Cochlear Limited

Patent Trials and Appeals BoardMay 25, 2021

2020006580 (P.T.A.B. May. 25, 2021)

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. 15/164,494 05/25/2016 John Michael HEASMAN 5441-095 2771 111614 7590 05/25/2021 Pilloff Passino & Cosenza LLP 2000 Duke Street Suite 300 Alexandria, VA 22314 EXAMINER DORNA, CARRIE R ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 05/25/2021 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 JOHN MICHAEL HEASMAN and JORIS WALRAEVENS Appeal 2020-006580 Application 15/164,494 Technology Center 3700 ____________ Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and MICHAEL L. HOELTER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 17–23 and 32–38. See Final Act. 1 (Office Action Summary). Appellant’s counsel presented oral argument on May 10, 2021. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM the Examiner’s rejections of these claims. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Cochlear Limited.” Appeal Br. 2. Appeal 2020-006580 Application 15/164,494 2 CLAIMED SUBJECT MATTER The disclosed subject matter is directed to “a hearing prosthesis including an external component and an implantable component.” Spec. ¶ 6. System claim 17 is the sole independent claim. Claim 17 is illustrative of the claims on appeal and is reproduced below. 17. A hearing prosthesis system, comprising: a direct acoustic cochlear stimulator (DACS) sub-system; and an electrophysiology measurement sub-system, wherein at least a portion of the DACS sub-system and at least a portion of the electrophysiology measurement sub-system are configured to be permanently implanted in a recipient. EVIDENCE Name Reference Date Waldmann US 2005/0131272 A1 June 16, 2005 Daly et al. (“Daly”) US 2005/0159791 A1 July 21, 2005 Spitaels et al. (“Spitaels”) US 2010/0324355 A1 Dec. 23, 2010 REJECTIONS Claims 34 and 35 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.2 Claims 17–21, 23, 36, and 38 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Spitaels. 2 The rejection of “[c]laim 19 under 35 U.S.C. [§] 112(b)” has been withdrawn and Appellant has overcome the rejection of “[c]laims 36–38 under 35 U.S.C. [§] 112(b).” Ans. 3; Advisory Action mailed December 5, 2019. Appeal 2020-006580 Application 15/164,494 3 Claims 22, 35, and 37 are rejected under 35 U.S.C. § 103 as unpatentable over Spitaels and Daly. Claims 32 and 33 are rejected under 35 U.S.C. § 103 as unpatentable over Spitaels. Claim 34 is rejected under 35 U.S.C. § 103 as unpatentable over Spitaels, Daly, and Waldmann. ANALYSIS We note that Appellant presages their arguments regarding the claims on appeal with a general discussion of current patent prosecution procedure. See, e.g., Appeal Br. 12–33. However helpful Appellant may have deemed this to be, we focus primarily on those portions of Appellant’s Briefs that address a specific rejection of a specific claim limitation to ascertain whether proper procedures were, indeed, followed in that matter. The rejection of claims 34 and 35 under 35 U.S.C. § 112(b) as being indefinite Dependent claim 34 recites the limitation that the prosthesis “is not configured” a certain way. Claim 35, dependent from the same parent claim, similarly recites that the prosthesis system is “not configured” a certain way. The Examiner notes their “negative limitation” and also states that “there is nothing inherently ambiguous or uncertain” regarding such claims “[s]o long as the boundaries of the patent protection sought are set forth definitely.” Final Act. 3; Ans. 14 (citations omitted). The Examiner reiterates, however, that negative claim limitations can be rendered indefinite if the limitation is an “attempt to claim the invention by excluding what the inventors did not Appeal 2020-006580 Application 15/164,494 4 invent rather than distinctly and particularly pointing out what they did invent.” Final Act. 3; Ans. 14 (citations omitted). Appellant replicates this rejection by the Examiner but misinterprets the Examiner’s position as being, “[t]he above presupposes per se rule against negative limitations” and “[w]hy would the MPEP say these nice things about negative recitations if such was always indefinite.” Appeal Br. 124. The Examiner did not, in any way, presuppose a per se rule against negative limitations nor did the Examiner indicate that negative recitations were “always indefinite” as Appellant contends. Appeal Br. 124. Instead, the Examiner was