implant within the patient.”
Final Act. 11. Appellant asks “what would be eliminated?” See e.g., App.
Br. 63, 66, Appellant, thereby, seemingly ignores the Examiner’s focus on
the processor. Final Act. 11. Appellant also argues “[t]here is no router in
Zilberman” (App. Br. 64), but the Examiner is not relying on Zilberman for
its router, rather for its processor. See Final Act. 11. Further, Appellant
contends that eliminating Schulman’s processor in the implant to reduce the
size of the implant would, instead, “actually increase[] the size of
Schulman.” See e.g., App. Br. 65, 67, 70. This is because, according to
Appellant, utilizing the remote processor “would require that additional
components be added in the [implant’s] housing so as to interface or
otherwise work with the processor.” See e.g., App. Br. 65, 67, 69.
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Appellant provides no support for this contention, and it is not readily
apparent that the removal of a component would actually cause the
remaining package to increase in size. In view of Geisler and Hyatt above,
we are not persuaded by Appellant’s contention.11
Appellant also contends that the Examiner took “official notice” (App.
Br. 67), but the Examiner disagrees. See Ans. 9 (“[T]he Examiner has not
taken official notice.”). We agree with the Examiner that there is no
indication the Examiner relied on “official notice” in the rejection of claim
33. Accordingly, Appellant’s contentions regarding “official notice” are not
persuasive. See App. Br. 67–69. We are also not persuaded by Appellant’s
contention that the Examiner relied on improper hindsight reasoning, as the
Examiner provided a reason to combine the known teachings in the manner
proposed. See App. Br. 71, Final Act. 11.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claim 33 as being obvious over Schulman
and Zilberman. We sustain the Examiner’s rejection of claim 33.
The rejection of claims 4, 6, and 24
as unpatentable over Schulman and Faltys
Claims 4 and 6 depend from claim 24. Claim 24, in turn, depends
from claim 1. In any event Appellant argues claims 4, 6, and 24 together.

11 Further, “[t]he fact that the motivating benefit [may come] at the expense
of another benefit, however, should not nullify its use as a basis to modify
the disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”
Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000).
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See App. Br. 73–86. We select claim 24 for review, with claims 4 and 6
standing or falling with claim 24. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner relies on the teachings of Schulman for many of the
limitations of claim 24, but relies on the teachings of Faltys for disclosing an
implant comprising “a connector assembly” that is “located between (i) the
first stimulation signal channel and the second stimulation signal channel
and (ii) the router” as recited in the claim. Final Act. 13. The Examiner
reasons that a skilled person would have combined the teachings of
Schulman with the connector of Faltys “in order to easily remove the
controlling electronics . . . and the battery can be replaced or charged.”
Final Act. 13. Appellant contends that “one could charge the battery without
a connector” and that if the battery is replaceable, “there is no need to have a
connector as proffered.” App. Br. 75. We note that Appellant is suggesting
possible alternatives to the inclusion of a connector, but Appellant’s
statements are not persuasive that the Examiner’s reason for the combination
of Schulman and Faltys is faulty.
Appellant also states that “[o]ne would not use a feedthrough inside a
hermetically sealed housing.” However, Appellant’s reference to a
“feedthrough” is not readily germane to Faltys’s teaching regarding the use
of a connector. Perhaps Appellant is seeking to bodily incorporate Faltys’s
connector, but we have been instructed that obviousness does not require
that all of the features of the secondary reference be bodily incorporated into
the primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellant also contends that the proffered connector is located in the
wrong place (i.e., downstream the router). See App. Br. 76. However, this
argument is not persuasive in view of Appellant’s acknowledgement that the
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connector location can be altered (see App. Br. 78, 83) and also the
Examiner’s reason for the cited combination which addresses easily moved
electronics viz-a-viz Schulman’s Figure 2 (i.e., current source 62 and control
logic 88 are upstream electrode switching matrix 66 (“router”)).
Regarding removability, Appellant contends that “the person of
ordinary skill in the art is simply going to replace everything.” App. Br. 81.
This again is unsupported attorney argument. Moreover, it is common to
only replace faulty components, or only those components that can be
removed via the opening provided. Additionally, Appellant contends that
the Examiner has taken “official notice” (App. Br. 83), but the Examiner
disagrees. See Ans. 10 (“[T]he Examiner has not invoked official notice.”).
We agree with the Examiner in that there is no indication the Examiner
relied on “official notice” in the rejection of claim 24. Accordingly,
Appellant’s contentions regarding “official notice” are not persuasive. See
e.g., App. Br. 83. Appellant also presents arguments already addressed and
discussed above (see e.g., App. Br. 84–86). We are not persuaded by these
repetitive arguments.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 4, 6, and 24 as being obvious over
Schulman and Faltys. We sustain the Examiner’s rejection of claims 4, 6,
and 24.
