COCHLEAR LIMITED

Patent Trials and Appeals Board

Apr 7, 2021

2020001835 (P.T.A.B. Apr. 7, 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.
14/318,256 06/27/2014 Andrew David Fort 3065.0473C 2645
110239 7590 04/07/2021
Edell Shapiro & Finnan LLC
9801 Washingtonian Blvd., Suite 750
Gaithersburg, MD 20878
EXAMINER
SHARIEF, MOHAMMED JAMEEL
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
04/07/2021 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):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW DAVID FORT
____________

Appeal 2020-001835
Application 14/318,256
Technology Center 2800
____________

Before CATHERINE Q. TIMM, MERRELL C. CASHION, JR., and
SHELDON M. MCGEE, Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to finally reject claims 1, 3, 4, and 6–21. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

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. 3.
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Appellant’s invention “relate[s] to devices and methods that are
used to bridge between standard wireless charging protocols and
proprietary wireless charging protocols” for the purpose of charging
“the battery of a fully-implanted hearing prosthesis.” Spec. ¶ 2.
Claim 1 is illustrative of the subject matter claimed and is reproduced
below:
1. An apparatus comprising:
a housing;
a first induction device disposed in the housing, the first
induction device for receiving a first wireless charging protocol
having a first frequency;
a second induction device disposed in the housing, the
second induction device for transmitting a second wireless
charging protocol having a second frequency, wherein the
second induction device is disposed within an outer perimeter
of the first induction device; and
a conversion circuit operably connected to the first
induction device and the second induction device for converting
the first wireless charging protocol to the second wireless
charging protocol.
Appeal Br. 36 (Claims Appendix). Independent claim 10 recites a method
of using the apparatus of claim 1. Appeal Br. 37 (Claims Appendix).
Independent claim 18 recites an apparatus similar to claim 1. Appeal Br. 38
(Claims Appendix).
Appellant requests review of the following rejections from the
Examiner’s Final Office Action dated December 10. 2018:
I. Claims 1, 4, 7–10, 13, 15, and 18–21 rejected under 35 U.S.C.
§ 103 as unpatentable over Jakubowski (US 2009/0039828 A1, published
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3
February 12, 2009) and Lee (US 2014/0354223 A1, published December 4,
2014);

II. Claim 3 rejected under 35 U.S.C. § 103 as unpatentable over
Jakubowski, Lee, and Azancot (US 2014/0285008 A1, published September
25, 2014);

III. Claim 6 rejected under 35 U.S.C. § 103 as unpatentable over
Jakubowski, Lee, and Azancot (US 2013/0241478 A1, published September
19, 2013);

IV. Claims 11 and 12 rejected under 35 U.S.C. § 103 as
unpatentable over Jakubowski, Lee, and Leabman (US 2015/0015194 A1,
published January 15, 2015);

V. Claim 14 rejected under 35 U.S.C. § 103 as unpatentable over
Jakubowski, Lee, and Partovi (US 2013/0099735 A1, published April 25,
2013);

VI. Claim 16 rejected under 35 U.S.C. § 103 as unpatentable over
Jakubowski, Lee, and Koskinen (US 2004/0185826 A1, published
September 23, 2004);

VII. Claim 17 rejected under 35 U.S.C. § 103 as unpatentable over
Jakubowski, Lee, and Qian (US 2014/0183962 A1, published July 3, 2014).

OPINION

After review of the respective positions Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Office
Action and the Answer, we reverse the Examiner’s prior art rejections of
claims 1, 3, 4, and 6–21 under 35 U.S.C. § 103 for the reasons Appellant
provides. We add the following for emphasis.

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Independent claim 1 recites an apparatus comprising first and second
induction devices wherein the second induction device is disposed within an
outer perimeter of the first induction device. Independent claims 10 and 18,
similarly require a second induction device that surrounds the first induction
device. Thus, all the claims require one induction device be disposed within
an outer perimeter of another induction device.
The Examiner rejects independent claims 1, 10, and 18 as obvious
over the combination of Jakubowski and Lee. We refer to the Examiner’s
Final Office Action for a complete statement of the rejection of the
independent claims. Final Act. 6–7, 10–11, and 12–14.
Briefly, the Examiner finds Jakubowski teaches an apparatus
comprising first and second induction devices (104, 108) where the second
induction device (108/106) is disposed within an outer perimeter of the first
induction device (104/102) as claimed. Final Act. 6; Jakubowski Figure 1.
In the Answer, the Examiner explains that induction chargers are normally
manufactured by placing a transmitter coil on top of the charger housing and
a receiver coil on a bottom side of the charger housing. Ans. 4. The
Examiner finds Jakubowski’s apparatus has a second induction device
(104/102) disposed near or adjacent to the first induction device (108/106) in
the wireless charger housing 100 such that the second induction device can
be considered as disposed within an outer perimeter of the first induction
device as claimed. Id. at 6.
Appellant argues the Examiner erred in reasoning that Jakubowski
discloses an induction device being disposed within an outer perimeter of
another induction device. Appeal Br. 16, 18. According to Appellant,
Jakubowski is silent regarding the relative positioning of the transmit and
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receive components. Id. Appellant argues that even assuming that
Jakubowski’s two components are adjacent to each other, the Examiner
provides no evidence on the record that being adjacent would be understood
to mean that one component is “disposed within any arbitrary outer
perimeter” of the other. Id. In other words, Appellant contends the claimed
arrangement does not follow from adjacency because the term “adjacent”
describes objects being next to each other rather than one being inside
another and, thus, whether objects are adjacent each other is not actually
dispositive of whether one object is within the perimeter of another. Id. at
18. Thus, Appellant asserts the Examiner’s reasoning that Jakubowski
teaches or suggests the claimed positioning of inductive devices is
unsupported by evidence or adequate explanation. Id. at 17, 19.
Appellant has identified reversible error in the Examiner’s
determination of obviousness.
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The
fact finder must be aware “of the distortion caused by hindsight bias and
must be cautious of arguments reliant upon ex post reasoning.” KSR, 550
U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966)
(“warning against a ‘temptation to read into the prior art the teachings of the
invention in issue’”)). In addition, “[a]ll words in a claim must be
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considered in judging the patentability of th[e] claim against the prior art.”
See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
As Appellant argues, the subject matter of claim 1 recites that “the
second induction device is disposed within an outer perimeter of the first
induction device.” Appeal Br. 17, 18. The Examiner directs us to no
portion of Jakubowski that discloses any spatial relationship between the
induction devices 104 and 108. See generally Final Act. and Ans. Also, the
Examiner’s finding that one of ordinary skill in the art would have read
Jakubowski as teaching the second induction device 102/104 as disposed
within any arbitrary perimeter drawn in the surrounding area of the first
induction device 106/108 within the wireless charger housing lacks
evidentiary support. Ans. 7. Further, the Examiner’s technical explanation
is insufficient as an “articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418.
First, the Examiner’s “arbitrary perimeter” appears to include any perimeter
drawn in the surrounding area of the first induction device 106/108 within
the wireless charger housing. Ans. 7. The Examiner does not explain how
such a perimeter meets the claim recitation of “the second induction device
is disposed within an outer perimeter of the first induction device.” That is,
the Examiner’s explanation does not take into account that it is the outer
perimeter of the first induction device within which the second induction
device is disposed. Thus, the Examiner does not consider all words in the
claim in making the determination of obviousness. Wilson, 424 F.2d at
1385. In addition, the Examiner does not explain sufficiently why one of
ordinary skill in the art would have understood the noted claim language to
encompass any perimeter drawn in the surrounding area of the first induction
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device 106/108 within the wireless charger housing. Specifically, the
Examiner does not explain why any perimeter drawn in a surrounding area
of the first induction device is the same as an outer perimeter of the first
induction device.
Neither Lee nor the other prior art references, as applied by the
Examiner, remedy the deficiency. Accordingly, we reverse the Examiner’s
prior art rejections of claims 1, 3, 4, and 6–21 under 35 U.S.C. § 103 for the
reasons Appellant provides and we give above.

DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4, 7–10,
13, 15,
18–21
103 Jakubowski, Lee 1, 4, 7–10,
13, 15,
18–21
3 103 Jakubowski, Lee,
Azancot ’008
3
6 103 Jakubowski, Lee,
Azancot ’478
6
11, 12 103 Jakubowski, Lee,
Leabman
11, 12
14 103 Jakubowski, Lee,
Partovi
14
16 103 Jakubowski, Lee,
Koskinen
16
17 103 Jakubowski, Lee,
Qian
17
Overall
Outcome
1, 3, 4,
6–21

REVERSED