indicating that, like any other limitation, a negative claim limitation must be definite under 35 U.S.C. § 112(b) while also having written description support in the original disclosure. To be clear, the MPEP section cited by the Examiner (i.e., MPEP § 2173.05(i)) states, “[a]ny negative limitation or exclusionary proviso must have basis in the original disclosure.” If true, that the negative limitation lacks a basis in the original disclosure, Appellant contends that “[s]ubsequent case law overrules the Examiner’s interpretation” citing cases dated “1963” and “1967.” Appeal Br. 125–6. These cases are not “subsequent” to the MPEP section cited, nor do they overrule or render inoperable the current examining procedure regarding negative claim limitations. Appellant further contends that “because the pretext of the rejection is flawed, a prima facie case of indefiniteness has not been established.” Appeal Br. 127; see also Reply Br. 106. However, Appellant did not further address why the claim is not indefinite beyond saying “the Examiner bears the initial burden” and “we have provided sufficient rebuttal.” Appeal Br. 127. In view of the record Appeal 2020-006580 Application 15/164,494 5 presented, we are not persuaded that the Examiner failed to make a prima facie case in this matter. Thus, for the above reasons, we are not persuaded by Appellant that the Examiner erred in rejecting claims 34 and 35 as being indefinite. The rejection of claims 17–21, 23, 36, and 38 under 35 U.S.C. § 102(a)(1) as anticipated by Spitaels Appellant presents arguments for claims 17–19, 21, and 36. We address these claims below. The remaining claims (i.e., claims 20, 23, and 38) stand or fall with their respectively grouped claim. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). CLAIM 17 Claim 17 is the sole independent claim on appeal and recites “an electrophysiology measurement sub-system.” The Examiner references “Figure 1, proximal electrode, 1, distal electrode, 3, and measuring electrodes” as teaching this limitation, along with numerous citations to additional paragraphs in Spitaels. Final Act. 4; see also Ans. 5. Appellant contends, “[t]here is nothing about any electrophysiological measurement in these paragraphs.” Appeal Br. 35; see also id. at 37, Reply Br. 22. Appellant also contends, “[w]e thus need a clear record.” Appeal Br. 35, 37. First, it is not made clear how the Examiner’s recitation to specific paragraphs (acknowledged by Appellant) is not a “clear record.”3 Second, 3 Appellant requests the Examiner “to highlight the attachment indicating where there is express or inherent disclosure” of the above limitation. Appeal Br. 36, 38 (thereafter replicating many of the referenced paragraphs); Reply Br. 20. Appellant, seeks more from the Examiner than the initial procedural duty of establishing a prima facie rejection by adequately explaining the shortcomings the Examiner perceives so that Appellant is properly notified and able to respond. See In re Jung, 637 F.3d 1356, 1362 Appeal 2020-006580 Application 15/164,494 6 anticipation is not an ipsissimis verbis test meaning that the prior art need not employ the exact same terminology to teach or disclose a limitation. See In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990). “An anticipatory reference . . . need not duplicate word for word what is in the claims.” Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991). To be clear, cited paragraph 155 of Spitaels states, “[t]he proximal 1 electrode may be provided with a measuring electrode for measuring the fluid or tissue voltage at the electrode interface.” See also Appeal Br. 39; Ans. 5. Similarly, cited paragraph 178 of Spitaels states, “[t]he distal electrode 3 may be provided with a measuring electrode for measuring the tissue voltage.” See also Appeal Br. 39; Ans. 5. Accordingly, and in view of the various additional paragraphs recited and acknowledged, Appellant does not provide any reason why the electrodes identified and discussed therein fail to measure the patient’s physiology (i.e., fail to teach “an electrophysiology measurement sub-system”) as recited in Claim 17. Accordingly, we sustain the Examiner’s rejection of claim 17 (and claims 20, 23, and 38 which depend directly therefrom) as being anticipated by Spitaels. CLAIM 18 Claim 18 depends from claim 17 and additionally recites “a middle ear implant sub-system.” Appellant’s Specification provides guidance on the term “middle ear implant” stating: (Fed. Cir. 2011). Obviously, Appellant was properly notified as evidenced by Appellant replicating the cited paragraphs. Appeal 2020-006580 Application 15/164,494 7 This hearing prosthesis, commonly referred to as a middle ear implant, converts received sound into a mechanical force that is applied to the ossicular chain or directly to the cochlea via an actuator implanted in or adjacent to the middle ear cavity. Spec. ¶ 4 (italics added); see also Spec. ¶ 118 (discussing “exemplary embodiment[s]”), Ans. 6. The Examiner finds that Spitaels’ “sub-system (5) is a middle ear implant sub-system.” Final Act. 4 (referencing Spitaels ¶ 181 and Figure 1); see also Ans. 6 (Spitaels “is consistent with the plain meaning of the term[] in the art and [A]ppellant’s original specification”). To be clear, Spitaels describes item 5 as part of a “kit” that also comprises electrodes 1 and 3. Spitaels ¶¶ 122–125. It is readily ascertained from Figure 1 of Spitaels that proximal electrode 1 is directed to inner ear 2 while distal electrode 3 is directed to cochlear 4. Paragraph 168 of Spitaels (with italics added) states that in those instances “[w]here the distal electrode 3 is not in physical contact with the auditory nerve 32, it is sufficiently close thereto to retain electrical contact with the auditory nerve 32 or the neural elements inside the cochlea.” See also Spitaels Abstract, ¶ 92 (“implanting a distal electrode (3) such that it makes electrical contact with the cochlea (4)”). Regarding, specifically, vibration generator 5, cited paragraph 181 of Spitaels discusses a frame thereof (22) that is “configured for attachment to a wall of the middle ear” 6 (see Spitaels Fig. 4) or a sub-frame thereof (22a) “that is attached to a bony part of the middle ear or mastoid region” (see Spitaels Fig. 21). In view of these and other teachings of Spitaels, Appellant does not make clear how Figure 1 of Spitaels fails to teach or disclose the recited “middle ear implant sub-system” which, as understood, pertains to converting received sound into a force “applied to the ossicular chain or Appeal 2020-006580 Application 15/164,494 8 directly to the cochlea via an actuator implanted in or adjacent to the middle ear cavity.”4 In short, Appellant does not explain how Figure 2A of Appellant’s Specification discloses the recited “middle ear implant sub- system” whereas Figure 1 of Spitaels does not.5 Appellant further states, “our specification indicates that a middle ear implant applies a mechanical force directly to the cochlea.” Reply Br. 31. However, this only tells part of the story because Appellant’s Specification states that the middle ear implant applies a force “to the ossicular chain or directly to the cochlea,” i.e., not just the cochlea as asserted by Appellant. Spec. ¶ 4. Appellant also alleges that what Spitaels discloses “is indicative of an intra-cochlear stimulator.” Appeal Br. 45; see also Reply Br. 23. Regardless of the terminology used to describe Spitaels’ device, Appellant does not explain how Spitaels fails to disclose a “middle ear implant,” or a subsystem thereof, as described and labelled in paragraph 4 of Appellant’s Specification. See also Ans. 6. 4 “Ossicular chain” (also “auditory ossicles”) refers to “the small bones of the middle ear; they are articulated to form a chain for the transmission of sound from the tympanic membrane to the oval window.” See https://medical-dictionary.thefreedictionary.com/ossicular+chain. 5 Appellant’s further contentions can be condensed to Appellant’s statement that “the specification is ignored and common knowledge in the art is ignored” as well as “[n]owhere does Spitaels disclose that its device is a middle ear implant.” Appeal Br. 41, 44; see also id. at 46–48, Reply Br. 32. Appellant also demands the Examiner “state, on the record, the BRI of this phrase” (Appeal Br. 46) to which the Examiner, in interpreting this limitation, referenced Spec. ¶ 4 cited above (see Ans. 6). We also disagree with Appellant asserting and/or implying that the Examiner engaged in a “defective patent examination.” Appeal Br. 41. Appeal 2020-006580 Application 15/164,494 9 Accordingly, and based on the record presented, we are not persuaded of Examiner error on this point. We sustain the Examiner’s rejection of claim 18 as being anticipated by Spitaels. CLAIM 19 Claim 19 depends directly from independent claim 17 and includes the additional limitation