EarLens CorporationDownload PDFPatent Trials and Appeals BoardAug 23, 20212021000490 (P.T.A.B. Aug. 23, 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. 15/187,407 06/20/2016 Rodney C. PERKINS 33999-707.302 2314 21971 7590 08/23/2021 WILSON SONSINI GOODRICH & ROSATI 650 PAGE MILL ROAD PALO ALTO, CA 94304-1050 EXAMINER KUHLMAN, CATHERINE BURK ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 08/23/2021 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): patentdocket@wsgr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RODNEY C. PERKINS and VINCENT PLUVINAGE Appeal 2021-000490 Application 15/187,407 Technology Center 3700 Before JENNIFER D. BAHR, PHILLIP J. KAUFFMAN, and SEAN P. O’HANLON, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–10. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Earlens Corporation. Appeal Br. 3. In our Decision, we refer to the Specification filed June 20, 2016, (“Spec.”), the Final Office Action mailed may 29, 2019 (“Final Act.”), the Appeal Brief filed June 18, 2020 (“Appeal Br.”), and the Examiner’s Answer mailed July 10, 2020 (“Ans.”). Appeal 2021-000490 Application 15/187,407 2 We AFFIRM. THE CLAIMED SUBJECT MATTER The Application is titled, “Systems and methods for photo-mechanical hearing transduction,” and relates to the use of light signals for producing vibrational energy in a transduction pathway from a subject’s tympanic membrane to the subject’s cochlea. Spec., Title, ¶ 2. Claims 1 and 8 are independent. We reproduce claim 8 below. 8. An output transducer assembly configured for placement on a tympanic membrane, the transducer assembly being adapted to couple to a hearing transduction pathway of a subject when positioned on the subject’s tympanic membrane to induce neural impulses interpreted as amplified sound, said output transducer configured to receive a light signal from the light source and convert the light signal to mechanical vibration, the output transducer comprising a cantilever element clamped at one end of a support element and a small mass attached at a free end of the cantilever, wherein the output transducer assembly is configured to vibrate the mass on the cantilever. EVIDENCE The prior art relied upon by the Examiner is: Name Reference Date Ball US 5,624,376 Apr. 29, 1997 Van Antwerp US 6,011,984 Jan. 4, 2000 Glendon US 6,493,453 B1 Dec. 10, 2002 Hamanaka US 6,523,985 B2 Feb. 25, 2003 Abel WO 03/063542 A2 July 31, 2003 REJECTIONS I. Claims 8 and 10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ball and Abel. Appeal 2021-000490 Application 15/187,407 3 II. Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Ball, Abel, and Van Antwerp. III. Claims 1 and 4–7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ball, Abel, and Glendon. IV. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Ball, Abel, Glendon, and Van Antwerp. V. Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Ball, Abel, Glendon, Van Antwerp, and Hamanaka. OPINION Rejection I – Obviousness Based on Ball and Abel In rejecting independent claim 8, the Examiner finds that Ball discloses an output transducer assembly (transducer 100) configured for placement on a tympanic membrane (tympanic membrane CC).2 Final Act. 5 (citing Ball, Fig. 19a, 16:35–43, 58–62); see also Ball 1:13–30, 3:48–49, Figs. 1, 19a (showing the portion of the ear corresponding to “CC”). The Examiner finds that Ball’s transducer 100 is configured to receive signals from external sound transducer 506 via magnetic induction (rather than light) and converts the signals into mechanical vibrations. Final Act. 5–6 (citing Ball 16:58–62). The Examiner finds that Abel teaches “a technique for transmitting a sound signal from an external sound transducer to an implanted transducer coupled to a component of the hearing transduction pathway using light.” Id. at 6. In particular, the Examiner finds that Abel 2 Here, and throughout, parenthetical nomenclature refers to the prior art reference. Appeal 2021-000490 Application 15/187,407 4 teaches an output transducer “configured to receive a light signal from a light source and convert the light signal to mechanical vibration (light signal generated by external ear microphone is received by a photoreceiver on the implant and converted to an electrical signal for driving an actuator).” Id. (citing Abel 3, 7). The Examiner determines that it would have been obvious to use light, as opposed to magnetic