Stefan Kristo et al.

Patent Trials and Appeals Board

Jan 31, 2022

2021001899 (P.T.A.B. Jan. 31, 2022)

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 01/31/2022 Pilloff Passino & Cosenza LLP 2000 Duke Street Suite 300 Alexandria, VA 22314 EXAMINER DIAZ, SABRINA ART UNIT PAPER NUMBER 2652 NOTIFICATION DATE DELIVERY MODE 01/31/2022 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 PRÁME, 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 REQUEST FOR REHEARING Appeal 2021-001899 Application 15/875,960 2 INTRODUCTION Appellant1 requests rehearing (Request for Rehearing dated December 13, 2021 (“Request” or “Req. Reh’g”)) of the Patent Trial and Appeal Board’s (“Board”) Decision mailed October 12, 2021 (“Decision” or “Dec.”), in which we affirmed the following rejections: 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. Final Act. 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. The request for rehearing is denied. ANALYSIS As an initial matter, we point out that to the extent that Appellant simply reiterates the same arguments made in the Appeal Brief, which the Board found unpersuasive of error, we emphasize that a request for rehearing “‘must state with particularity the points believed to have been 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. 2. Appeal 2021-001899 Application 15/875,960 3 misapprehended or overlooked by the Board’” and “must specifically recite ‘the points of law or fact which appellant feels were overlooked or misapprehended by the Board.” Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI 2010) (precedential) (quoting Manual of Patent Examining Procedure § 1214.03). The request for rehearing is not the place to simply reiterate the same arguments already addressed by the Board. Secondly, to the extent Appellant presents supplemental or new arguments in the Request concerning the above-mentioned claims, such arguments at this stage of the prosecution are inappropriate and will not be considered. See 37 C.F.R. § 41.52(a)(1) (2019). Belated arguments are technically waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). This is equally applicable to belated arguments in the Request. Thirdly, the Board finds that the vast majority of the arguments presented by Appellant in the 135 page Request, the 109 page Appeal Brief (Appeal Br.), and the 113 page Reply Brief (Reply Br.) amount to “strawman” arguments and/or “red herrings,” i.e., irrelevant legal or factual issues, intended to distract from or mislead the critical issues at hand. Although Appellant brings up generally important legal matters in their tedious Briefs and Request, we find that much of these arguments are not relevant to the issues or questions at hand, but amount to deliberately changing the subject to evade a direct enquiry into the double patenting, anticipation and/or obviousness of the claims as presented by the Examiner. Appeal 2021-001899 Application 15/875,960 4 In other words, for the most part, Appellant’s Briefs give the impression of refuting a finding made by the Examiner, whereas the real subject of the findings are only marginally addressed or refuted, and instead replaced with false ones. In our Decision, we pointed out to Appellant, i.e., regarding the Double Patenting Rejections, that we were “not persuaded by any of these [‘red herring’] arguments because they do not rebut the critical findings relating to double patenting.” Dec. 4. Although suggested in our Decision, we now expressly emphasize that Appellant’s Briefs also presented “strawman/red herring” arguments pertaining to the anticipation and obviousness rejections. As a result, the Board did not misapprehend or overlook the vast majority of Appellant’s arguments, but rather purposely directed the focus of the enquiry back to the critical issues at hand and only addressed such arguments that pertained thereto, i.e., arguments rebutting the Examiner’s specific findings. The one who bears the initial burden of presenting a prima facie case of unpatentability is the Examiner. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A prima facie case is established when the party with the burden of proof points to evidence that is sufficient, if uncontroverted, to entitle it to prevail as a matter of law. See Saab Cars USA, Inc. v. U. S., 434 F.3d 1359, 1369 (Fed. Cir. 2006). In particular, regarding the Patent Examiner’s burden of production: [A]ll that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of [35 U.S.C.] § 132. As the statute itself instructs, the examiner must “notify the applicant,” “stating the reasons for such rejection,” “together with such information and Appeal 2021-001899 Application 15/875,960 5 references as may be useful in judging the propriety of continuing prosecution of his application.” 35 U.S.C. § 132. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). We find that the Examiner met the initial burden of presenting a prima facie case of obviousness (see Final Act. 2-18), and thereby properly shifted the burden of coming forward with rebuttal or argument onto Appellant. In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). In our Decision, we find that Appellant, however, did not provide persuasive reasoning or rebuttal evidence to overcome the Examiner’s prima facie case. Instead, for the most part, Appellant replaced the Examiner’s prima facie case with their own, i.e., erecting a strawman, only to then knock it down. See generally Appeal Br.; see also Req. Reh’g 3-4. This does not satisfy the Appellant’s burden of meaningfully comparing the claim(s) against the cited prior art, for example. Hence, one of Appellant’s burden before the PTO is to prove that Atsumi and/or the combined teachings of Uchiyama and Such do not perform the functions defined in the claims, contrary to the Examiner’s findings. Instead of doing this, Appellant contends that “the teachings of the prior art are almost a secondary issue, because . . . the [alleged] procedural defects . . . must be addressed.” Req. Reh’g 2. Appellant further contends that “the case can be decided against the rejections without even addressing the prior art.” Id. We disagree with Appellant. Further, as noted supra, we point out that the Examiner met the initial burden of presenting a prima facie case of obviousness (see Final Act. 2-18), and thereby properly shifted the burden of coming forward with rebuttal argument onto Appellant. Fourthly, regarding the § 102(b) rejection, we directed Appellant’s attention to the Examiner’s specific findings regarding Atsumi, whereby Atsumi discloses the argued “clamping force” and how “the bone Appeal 2021-001899 Application 15/875,960 6 conduction speaker should be located ‘at an area behind the ear’ so as to be in close contact [with] the user’s head.” Dec. 6. In other words, we expressly illustrated how Atsumi discloses a clamping force, the temporal bone, and a skin interface portion. Id. Although Appellant argues that “the device of Atsumi can work without clamping” (see Req. Reh’g 15), i.e., an example of a strawman argument, we point out that this argument merely diverts from the critical issue of whether Atsumi discloses a “clamping force.” At best, such an argument illustrates that there may be multiple ways to use the device, by a clamping force and perhaps not using a clamping force. Even if Appellant has shown that Atsumi teaches multiple techniques can be used, this finding does not take away from the fact that the claimed function is also disclosed. As with most of the Appeal Brief, Appellant fails to address the specific findings made by the Examiner. As for dependent claims 2, 4-8, 10, and 30, and independent claim 29, our Decision states that “we agree with the Examiner’s findings on this record and incorporate them herein.” Dec. 6-7 (citing Ans. 16-20). As a result, Appellant fails to persuasively demonstrate that our Decision overlooked such additional claims. Fifthly, regarding the § 103(a) rejection, we directed Appellant’s attention to the Examiner’s specific findings in Uchiyama and Such that teach/suggests a clamping force contacting the temporal bone and found unpersuasive Appellant’s arguments pertaining thereto. Dec. 6-7 (citing Uchiyama Figs. 1-3, Abstr., and Such 6:37-43). Although, for the obviousness rejection, our Decision focuses on claim 1 and the Examiner’s findings relating thereto, we note that we also agree with the Examiner’s obviousness findings regarding claims 2, 4-8, 10, 11, 14, 15, 23-25, and 28- Appeal 2021-001899 Application 15/875,960 7 30, and as done with our anticipation rejection, incorporate them herein. See Final Act. 11-18; Ans. 20-31. In any case, we point out that all the claims rejected under § 103(a) (i.e., claims 1, 2, 4-8, 10, 11, 14, 15, 23-25, and 28-30) are also rejected under the nonstatutory double patenting rejection, and a subset of the claims (i.e., claims 1, 2, 4-8, 10, 29, and 30) are additionally rejected under § 102(b), hence these are cumulative rejections for such claims. Therefore, it is not necessary to address all rejections of such claims. See In re Hyon, 679 F.3d 1363, 1367 (Fed. Cir. 2012) (Affirmance of rejection of all claims under § 103(a) made it unnecessary to reach other grounds of rejection); Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (Having decided a single dispositive issue, the ITC was not required to review other matters decided by the presiding officer). Because our Decision addresses and affirms at least one rejection of claims 1, 2, 4-8, 10, 11, 14, 15, 23-25, and 28-30, we find Appellant’s argument that we overlooked arguments pertaining to the § 103(a) rejection unavailing. See generally Req. Reh’g. DECISION SUMMARY Accordingly, we have granted Appellant’s Request to the extent that we have reconsidered the original Decision but have DENIED it with respect to making any changes to the Decision. Appeal 2021-001899 Application 15/875,960 8 CONCLUSION Outcome of Decision on Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 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(b) Atsumi 1, 2, 4-8, 10, 29, 30 1, 2, 4-8, 10, 11, 14, 15, 23-25, 28-30 103(a) 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 Final Outcome of Appeal after Rehearing: 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(b) Atsumi 1, 2, 4-8, 10, 29, 30 1, 2, 4-8, 10, 11, 14, 15, 23-25, 28-30 103(a) 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 This Decision on the Request for Rehearing incorporates our Decision, mailed October 12, 2021, and is final for the purpose of judicial review. See 37 C.F.R. § 41.52(a)(1). DENIED