the mechanical cochlear implant is configured to support the at least one measurement electrode in the cochlea of the recipient when the mechanical cochlear implant is implanted therein. The Examiner references Spitaels’ paragraphs 155, 156, 181, 182, 184, 233 for support. See Final Act. 4, 5; see also Ans. 7. Acknowledging these paragraphs, Appellant contends, “[t]here is no disclosure in any of these passages that meet our claim,” and also that “[t]he rejection is completely, 100%, devoid of evaluation of our specification” rendering the rejection “arbitrary and capricious.” Appeal Br. 62; see also Reply Br. 49. The Examiner disagrees stating, “Spitaels expressly teaches” that sub- system 5 “is an electromechanical vibratory actuator implanted at the interface between the inner ear and the middle ear providing vibration to the inner ear (cochlear) fluid.” Ans. 7. This assertion by the Examiner finds explicit support in cited paragraphs 182, 184, and 233 of Spitaels. Appellant does not address these paragraphs in an effort to show error or misinterpretation by the Examiner. Nor does Appellant explain how this disclosure in Spitaels differs from Appellant’s Specification. Appellant also states, “there is absolutely no evaluation whatsoever of the BRI of this claim phrase.” Appeal Br. 62; Reply Br. 49. However, as our reviewing court has stated, Appeal 2020-006580 Application 15/164,494 10 There 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. ‘[Section 132] does not mandate that in order to establish prima facie anticipation, the PTO must explicitly preempt every possible response to a section 102 rejection. Section 132 merely ensures that an applicant at least be informed of the broad statutory basis for the rejection of his claims, so that he may determine what the issues are on which he can or should produce evidence.’ Jung, 637 F.3d at 1363 (referencing Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)). Appellant also characterizes Spitaels’ device as “an intra cochlear acoustic stimulator but one that uses fluid flow.” Appeal Br. 75, Reply Br. 62; see also Appeal Br. 48, Reply Br. 35, 60. Regardless of the terminology employed, Appellant is not persuasive that the Examiner erred in finding that Spitaels’ implant (as depicted in Figure 1 thereof) provides “vibration to the inner ear (cochlear) fluid” (Ans. 7) or that it lacks the requisite measurement electrode (see Spitaels ¶ 155). Accordingly, and based on the record presented, we sustain the Examiner’s rejection of claim 19 as being anticipated by Spitaels. CLAIM 21 Claim 21 depends directly from claim 17 and further recites a “transceiver-stimulator unit.” The Examiner references Figure 1, and specifically item 7, of Spitaels as teaching this limitation. See Final Act. 5 (also referencing Spitaels ¶¶ 155, 178, 249, 269–272, 275); see also Ans. 9, 10. Appellant questions “why is the mere regulating unit 7 a transceiver- stimulator under proper BRI. Indeed, what is the BRI? None is given.” Appeal 2020-006580 Application 15/164,494 11 Appeal Br. 84; Reply Br. 71. Appellant also contends that their “specification is ignored.” Appeal Br. 84. Regarding the former, the answer as to why Spitaels’ regulating unit 7 can be deemed by the Examiner a “transceiver-stimulator unit” could have been readily ascertained by Appellant upon an investigation of one or more of the above cited paragraphs. For example, paragraph 275 of Spitaels clearly states that Spitaels’ “device may also use wireless connectivity to transfer data between the regulating unit 7 and an external device.” See also Ans. 9; Spitaels ¶ 266, Fig. 20. This is consistent with Appellant’s description of their device provided at paragraphs 81, 107, 120, and 122 of Appellant’s Specification. In fact, when addressing paragraph 275 of Spitaels, Appellant acknowledges that “[t]here is support for the finding that [Spitaels item 7] is configured” as a transceiver. Appeal Br. 87; Reply Br. 73. Regarding the stimulating feature of Spitaels item 7, the Examiner references paragraph 249 of Spitaels (Final Act. 5) which teaches that sound information “is converted by the regulating unit 7 to electrical signals for the electrodes 1, 3, and vibration generator 5.” Appellant does not explain how, by providing electrical signals to the electrodes and the vibration generator, it can be said that unit 7 fails to stimulate them. This is consistent with such usage in Appellant’s