induction, to transmit the sound signal in the system of Ball, and thus configure the output transducer to receive a light signal from a light source and convert the light signal to mechanical vibration, because Abel teaches problems with magnetic induction such as high power consumption, signal variations, and background noise, which are not present in a light-coupled system. Id. (citing Abel 2–3). Appellant argues that Abel discloses “a middle or inner ear implant, and does not teach or reasonably suggest any output transducer assembly sized for placement on the tympanic membrane.” Appeal Br. 6 (citing Abel, Abstr., 3:21–22, Fig. 1). We are not persuaded by this argument because it is inapposite in that it attacks Abel individually rather than as combined in the rejection. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981). As discussed above, the Examiner relies on Ball, not Abel, for disclosing an output transducer configured for placement on a tympanic membrane. See Final Act. 5 (finding that Ball’s transducer 100 is placed on tympanic membrane CC); Ans. 3 (explaining that “Ball is applied as the primary reference and is used to teach an output transducer assembly sized for Appeal 2021-000490 Application 15/187,407 5 placement on the tympanic membrane (fig. 19a)”). The Examiner relies on Abel only for teaching a technique for transmitting sound signals to an output transducer using light. Final Act. 6 (citing Abel 3, 7). Appellant contests the Examiner’s finding that Ball discloses a transducer assembly configured for placement on a tympanic membrane. See Appeal Br. 6. In particular, Appellant asserts that Ball is “directed to the placement of floating mass transducers in the middle ear to vibrate the bones of the inner ear directly.” Appeal Br. 6 (citing Ball, Figs. 5a, 7–10, 14, 18, 19a, 19b, 23, 24). This argument is unpersuasive. Ball discloses, with reference to Figure 19a, “an implementation where the floating mass transducer of the present invention is removably placed in contact with the tympanic membrane. A transducer 100 is shown attached to the tympanic membrane CC with a flexible membrane 502.” Ball 16:36–40. In other words, Ball’s transducer is positioned on the tympanic membrane in the external ear AA, not in the middle ear JJ. Ball 1:20–21, Figs. 1, 19a. Further, in that position, Ball’s transducer directly vibrates the tympanic membrane, not the bones of the inner ear. Ball 16:36–40. Appellant argues that the Examiner’s proposed combination of Ball and Abel is deficient because “[t]here is no teaching in either reference which would guide on[e] of skill in the art to combine the various elements of these two references in the manner suggested by the Office.” Appeal Br. 7. In particular, Appellant asserts that “Abel does not teach or suggest that there would be problems with magnetic induction in systems wherein the actuator can be placed on the tympanic membrane and the pickup coil positioned in the ear canal close to the transmit coil, such as illustrated in Appeal 2021-000490 Application 15/187,407 6 Figure 19a of Ball.” Id. at 6 (emphasis omitted). For the reasons that follow, this line of argument is unpersuasive. Appellant appears to insist on an explicit teaching, suggestion, or motivation in the cited references to establish obviousness, but such a requirement has been foreclosed by the Supreme Court. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (stating that a rigid insistence on teaching, suggestion, or motivation is incompatible with the Court’s precedent concerning obviousness). The Court noted that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for [an examiner] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Instead, the relevant inquiry is whether the Examiner has set forth “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), cited with approval in KSR, 550 U.S. at 418. Here, as discussed above, the Examiner reasons that one of ordinary skill in the art would have modified Ball’s system to use light, rather than magnetic induction, to transmit sound signals to the output transducer because light transmission has known advantages over magnetic induction. See Final Act. 6 (explaining that light transmission does not have problems with high power consumption, signal variations, and background noise that are known to affect magnetic induction (citing Abel 2–3)). Appellant does directly address the Examiner’s