The rejection of claims 30 and 31
as unpatentable over Schulman and Faltys
Claim 30 depends from claim 24 and recites “wherein the connector
has no more than five separate conductive contacts.” The Examiner relies
on Faltys as teaching this limitation. See Final Act. 13, Ans. 11, Faltys Fig.
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14. Appellant does not dispute Faltys’s teaching, but asks “[w]hy would the
person of ordinary skill in the art utilize a five contact connector in
Schulman?” App. Br. 87. The Examiner responds stating that Faltys’s
disclosed use of a bulkhead connector “is a known alternative which would
not affect the overall function of the device.” Ans. 11. This response is
consistent with instructions from the Supreme Court stating “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007). Appellant does not explain how
this teaching in Faltys would not yield predictable results when employed in
Schulman.
Claim 31 depends from claim 30. Appellant repeats arguments
previously presented with respect to claim 30. See App. Br. 88. Such
arguments are not persuasive for similar reasons.
Accordingly, we sustain the Examiner’s rejection of claims 30 and 31
as being obvious over Schulman and Faltys.
The rejection of claims 25 and 26
as unpatentable over Schulman and Faltys
Appellant repeats arguments presented above with respect to claim 24.
See App. Br. 89–99. Such arguments are not persuasive for reasons already
expressed. We sustain the Examiner’s rejection of claims 25 and 26 as
being obvious over Schulman and Faltys.
The rejection of claim 34
as unpatentable over Schulman and Faltys
In addition to relying on arguments previously presented with respect
to claim 24 (see App. Br. 99), Appellant focuses attention on the limitation
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“direct wired signal communication with the router,” stating that this
limitation is not addressed. See App. Br. 100. The Examiner specifically
relies on Figure 2 of Schulman for teaching this limitation. See Ans. 11.
Appellant does not explain how the Examiner’s reliance on Schulman for
such teaching is faulty. We sustain the Examiner’s rejection of claim 34 as
being obvious over Schulman and Faltys.
The rejection of claim 35
as unpatentable over Schulman and Faltys
Claim 35 includes a limitation reciting that the number of stimulation
signal channels (including first and second such channels) “is less than the
total number of the electrodes” and “wherein at least one reference
electrode, in addition to the plurality of electrodes . . . , is present.” In
rejecting this claim, the Examiner references Schulman “Col 5 Ln 56 - Col 6
Ln 4” (Final Act. 12) which discusses not only sixteen electrodes 48, but
also “an indifferent electrode” 49. See also Schulman Fig. 2. Appellant
does not explain how or why this teaching by Schulman of sixteen
electrodes, and a separate indifferent electrode, fails to teach the above-cited
claim limitation. See App. Br. 101–103. We sustain the Examiner’s
rejection of claim 35 as being obvious over Schulman and Faltys.
The rejection of claim 36
as unpatentable over Schulman and Faltys
Claim 36 includes a limitation addressing the first and second
stimulation signal channels stating that their number “is less than the total
number of electrode signal channels and less than the total number of
electrodes minus 1.” As above, the Examiner references Schulman “Col 5
Ln 56 - Col 6 Ln 4” (Final Act. 13) which identifies sixteen electrodes 48
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and accompanying channels. See also Schulman Fig. 2. Appellant does not
explain how or why this teaching by Schulman fails to teach the above-cited
claim limitation. See App. Br. 103–106. We sustain the Examiner’s
rejection of claim 36 as being obvious over Schulman and Faltys.
The rejection of claim 32
as unpatentable over Schulman and Faltys
Claim 32 depends from claim 10 above and additionally recites
passing a fist electrode stimulation signal through a connector “prior to the
first electrode stimulation signal being routed at said interface.” Appellant
contends, “[t]here is no router in Faltys” (App. Br. 106), but the Examiner
did not rely on Faltys for teaching a router (see Final Act. 15, Ans. 11).
Furthermore, the Examiner relies on Faltys “Col 24 Ln 28-46” for disclosing
the above limitation (Final Act. 16) which discusses Figure 14 of Faltys
(more detail is provided in Figure 15). Appellant does not explain how this
disclosure in Faltys fails to satisfy the above limitation. We sustain the
Examiner’s rejection of claim 32 as being obvious over Schulman and
Faltys.
The rejection of claim 27
as unpatentable over Schulman and Faltys
Appellant relies on arguments previously presented with respect to
claim 24 and also repeats the argument above that “there is no router in
Faltys.” App. Br. 108. Such arguments are not persuasive of Examiner
error as noted above. We sustain the Examiner’s rejection of claim 27 as
being obvious over Schulman and Faltys.