Specification that refers to “the action of stimulating.” Spec. ¶ 5. Accordingly, in view of such explicit recitation by the Examiner and acknowledgement by Appellant, we sustain the Examiner’s rejection of claim 21 as anticipated by Spitaels. Appeal 2020-006580 Application 15/164,494 12 CLAIM 36 Claim 36 depends directly from claim 17 and further recites “an external component.” The Examiner identifies Spitaels’ regulating unit 7 as teaching this limitation. See Final Act. 5. Appellant disagrees stating “[r]egulating unit 7 is not an external component.” Appeal Br. 9, 90; Reply Br. 9. Indeed, the various figures provided by Spitaels illustrate item 7 as implanted underneath the patent’s skin. However, a closer reading of Spitaels regarding this item 7 reveals the teaching that “regulating unit 7 is preferably implantable.” Spitaels ¶ 252. This would suggest to a skilled reader that regulating unit 7 may, just as well, not be implantable. We further note that Appellant’s Specification instructs the reader that the recited prosthesis includes “an external component and an implantable component.” Spec. ¶ 6; see also Appeal Br. 95, Ans. 10 (the “original specification differentiates ‘external’ elements from ‘implantable’ elements”). Thus, because Spitaels suggests (at a minimum) that unit 7 may not be implantable, then unit 7 would be understood to be, in the terminology of Appellant’s Specification, an “external component.” This determination is consistent with Spitaels’ disclosure above that although “regulating unit 7 is preferably implantable,” it may also not be implanted within a patient, and hence would be external to the patient (as well as “‘external’ with respect to the middle and inner ear cavities” (Ans. 11)). Accordingly, we disagree with Appellant’s contention above that “[r]egulating unit 7 is not an external component.” Appeal Br. 90. We also disagree with Appellant’s contention that “our specification is disregarded” (Appeal Br. 11; see also Reply Br. 81) in light of the Examiner’s specific Appeal 2020-006580 Application 15/164,494 13 reference to it. See Ans. 10. Thus, we sustain the Examiner’s rejection of claim 36 as being anticipated by Spitaels. The rejection of claims 22, 35, and 37 under 35 U.S.C. § 103 as unpatentable over Spitaels and Daly Appellant addresses each of claims 22, 35, and 37 separately. See Appeal Br. 106–111. We do the same as well. CLAIM 22 Claim 22 depends from claim 21, the latter reciting the limitation that the transceiver-stimulation unit is configured to provide data “to an external component.” Claim 22 further requires the above said external component to be “at least one of a behind the ear device or a button sound processor.” Similar to the above, the Examiner identifies Spitaels item 7 as the recited transceiver-stimulation unit and relies on paragraph 275 of Spitaels for teaching its wireless connectivity with an external device. See Final Act. 6, 7. However, the Examiner acknowledges that Spitaels does not specify this external device/component as being “at least one of a behind the ear device or a button sound processor.” Final Act. 7; Ans. 13. The Examiner relies on Daly for teaching the external device/component being a “behind the ear device.” Final Act. 7 (referencing Daly Figs. 8a–8c and device 50); Ans. 13. Appellant does not dispute Daly’s disclosure of a behind the ear device, but instead contends that “[t]he rejection has no rationale to modify the prior art.” Appeal Br. 106; see also Reply Br. 95–96. We disagree. The Examiner expressly stated that it would have been obvious “to modify the external component of Spitaels et al. to include the behind the ear device of Daly et al.” Final Act. 7; see also Ans. 13. The stated reason to do so was “to achieve a hearing sensation” and specifically references Daly paragraphs Appeal 2020-006580 Application 15/164,494 14 100–103, 142, and 143 as support. Final Act. 7. The Examiner’s Answer expands on this reason stating “to facilitate wireless data and power transfer” (while also referencing the same paragraphs in Daly). Ans. 13. Appellant acknowledges the Examiner’s reliance on these various paragraphs of Daly as disclosing this “hearing sensation.” Appeal Br. 106. These identified paragraphs provide a multitude of reasons for employing a behind the ear unit as suggested by the Examiner. For example, Daly paragraph 100 states one benefit of employing such a device as being that a “microphone