reasoning and consequently has not identified error. Appellant argues that Abel is “directed to transmitting signals through opaque tissue such as the tympanic membrane (with chicken skin as a test tissue), minimizing the need for invasive devices traversing the tympanic Appeal 2021-000490 Application 15/187,407 7 membrane and/or adjacent tissue to access the middle ear transducer.” Appeal Br. 7 (citing Abel, Figs. 1–2). Appellant elaborates that, “[i]n Ball, there is no similar problem to transmit signal across opaque tissue as the Ball device embodiments shown by Figs. 18–21b are entirely placed in the ear canal laterally of the tympanic membrane.” Id. (boldface omitted). The Examiner responds, “Abel’s teaching of light transmission as an improvement over magnetic induction would apply whether the transducer is located on the tympanic membrane or in the middle ear.” Ans. 4. Appellant does not persuasively refute the Examiner’s position. Even assuming, arguendo, that Abel’s teaching regarding problems with magnetic induction transmission refers to transmission to a transducer through opaque tissue, such as the tympanic membrane (see Appeal Br. 7), Appellant does not contest the Examiner’s additional reasoning that improvements associated with using light transmission over magnetic induction would also apply to Ball’s system (see Ans. 3). Further, the prior art need not teach the particular problem that Appellant alleges the instant claims solve in order to render those claims obvious. Instead, “any need or problem known in the field of endeavor at the time of invention and addressed by the [claims] can provide a reason for combining the elements in the manner claimed.” KSR, 550 U.S. at 420; see also In re Kahn, 441 F.3d at 987–88 (establishing that the reason to modify the reference may often prompt a person of ordinary skill in the art to do what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggests the combination to achieve the same advantage or result discovered by an applicant). Appeal 2021-000490 Application 15/187,407 8 Appellant also argues that the Examiner’s proposed combination of Ball and Abel relies on impermissible hindsight. Appeal Br. 7. This argument is unpersuasive because Appellant does not identify, nor do we discern, any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from [Appellant’s] disclosure, such a reconstruction is proper.”). Moreover, Appellant has not provided any factual evidence or persuasive technical reasoning to explain why modifying Ball’s system to use light to transmit sound signals to transducer 100 on tympanic member CC, would yield anything other than a predictable result, or that doing so in an operable manner would be beyond the level of ordinary skill in the art. The Examiner’s proposed modification of Ball does not amount to more than the simple substitution of one known signal transmission type (i.e., Ball’s magnetic induction-based) for another (i.e., Abel’s light-based) or the mere application of a known technique to a piece of prior art ready for the improvement. See KSR, 550 U.S. at 417. For the above reasons, Appellant does not apprise us of error in the Examiner’s conclusion that the subject matter of claim 8 would have been obvious. Accordingly, we sustain the rejection of claim 8, and its dependent Appeal 2021-000490 Application 15/187,407 9 claim 10, for which Appellant does not present separate arguments (see Appeal Br. 6–9), as unpatentable over Ball and Abel. Rejection II – Obviousness Based on Ball, Abel, and Van Antwerp In contesting this rejection, Appellant relies on the same arguments we found unpersuasive in connection with claim 8, from which claim 9 depends. See Appeal Br. 9 (relying on the alleged deficiencies in the combination of Ball and Abel, and asserting that Van Antwerp fails to remedy such deficiencies). Accordingly, for the same reasons discussed above with respect to Rejection I, we also sustain the rejection of claim 9 as unpatentable over Ball, Abel, and Van Antwerp. Rejection III – Obviousness Based on Ball, Abel, and Glendon In contesting this rejection, Appellant presents arguments for independent claim 1 (Appeal Br. 9–10) and relies on the same arguments for dependent claims 4–7 (see id. at 10). We select claim 1 as representative, and claims 4–7 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner’s rejection of claim 1 relies, in part, on a combination of