Stefan Kristo et al.

Patent Trials and Appeals BoardOct 12, 2021

2021001899 (P.T.A.B. Oct. 12, 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. 15/875,960 01/19/2018 Stefan Kristo 5441-321B 4153 111614 7590 10/12/2021 Pilloff Passino & Cosenza LLP 2000 Duke Street Suite 300 Alexandria, VA 22314 EXAMINER DIAZ, SABRINA ART UNIT PAPER NUMBER 2652 NOTIFICATION DATE DELIVERY MODE 10/12/2021 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): mail@pilloffpassino.com mcosenza@pilloffpassino.com rpilloff@pilloffpassino.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEFAN KRISTO, HELENA PRUSS CINDRIC, HENRIK JEPPESEN, MARTIN PRAME, and MARK FLYNN Appeal 2021-001899 Application 15/875,960 Technology Center 2600 Before ROBERT E. NAPPI, CAROLYN D. THOMAS, and ERIC S. FRAHM, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 4–8, 10, 11, 14, 15, 20, 23–37, 39, and 40. A telephonic Oral Hearing was held August 17, 2021.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Cochlear Limited. Appeal Br. 2. 2 Administrative Patent Judge Bain, who heard oral arguments, is replaced by Administative Patent Judge Frahm. Appeal 2021-001899 Application 15/875,960 2 The present invention relates to hearing prostheses, and more particularly, to a “support for bone conduction hearing prostheses.” Spec. ¶ 1. Claims 1, 23, and 29 are independent. Claim 1, reproduced below with disputed limitations emphasized, is representative: 1. A prosthetic support, comprising: a structure configured to apply a clamping force to a head of a recipient while extending about a back of at least one of a head or neck of the recipient such that output generated by a device supported by the structure is directed into skin of the recipient at a location behind an ear canal of the recipient that covers the temporal bone of the recipient. Appeal Br. 111 (Claims App.). REFERENCES The references relied upon by the Examiner are: Name Reference Date Such US 5,457,751 Oct. 10, 1995 Atsumi US 7,076,077 B2 July 11, 2006 Uchiyama JP 2007312050 A Nov. 29, 2007 Appeal 2021-001899 Application 15/875,960 3 Appellant appeals the following rejections:3 R1. Claims 34–37 are rejected on the ground of statutory double patenting as being unpatentable over claims 38–41 of prior U.S. Patent No. 9,906,853 B2. Final Act. 3. R2. Claims 1, 2, 4–8, 10, 11, 14, 15, 20, 23–33, 39, and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–42 of U.S. Patent No. 9,906,853 B2. Ans. 3–4. R3. Claims 1, 2, 4–8, 10, 29, and 30 are rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Atsumi. Final Act. 8–10. R4. Claims 1, 2, 4–8, 10, 11, 14, 15, 23–25, and 28–30 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Uchiyama and Such. Final Act. 11–18. We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). DISCUSSION We have reviewed the Examiner’s rejections in light of Appellant’s arguments presented in this appeal. Arguments that Appellant could have made but did not make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). For the reasons discussed below, Appellant has not persuaded us of error. We adopt as our own the findings and reasons set forth in the rejections and in the Examiner’s Answer. We provide the following for highlighting and emphasis. 3 The Examiner’s indefiniteness rejection of claim 27 is withdrawn in the Answer. Ans. 15. Appeal 2021-001899 Application 15/875,960 4 Double Patenting Rejections Appellant argues both double patenting rejections R1 and R2 together. Specifically, Appellant argues that both the statutory double patenting rejection and the nonstatutory double patenting rejection (1) are not applicable to Ornum;4 (2) stem from “impermissible hindsight;” and (3) the Examiner’s findings are inconsistent with the findings regarding the ’853 patent (and issuance thereof). See Appeal Br. 13–18. We, however, are not persuaded by any of these arguments because they do not rebut the critical findings relating to double patenting. For example, the key question in any obviousness double patenting analysis is: “Does any claim in the application define merely an obvious variation of an invention claimed in the patent asserted as supporting double patenting?” General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1278 (Fed. Cir. 1992) (discussing In re Vogel, 422 F.2d 438 (CCPA 1970)). Answering this question requires that the decision maker first construe the claims in the patent and the claims under review and determine the differences between them. Eli Lilly and Co. v. Barr Labs., 251 F.3d 955, 970 (Fed. Cir. 2001). After determining the differences, the decision maker must determine whether the differences in subject matter render the claims patentably distinct. Id. Where a pending claim under review is an obvious variation of a patented claim, the pending claim is not patentably distinct. Vogel, 422 F.2d at 441. As the Examiner explains in the Final Action, the claims of the pending application are not “identical” to but are broader than the 4 In re Van Ornum, 686 F.2d 937 (CCPA 1982). Appeal 2021-001899 Application 15/875,960 5 corresponding claims of the ’853 patent. Ans. 3–4. For example, as the Examiner finds, claim 1 recites a prosthetic support as in claims 1, 38, and 42 of the ’853 patent, but claim 1 of the pending application omits additional limitations of the ’853 patent claims, “such as the device being operationally removable and wherein the support is configured to maintain the device completely away from the recipient, wherein vibrations are transmitted into the skin of the recipient through the device attachment portion, and wherein output generated by the device is directed into skin of the recipient while being isolated from the clamping force.” Final Act. 3. In other words, because pending claim 1 is merely broader than claims 1, 38, and 42 of the ’853 patent, we agree with