Ex Parte Steinhardt et al

Patent Trial and Appeal BoardMar 14, 2016

11544814 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111544,814 10/06/2006 7590 03/14/2016 STRIKER, STRIKER & STENBY 103 EAST NECK ROAD HUNTINGTON, NY 11743 FIRST NAMED INVENTOR Uwe Steinhardt 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. 3930 9919 EXAMINER WOZNICKI, JACQUELINE ART UNIT PAPER NUMBER 3774 MAIL DATE DELIVERY MODE 03/14/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte UWE STEINHARDT and HEINZ KURZ Appeal2014-002512 Application 11/544,8141 Technology Center 3700 Before JOHN C. KERINS, STEP AN ST AI CO VICI, and LEE L. STEPINA, Administrative Patent Judges. ST AI CO VICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Uwe Steinhardt and Heinz Kurz (Appellants) seek our review under 35 U.S.C. Â§ 134 of the Examiner's decision rejecting claims 3, 9, 12, 15, 16, 18-21, 23, and 24.2 We have jurisdiction under 35 U.S.C. Â§ 6(b). SUMMARY OF DECISION We AFFIRM. According to Appellants, the real party in interest is Heinz Kurz GmbH Medizintechnik. Appeal Br. 3 (filed Sept. 30, 2013). 2 Claims 1, 2, 7, 8, 11, 13, and 14 have been canceled and claims 4---6, 10, 17, and 22 have been withdrawn by the Examiner. Id. Appeal2014-002512 Application 11/544,814 TI'-JVENTION Appellants' invention "relates to an ossicle prosthesis which replaces or bridges at least one component or parts of a component of the ossicular chain." Spec. 1, 11. 3--4. Claim 24, the sole independent claim, is representative of the claimed invention and reads as follows: 24. An ossicle prosthesis located in a middle ear of a human ear and connectible to at least one of a tympanic membrane, an ossicular chain, an incus, stapes and an inner ear, comprising: a first fastening element connectible to the tympanic membrane; a second fastening element; a longitudinal shank having a first end and a second end longitudinally opposite said first end, wherein the second end is connected to said second fastening element and said first end has a plurality of a rotary elements having a spherical surface and located one after the other along an axis of said shank; a receiving part rigidly connected to said first fastening element and having a cylindrical cavity with a circumferentially closed, uninterrupted inner wall surrounding said longitudinal shank around its axis; wherein said receiving part is made of an elastic material selected from the group consisting of silicone and PTFE; wherein said receiving part is inserted into the first fastening element by being pressed into the first fastening element; wherein said rotary elements and said receiving part with said cylindrical cavity surrounding said longitudinal shank around its axis are configured such that said rotary elements with said longitudinal shank can be extended through said cylindrical cavity of said receiving part, and some of said spherical elements which extend past said receiving part can be cut off, while at least one of said rotary elements remains in said cylindrical cavity of said receiving part, and wherein said cylindrical cavity surrounding said longitudinal shank around its axis has a diameter which is slightly smaller than a diameter 2 Appeal2014-002512 Application 11/544,814 of said rotary elements so that said cylindrical cavity of said receiving part slightly presses against said at least one rotary element received in said cylindrical cavity. THE REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 3, 18, 19, 21, and 24 under 35 U.S.C. Â§ 103(a) as being unpatentable over Appellants' Admitted Prior Art (AAPA)3 and Hurst (US 3,710,399, iss. Jan. 16, 1973). II. The Examiner rejected claims 9, 12, 15, 16, and 23 under 35 U.S.C. Â§ 103(a) as being unpatentable over AAPA, Hurst, and Prescott (US 6,168,625 Bl, iss. Jan. 2, 2001). III. The Examiner rejected claim 20 under 35 U.S.C. Â§ 103(a) as being unpatentable over AAP A, Hurst, and Knox (US 6, 197 ,060 B 1, iss. Mar. 6, 2001). ANALYSIS Rejection I The Examiner finds that AAP A discloses most of the limitations of claim 1 including "a first fastening element connectable to the tympanic membrane; a second fastening element;" and "a receiving part rigidly connected to said first fastening element." Non-Final Act. 5 (citing AAP A, Fig. 1 of AAPA as annotated by the Examiner at Non-Final Act. 4 (mailed July 12, 2013)). The Examiner relies on Hurst for teaching an ossicle We derive our understanding of AAP A from the English machine translation of DE 20 2005 003 782 Ul, pub. May 19, 2005, contained in the image file wrapper of this application. See Spec. I, 1. 