Ex Parte Polak

Patent Trials and Appeals Board

Apr 22, 2019

14316952 - (D) (P.T.A.B. Apr. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/316,952 06/27/2014
2101 7590 04/24/2019
Sunstein Kann Murphy & Timbers LLP
125 SUMMER STREET
BOSTON, MA 02110-1618
FIRST NAMED INVENTOR
Marek Polak
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1941/E75 1049
EXAMINER
DINGA, ROLAND
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
04/24/2019 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):
usptomail@sunsteinlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAREK POLAK 1
Appeal2018-002867
Application 14/316,952
Technology Center 3700
Before DANIEL S. SONG, EDWARD A. BROWN and
MICHELLE R. OSINSKI, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Office Action ("Off. Act.") rejecting claims 1-24 in the present application.
We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
We REVERSE.
1 The Appellant is the Applicant, Med-El Elektromedizinische GmbH, which
is identified as the real party in interest. Appeal Brief ("Appeal Br.") 2.
Appeal2018-002867
Application 14/316,952
The claimed invention is directed to a cochlear implant fitting. Title.
Independent claim 1 is illustrative of the invention and reads as follows:
1. A cochlear implant fitting system for fitting an implanted
cochlear implant electrode array having a plurality of electrode
contacts to an implanted patient, the system comprising:
means for assigning to each of a plurality of different
fitting response measurement methods, one or more electrode
contacts such that each of the plurality of electrode contacts is
assigned one and only one fitting response measurement method;
means for each fitting response measurement method:
i. to fit each of the assigned electrode contacts using
the fitting response measurement method, and
ii. to interpolate fitting values for all of the non-
assigned electrode contacts based on the fitting of the
assigned electrode contacts; and
means for fitting each electrode contact in the electrode
array based on a weighted averaging of the fittings for the
plurality of different fitting response measurement methods.
Appeal Br. 9 (Claims App.).
REJECTIONS
The Examiner rejects claims 1-5, 9-13, and 17-21 under 35 U.S.C.
§ I02(a)(2) as being anticipated by Nopp et al. (US 2013/0079845 Al, pub.
Mar. 28, 2013, "Nopp"). Off. Act. 2.
The Examiner rejects claims 6-8, 14--16, and 22-24 under 35 U.S.C.
§ 103 as being obvious over Nopp in view ofKals et al. (US 2013/0138180
Al, pub. May 30, 2013, "Kals"). Off. Act. 8.
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Appeal2018-002867
Application 14/316,952
Rejection 1
ANALYSIS
The Examiner rejects claims 1-5, 9-13, and 17-21, finding that Nopp
discloses each and every limitations of these claims. Off. Act. 2-7. In so
doing, the Examiner interprets the limitations of claim 1 reciting "means
for" under 35 U.S.C. § 112([), and finds that "the recited limitations 'means
for assigning,['] 'means for each fitting' and 'means for fitting' are achieved
by a control unit (201) and a database (208)" ofNopp. Ans. 14. The
Appellant argues that "the correct interpretation of the m[ e Jans plus function
phrases in claim 1 is not merely a control unit (201) and a database (208),
but rather hardware elements such as those which have been programmed to
act as a special purpose computer programmed to perform the algorithmic
functions that are recited." Reply Br. 2. While this issue does not appear to
be dispositive in view of the following discussion, we nonetheless agree
with the Appellant. Indeed, the Examiner does not dispute that the
application of a prior art reference to a means plus function limitation
requires that the prior art element perform the identical function specified in
the claim. See MPEP 2182; In re Donaldson Co., 16 F.3d 1189 (Fed. Cir.
1994).
The substantive dispute in this appeal is whether the Examiner's
further interpretation of the independent claims is correct, and whether N opp
discloses the invention under such interpretation. In particular, the
Appellant argues that Nopp does not anticipate these claims because in
contrast to the claims, "some of the electrode contacts [in Nopp] are fit
solely by interpolation without taking fitting response measurements."
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Appeal2018-002867
Application 14/316,952
Appeal Br. 7 (citing Nopp ,r,r 6-9, 17 et seq.). The Examiner finds the
Appellant's argument unpersuasive because
the claims, as written, refer to a single fitting response
measurement method (the fitting response measurement method)
and does not positively claim either functionally or structurally
program code or means for each fitting response measurement