the Examiner that the differences in subject matter does not render claim 1 patentably distinct. The Examiner makes similar findings as to the other rejected claims. Appellant’s arguments does not identify the alleged error in the Examiner’s findings with respect to any of the claimed subject matter. We, therefore, are unpersuaded of error regarding the double patenting rejections. Accordingly, we sustain the rejections. Rejection under 35 U.S.C. § 102(b) Appellant argues the Examiner erred in finding Atsumi discloses a “clamping force to a head of a recipient” such that the output is directed into the skin, as recited in claim 1. Appeal Br. 39–40. Specifically, Appellant argues that “[t]here is not one word about clamping” in Atsumi. Id. at 40. As the Examiner finds, however, Atsumi discloses a U or C shaped band designed to fit around the user’s head and disclosed as having moderate resiliency to bring the bone conduction device in close contact to the user’s head with a moderate contact pressure (see figure 4; col. 3, lines 4–7). The Appeal 2021-001899 Application 15/875,960 6 resiliency of the band structure provides the pressure to direct the bone conduction device, and therefore its output, in contact with the user’s head. Ans. 16. As the Examiner finds, the “resiliency” of the band structure provides “pressure to direct the bone conduction device,” and therefore its output, in contact with the user’s head. Id. The Examiner also finds, and we agree based on the foregoing, that Atsumi’s U or C shaped structures (e.g. glasses, over the ear headphones, headbands, etc.) “provide contact pressure against a user’s head,” i.e., a clamping force. Id.; Atsumi 3:4–7 (“a moderate contact pressure”). Appellant fails to persuasively explain how the recited clamping force in claim 1 is distinct from Atsumi’s disclosure of “resiliency” to create “a moderate contact pressure.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (claim terms given “their broadest reasonable interpretation consistent with the specification”). Moreover, although Atsumi does not disclose the specific phrase “temporal bone,” we agree with the Examiner that Atsumi discloses the bone conduction speaker should be located “at an area behind the ear” so as to be in close contact the user’s head (see Atsumi 3:4–6), which one of ordinary skill in the art would recognize is the precise location of the temporal bone. Ans. 17–18. Appellant does not present any persuasive evidence of error in the Examiner’s finding and conclusion. For at least the foregoing reasons, we are unpersuaded of error regarding the anticipation of claim 1. Appellant’s arguments regarding claims 2, 4–8, 10, 29, and 30 are unpersuasive for similar reasons, and we agree with the Examiner’s findings on this record and incorporate them Appeal 2021-001899 Application 15/875,960 7 herein. Ans. 16–20. Accordingly, we sustain the Examiner’s anticipation rejection. Rejection under 35 U.S.C. § 103(a) Although different references are being relied upon by the Examiner for the obviousness rejection, Appellant’s arguments are similar to those regarding the anticipation rejection. Namely, Appellant emphasizes that the combination of prior art fails to teach a “clamping force” and a “location behind an ear canal,” as recited in claim 1. See Appeal Br. 62–108. Here, the Examiner finds, and we agree, Uchiyama discloses a “bone conduction” device held to the head (see Fig. 1) “in a stable position, and further with a slidable configuration that allows for adjustment on the placement of the bone conduction device on the side of a user’s head via sliding part 1a for optimal positioning according to the user.” Ans. 21, citing Uchiyama Figs. 1–3; see also Abstract (“can hold the positioned bone conduction unit in a stable state”). In other words, Uchiyama teaches a structure held against a recipient’s head, which we find implies some level of clamping force. Appellant does not persuasively identify any error in the Examiner’s findings and conclusion that one of ordinary skill in the art would understand that Uchiyama’s device is being held to the head by at least some pressure, i.e., a clamping force. Claim 1 fails to quantify the level of clamping force. Therefore, we find that any pressure to hold the structure against the head, reads on the claimed clamping force. Furthermore, we note that the Examiner also finds that Such discloses that “the temporal bone location in particular can provide . . . bone conduction stimulation to the inner ear.” Ans. 23; see also Such 6:37–43 (“a bone conduction type of hearing aid . . . that would contact the user’s Appeal 2021-001899 Application 15/875,960 8 mastoid bone to provide simulated sound through bone conduction to the inner ear”). One of ordinary skill in the art would know that Such’s disclosed “mastoid bone” is part of the temporal bone of the skull. As such, we agree with the Examiner that Uchiyama combined with Such discloses a structure that provides a clamping force to a head of a recipient, particularly by contacting the temporal bone. Accordingly, we sustain the obviousness rejection. CONCLUSION For the foregoing reasons, we affirm the Examiner’s decision to reject claims 1, 2, 4–8, 10, 11, 14, 15, 20, 23–37, 39, and 40. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 34–37 101 Statutory Double Patenting U.S. Patent 9,906,853 B2 34–37 1, 2, 4–8, 10, 11, 14, 15, 20, 23–33, 39, 40 Nonstatutory Double Patenting U.S. Patent 9,906,853 B2 1, 2, 4–8, 10, 11, 14, 15, 20, 23–33, 39, 40 1, 2, 4–8, 10, 29, 30 102 Atsumi 1, 2, 4–8, 10, 29, 30 1, 2, 4–8, 10, 11, 14, 15, 23–25, 28–30 103 Such, Uchiyama 1, 2, 4–8, 10, 11, 14, 15, 23–25, 28–30 Overall Outcome 1, 2, 4–8, 10, 11, 14, 15, 20, 23–37, 39, 40 Appeal 2021-001899 Application 15/875,960 9 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