Ball and Abel substantially similar to that discussed above in the rejection of claim 8. See Final Act. 7–9 (concluding that it would have been obvious to modify Ball to use a light source, instead of magnetic induction, to transmit sound signals to an output transducer, and reasoning that the modification would overcome known problems with magnetic induction). The Examiner also finds that “Abel discloses a light source for transmitting the sound signal[,] but is silent as to an elongate light transmission component with a light source on a distal end thereof.” Id. at 9. However, the Examiner finds that Glendon teaches “an electronic or optical signal, originating from a microphone outside the ear canal, may be transmitted to a Appeal 2021-000490 Application 15/187,407 10 location near the eardrum with the use of an electrical wire (col. 13, lines 28–43).” Id. The Examiner determines that it would have been obvious to configure the light transmission component of Ball in view of Abel as an elongate light transmission component with internal wires and the light source at the distal end thereof since Ball teaches the sound signal transmission component can be routed from behind the ear and over the pinna into the ear canal to a transmission source and Glendon discloses optical signals can be coupled to a location near the eardrum from outside the ear canal using electrical wire. Id. Appellant initially relies on the same arguments presented in contesting the rejection of claim 8. See Appeal Br. 9. For the same reasons discussed above, we are not persuaded by these arguments. Appellant also argues that Glendon “describes the transmission of sound via an electronic or optical signal to ‘a location near the eardrum where the electronic or optical signal is converted to sound pressure waves’ (col. 13, lns. 31–33), thus teaching away from Appellant’s claimed invention.” Appeal Br. 9. According to Appellant, Glendon’s system “creates the impression of sound through the generation of sound pressure waves, whereas Appellant’s claimed invention creates the impression of sound through the mechanical vibration of the tympanic membrane.” Id. at 9–10. We are not persuaded by this argument. A reference teaches away from a claimed invention or a proposed modification if “a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Prior art does not teach away Appeal 2021-000490 Application 15/187,407 11 from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits, or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Appellant does not identify a disclosure in Glendon criticizing, discrediting, or otherwise discouraging the combination of teachings proposed by the Examiner in the rejection. That Glendon creates the impression of sound by generating sound pressure waves rather than mechanical vibration of the tympanic membrane (see Appeal Br. 9–10) does not constitute a teaching away from the Examiner’s proposal to modify the combination of Ball and Able to use an elongate light transmission component. For the above reasons, Appellant does not apprise us of error in the Examiner’s conclusion that the subject matter of claim 1 would have been obvious. Accordingly, we sustain the rejection of claim 1, and claims 4–7 fall as unpatentable over Ball, Abel, and Glendon. Rejections IV and V – Obviousness Based on Ball, Abel, Glendon, and one or more of Van Antwerp and Hamanaka In contesting these rejections, Appellant relies on the same arguments we found unpersuasive in connection with claim 1, from which claims 2 and 3 depend. See Appeal Br. 10 (relying on the alleged deficiencies in the combination of Ball, Abel, and Glendon, and asserting that each of Van Antwerp and Hamanaka fails to remedy such deficiencies). Accordingly, for the same reasons discussed above with respect to Rejection III, we also sustain the rejection of claim 2 as unpatentable over Ball, Abel, Glendon, and Van Antwerp, and claim 3 as unpatentable over Ball, Abel, Glendon, Van Antwerp, and Hamanaka. Appeal 2021-000490 Application 15/187,407 12 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8, 10 103(a) Ball, Abel 8, 10 9 103(a) Ball, Abel, Van Antwerp 9 1, 4–7 103(a) Ball, Abel, Glendon 1, 4–7 2 103(a) Ball, Abel, Glendon, Van Antwerp 2 ` 3 103(a) Ball, Abel, Glendon, Van Antwerp, Hamanaka 3 Overall Outcome 1–10 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 Copy with citationCopy as parenthetical citation