can be mounted to the housing of the ear hook member.” Paragraph 102 explains a benefit as being that “[t]he transmitter and receiver antennae are used to provide power via transcutaneous induction to the implanted receiver/stimulator unit and the electrode array.” Paragraph 103 explains that such a behind the ear unit “allows the implantee or a third person to adjust the position of the external antenna to achieve optimum alignment of the external antenna to the implanted antenna.” Paragraphs 142 and 143 of Daly reiterate the advantages already discussed in paragraphs 100 and 103. Thus, Appellant’s contention that “[t]he rejection has no rationale to modify the prior art” (Appeal Br. 106; see also Reply Br. 95–96) has no basis. In fact, Appellant even acknowledges that the secondary reference to Daly merely reiterates that what it can do “is nothing that alternate devices cannot do.” Appeal Br. 107; Reply Br. 95. In other words, Appellant acknowledges that “alternate devices” are equally capable of doing what Daly does, thereby implying that such benefits are not only disclosed in Daly, but are also, to some degree, well known in the art. Hence, Appellant Appeal 2020-006580 Application 15/164,494 15 does not explain why the Examiner erred in desiring to modify Spitaels to simply do what other devices are known to do. Accordingly, we are not persuaded the Examiner erred in rejecting claim 22 as being obvious over Spitaels and Daly. We sustain the rejection of claim 22. CLAIM 35 We previously sustained the rejection of claim 35 as being indefinite. See above. We thus decline to speculate as to scope of an indefinite claim because the Board has been informed that the Board erred in addressing an obviousness rejection of an indefinite claim. See In re Steele, 305 F.2d 859 (CCPA 1962). Accordingly, we reverse the Examiner’s art rejection of claim 35. CLAIM 37 Claim 37, like claim 32 above, also recites “at least one of a behind the ear device or a button sound processor.” Appellant contends that the rejection of this claim 37 was in error “for at least the pertinent reasons detailed above vis-à-vis claim 22.” Appeal Br. 108. As we are not persuaded the Examiner erred in rejecting claim 22 (see above), we are likewise not persuaded the Examiner erred in rejecting claim 37. Accordingly, we sustain the Examiner’s rejection of claim 37 as being obvious over Spitaels and Daly. The rejection of claims 32 and 33 under 35 U.S.C. § 103 as unpatentable over Spitaels Appellant addresses each of claims 32 and 33 separately. See Appeal Br. 111–115. We do the same. Appeal 2020-006580 Application 15/164,494 16 CLAIM 32 Claim 32 depends from claim 17 and further recites that “the DACS sub-system is not a middle ear implant sub-system.” The Examiner relies on different embodiments from those discussed above for disclosing such a sub- system. See Final Act. 8 (referencing Figure 19, item 5, and Spitaels ¶¶ 115, 233, 237). The Examiner states that “Spitaels et al. teaches the DACS sub- system may be implanted either in the middle or inner ear depending on the needs of the individual patient.” Final Act. 8. Indeed, these paragraphs 115, 233, and 237 of Spitaels describe securing a vibrating member (5 or 25) to cause vibration in the inner ear 2. Earlier, it was shown that Spitaels also teaches securing the vibrating member “to a wall of the middle ear.” Spitaels ¶ 181. Both Appellant and Spitaels distinguish the middle ear (106, 6, respectively) from the inner ear (107, 2), which are further distinguished from the cochlea (140, 4). Thus, Appellant’s contention of “what constitutes a middle ear implant?” (Appeal Br. 54, Reply Br. 41) has been answered above in accordance with Appellant’s guidance (see Spec. ¶ 4) to the effect that the type of implant is ascertained by the body part being stimulated. Consequently, because Spitaels teaches different embodiments vibrating a middle and inner ear components, Appellant does not make clear how Spitaels fails to teach an inner ear sub-system that “is not a middle ear implant sub-system,” as recited. Accordingly, we sustain the Examiner’s rejection of claim 32 as being obvious over Spitaels. Appeal 2020-006580 Application 15/164,494 17 CLAIM 33 Claim 33 depends from claim 17 and further recites “the DACS sub- system is not a mechanical cochlear implant.”6 The Examiner references the teachings in Spitaels directed to hydraulically transmitting vibrations, which is, as per