method that uses a different fitting response measurement
method than that used for the first assigned electrode contact.
Ans. 15 ( emphasis added).
The basis of the Examiner's assertion is unclear because the
independent claims do not refer to a single fitting response measurement
method, but instead, explicitly recite "a plurality of different fitting response
measurement methods" in the limitations pertaining to assignment, as well
as the limitations pertaining to weighted averaging. In that regard, the
Examiner's position that the claims do not require different fitting response
measurement methods, and that the fitting response method used for the first
assigned electrode contact can be used for the other electrode contacts to
satisfy the claim language is not tenable. The claims not only recite a
plurality of different fitting response measurement methods, they also
require each of the different fitting response measurement methods to have
assigned thereto, one or more electrode contacts, wherein each electrode
contact is assigned to only one fitting response measurement method.
Accordingly, in contrast to the Examiner's apparent assertion, at minimum,
the claims require two different fitting response measurement methods, each
having at least one electrode contact assigned thereto.
Notwithstanding the above, the Examiner also finds (presumably in
the alternative) that Nopp nonetheless discloses "assigning a plurality of
different fitting response measurement methods for each channel or
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Appeal2018-002867
Application 14/316,952
electrode contact so that the electrode contact is only one fitting response."
Ans. 16 (citing Nopp ,r,r 10-11, 17). In that regard, the Examiner finds that
Nopp "discloses that each of the electrode channels is assigned one and only
one fitting response measurement method ( e.g., paragraphs [001 OJ and
[0017] ofNopp: 'when time allows all channels in a map to be assessed
using psychoacoustics or objective measures')." Ans. 14. We understand
this position of the Examiner to be that Nopp suggests measuring the fitting
response of each of the electrodes, and thus, each of the electrodes would be
assigned to only one fitting response measurement method. However, that
does not address the use of different response measurement methods for the
plurality of electrodes, or having each electrode contact be assigned to only
one fitting response measurement method as required by the claims.
The Examiner also responds that Nopp is "like the claimed invention"
in that it "discloses that each electrode contact is fit by a combination of
fitting response measurements and interpolation values." Ans. 16 ( citing
N opp ,r,r 10-11, 13, 17-25). While that finding is not entirely incorrect, it
does not address the above noted deficiencies, or the fact that the claims
require such combination ( using fitting response measurements and
interpolation) for a plurality of different fitting response measurements.
As evident from the discussion above, the Examiner's rejection
appears to set forth multiple bases as to why Nopp anticipates the rejected
claims, these bases rendering the rejection difficult to understand. See Reply
Br. 3 ("[ w ]hatever further point the Examiner is attempting to make in the
remainder of his discussion ( which Applicant struggles to parse) does
no[]thing to alter the foregoing [i.e., that different fitting response
measurement methods are required]."). We do not sustain this anticipation
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Appeal2018-002867
Application 14/316,952
rejection based on our understanding thereof. There is no indication that
Nopp discloses the recited "assigning to each of a plurality of different
fitting response measurement methods, one or more electrode contacts such
that each of the plurality of electrode contacts is assigned one and only one
fitting response measurement method," or "fitting each electrode contact
based on a weighted averaging of the fittings for the plurality of different
fitting response measurement methods" as required by the independent
claims. Accordingly, we reverse Rejection 1.
Rejection 2
The Examiner rejects claims 6-8, 14--16, and 22-24 as being obvious
over Nopp and Kals. Off. Act. 8. The Appellant relies on the same
arguments set forth relative to Rejection 1, and dependencies in support of
patentability of these claims. Appeal Br. 8. The Examiner's application of
Kals does not address the deficiencies ofNopp discussed above.
Accordingly, this rejection is also reversed.
CONCLUSION
The Examiner's rejections are REVERSED.
REVERSED
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