12. 3 Appeal2014-002512 Application 11/544,814 prosthesis including "a closed, uninterrupted cylindrical wall (Figure[] 2 and Sec AA, item 4) surrounding the longitudinal shank that connects the first tympanic membrane fastening element [9] with a second fastening element (Figures 1 and 2, item 10)." Id. at 6-7. The Examiner concludes that: It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify AAP A by using circumferentially closed, uninterrupted inner walls surrounding the longitudinal shank of AAP A as is taught by Hurst in order to create a stable connection between the tympanic membrane fastening element and a second fastening element. Id. at 7. Appellants argue that "even if the two struts 13, 13' of AAP A were identified as the 'receiving part 33' of the present invention, the important feature of a 'circumferentially closed cylindrical cavity' ... [is] still missing in AAP A as a matter of principle because of the totally different geometries of the two ossicle prostheses." Br. 8. Appellants assert that "a change from the [above] disclosed configuration of AAP A with two parallel struts 13, 13; to that of the present invention having all the features of claim 24 in combination constitutes a critical change in operation of the device." Id. Appellants argue that "[t]he two devices would simply not work in the same way." Id. We are not persuaded by Appellants' arguments because they are not commensurate with the Examiner's rejection. Appellants cannot show non- obviousness only by attacking the teachings of AAPA individually when the rejection as articulated by the Examiner is based on a combination of AAPA and Hurst. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In this case, the Examiner's rejection is based on a modification of AAPA's walls "by using circumferentially closed, uninterrupted inner walls 4 Appeal2014-002512 Application 11/544,814 surrounding the longitudinal shank of AAPA as is taught by Hurst." Non- Final Act. 7; see also Hurst, Fig. 2 and Sec. AA. We agree with the Examiner that "[t]he rejection of record relies upon AAPA in view of Hurst to teach that both flexible and stable connections within ossicle prostheses are known in the art." Ans. 11 (emphasis omitted). While Appellants are correct that AAP A fails to teach a "circumferentially closed cylindrical cavity" (see Br. 8), the Examiner acknowledged this precise point and relies upon Hurst as disclosing this element of the claim (see Non-Final Act. 6-7). Moreover, Appellants have not persuasively shown error in the Examiner's reasoning for modifying the ossicle prosthesis of AAP A with the cylindrical connector of Hurst. We further note that Appellants do not sufficiently explain what the alleged critical change in operation of the device of AAP A would be, nor why AAPA's modified device would not function as intended. See Br. 8. As the Examiner explains, Hurst teaches that "stable joints, with 'well- defined' cylindrical cavities receiving longitudinal shanks[] are known in the art of ossicle prostheses." Ans. 13 (citation omitted). Hence, the Examiner has a reasonable basis for determining that AAPA's device, as modified by Hurst, will function as intended, namely, as an auditory ossicle prosthesis to transfer sound to the inner ear. Appellants have not persuaded us otherwise. In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. Â§ 103(a) of claims 3, 18, 19, 21, and 24, as unpatentable over AAP A and Hurst. 5 Appeal2014-002512 Application 11/544,814 Rejections 11and111 Appellants do not present any other substantive arguments with respect to Rejections II and III. See Br. 10. Therefore, for the same reasons as discussed supra, we likewise sustain Rejections II and III. SUMMARY The decision of the Examiner to reject claims 3, 9, 12, 15, 16, 18-21, 23, and 24 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 6