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The rejection of claim 29
as unpatentable over Schulman and Faltys
Appellant traverses the rejection of claim 29 “for at least the pertinent
reasons detailed above with respect to the ‘less than’ recitation of claim 24.”
App. Br. 109. This “less than” argument resembles, on the one hand, the
“ground as the neutral” argument addressed above with respect to claim 1
(compare App. Br. 28, with id. at 84–86). On the other hand, the actual
claim language recited in claim 29 resembles that found in claims 35 and 36
discussed above as well. Such arguments are not persuasive of Examiner
error for the reasons above, and they are likewise not persuasive when
repeated here. Accordingly, we sustain the Examiner’s rejection of claim 29
as being obvious over Schulman and Faltys.
The rejection of claims 15 and 19
as unpatentable over Schulman and Zilberman
Appellant agues claims 15 and 19 together. We select claim 15 for
review, with claim 19 standing or falling with claim 15. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Claim 15 depends from claim 10 and recites the additional limitation
of generating a first electrode stimulation signal “at a processor located
separate from said implantable electrode interface.” Similar to the
discussion of claim 33 above, the Examiner determines that it would have
been obvious “to include a separate processor such as that taught by
Zilberman in order to reduce the size of the implant within the patient.”
Final Act. 15. Appellant repeats the argument that “Art Unit 3766 is taking
official notice” (App. Br. 109), but the Examiner disagrees. See Ans. 11
(“[t]he Examiner has not taken official notice.”). We agree with the
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Examiner in that there is no indication the Examiner relied on “official
notice” in the rejection of claim 15. Accordingly, Appellant’s contentions
regarding “official notice” are not persuasive. See App. Br. 109–111.
Appellant also “traverses the rejection of claims 15 and 19 for at least
the pertinent reasons detailed above in this regard with respect to the
traversal above of claim 33.” App. Br. 111. Such arguments are not
persuasive of Examiner error for the reasons above, and they are likewise
not persuasive when repeated here. We sustain the Examiner’s rejection of
claims 15 and 19 as being obvious over Schulman and Zilberman.
The rejection of claim 28
as unpatentable over Schulman, Faltys, and Leysieffer
Appellant repeats the contention made above with respect to claim 22
regarding the location of the implant when embedded in a human. See App.
Br. 112; see also App. Br. 61. Such argument is not persuasive of Examiner
error for the reasons above, and it is likewise not persuasive when repeated
here. We sustain the Examiner’s rejection of claim 28 as being obvious over
Schulman, Faltys, and Leysieffer.
The rejection of claim 14
as unpatentable over Schulman and Conn
Claim 14 depends from claim 10 and recites the additional limitation
of “interconnecting a first stimulation signal cable to said router.” The
Examiner relies on Conn for teaching a control system “for a human tissue
stimulator and discloses using a cable (106).” Final Act. 14. Appellant does
not address Conn’s disclosure of using “wire 106.” Conn ¶ 30. Instead,
Appellant contends “that [Schulman’s] router is inside the housing” and that
the Examiner does not modify the housing “such that the cable can be
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extended into the housing so that it can be attached to the router.” App. Br.
113. The Examiner responds, “Conn clearly shows that a cable or wire can
extend from the controlling electronics to an actuator inside the ear.” Ans.
12. The Examiner’s finding is supported by Figures 1 and 3 of Conn
illustrating wire 106 extending between housing 100 and/or signal processor
104 and transducer 108 of an implanted hearing aid. Accordingly, we
sustain the Examiner’s rejection of claim 14 as being obvious over
Schulman and Conn.
Appellant’s Reply Brief
Appellant’s Reply Brief reiterates many of the arguments already
presented in Appellant’s Appeal Brief, and which are discussed above. See
Reply Brief generally. However, one new theme arising in Appellant’s
Reply Brief is the concept that because the Examiner may not have refuted a
particular argument made by Appellant to the degree Appellant desires, this
argument “is conceded per MPEP 707.” See e.g., Reply Br. 16. Nowhere
does Appellant identify where it is stated in MPEP § 707 that a failure by an
Examiner to respond to an argument is a concession of the argument made.
Any attempt by Appellant to contort MPEP § 707 into such a rule has no
basis. Consequently, we elect to not respond to this type of assertion where
made.
DECISION
The Examiner’s rejection of claim 31 as being indefinite is reversed.
The Examiner’s rejection of claims 1, 8, 10–12, 16, 18, 20, and 21 as
anticipated by Schulman is affirmed.
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The Examiner’s rejections of claims 4, 6, 14, 15, 19, 22, and 24–36 as
unpatentable over different combinations of Schulman, Faltys, Leysieffer,
Zilberman, and Conn are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED