COCHLEAR LIMITEDDownload PDFPatent Trials and Appeals BoardApr 7, 20212020001835 (P.T.A.B. Apr. 7, 2021) Copy Citation 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. Appeal 2020-001835 Application 14/318,256 2 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 Appeal 2020-001835 Application 14/318,256 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. Appeal 2020-001835 Application 14/318,256 4 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 Appeal 2020-001835 Application 14/318,256 5 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 Appeal 2020-001835 Application 14/318,256 6 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 Appeal 2020-001835 Application 14/318,256 7 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 Copy with citationCopy as parenthetical citation