the Examiner, “thus considered ‘not a mechanical cochlear implant.” Final Act. 8 (referencing Spitaels ¶¶ 181, 202, 203, 211, Fig. 21). Appellant contrasts Spitaels Figure 4 with that of Figure 21 contending, “[t]he only difference is that instead of the vibrator M directly working on the fluid of the cochlea, the vibrator M works on a fluid in a tube, which is separated by a membrane.” Appeal Br. 79, 114; Reply Br. 66, 103. In other words, as Appellant clearly depicts when replicating these two Figures side-by-side (see Appeal Br. 79, 114; Reply Br. 66, 103), Figure 21 of Spitaels employs a membrane 73 at the end of a tube to generate vibrations 26 whereas Figure 4 does not, whose vibrator M, instead, contacts the fluid directly to generate vibrations 26. Appellant even acknowledges that there is no difference between the two “other than the mere fact that there is a hydraulic system that is isolated from the fluid inside the cochlea.” Appeal Br. 114. This “mere fact” is significant in that it is this “hydraulic system” that distinguishes the one from the other. Accordingly, and because of this “hydraulic system”, we agree with the Examiner that Spitaels discloses a sub-system that “is not a mechanical cochlear implant” as recited. 6 The Examiner does not raise this issue, but claim 33 is directed to a non- mechanical (“not a mechanical”) implant yet Appellant’s Specification pertains to a “Mechanical” implant. Spec. Title. It is not made clear where support for this non-mechanical limitation can be found in Appellant’s original disclosure. Appeal 2020-006580 Application 15/164,494 18 Appellant further contends that “[c]laim 33 recites the exact opposite of what is recited in claim 19.” Appeal Br. 80. Yet, Appellant fails to acknowledge that different embodiments of Spitaels are relied upon for teaching these different limitations (i.e., one embodiment is not relied upon for teaching these “opposite” limitations. Appeal Br. 80. Accordingly, we are not persuaded the Examiner erred in rejecting claim 33 as being obvious in view of Spitaels. The rejection of claim 34 under 35 U.S.C. § 103 as unpatentable over Spitaels, Daly, and Waldmann Although claim 34 was sustained as being indefinite (see above), Appellant challenges the Examiner’s motivation when combining these references. See Appeal Br. 116; Reply Br. 104. We thus are not in the position of relying upon speculative claim interpretation when addressing this rejection. See Steele, 305 F.2d at 862. The Examiner’s motivation to combine Spitaels and Daly has been addressed above when discussing claim 22, and this discussion will not be repeated or replicated here. Regarding the further combination with Waldmann, the Examiner references paragraphs 12, 39, and 41 thereof as support. See Final Act. 10. To be clear, the Examiner relies on “suitable alternative configurations” to evaluate data so as to “ensure optimal functioning of the prosthesis.” Final Act. 10. The three cited paragraphs of Waldmann support the Examiner’s understanding that there are alternate configurations by which electrophysiological measurements may be undertaken. For example, paragraph 12 of Waldmann teaches that the devices employed “may be disposed external to the patient, or they may be incorporated into the implantable components.” Paragraph 39 discusses graphically displaying a user interface to achieve “real-time Appeal 2020-006580 Application 15/164,494 19 positioning of the implantable transducer” within the ear. This same paragraph also discusses employing a control signal “to realize at least partially automated positioning of the implantable transducer.” Paragraph 41 discusses receiving measurements “on an automatic, periodic basis and/or pursuant to a user prompt.” In any event, each of these methodologies are employed to, as expressed by the Examiner, “ensure optimal functioning of the prosthesis.” Final Act. 10. Appellant does not address these reasons, or otherwise show how the Examiner’s reliance thereof might be faulty. Accordingly, we sustain the Examiner’s rejection of claim 34 as being obvious in view of Spitaels, Daly, and Waldmann. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 34, 35 112(b) Indefinite 34, 35 17–21, 23, 36, 38 102 Spitaels 17–21, 23, 36, 38 22, 35, 37 103 Spitaels, Daly 22, 37 35 32, 33 103 Spitaels 32, 33 34 103 Spitaels, Daly, Waldmann 34 Overall Outcome 17–23, 32, 38 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED