DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 recites the limitation "a plane extending from the coupler" in the last line of the claim. There is insufficient antecedent basis for this limitation in the claim because it is unclear if this is one of the at least one plane cited in claim 6 or a separate one. It is recommended that the claim be amended to “non-zero slope relative to one of the at least one plane extending from the coupler to the at least one mass”.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 1, 2, 4, 6-7, 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Andersson (US 8837760) (cited in Applicant’s IDS) in view of Tibbetts (US 4056742).
Regarding claim 1, Andersson teaches an apparatus comprising
At least one actuator configured to generate vibrations (column 5, line 46: “The piezoelectric layers mechanically deform (i.e. expand or contract) in response to application of the electrical signal thereto. This deformation (vibration) causes motion of a mass component attached to the piezoelectric element.”,
the at least one actuator comprising:
a coupler (fig 9, element 980) configured to be in mechanical communication with a fixture(fig 9, element 994A + 900B is being interpreted to be the fixture since it will transmit the vibrations the recipient’s body) ;
at least one mass spaced from the coupler (fig 9, element 994A);
and at least piezoelectric element in mechanical communication with the coupler and the at least one mass (fig 9, element 900B connected to mass 994A and coupling 980)
the at least one piezoelectric element configured to oscillate the at least one mass relative to the coupler in response to received electric voltage signals (Column 5, line 39: “a bone conduction device, such as bone conduction device 100, utilizes a vibrator or actuator to generate a mechanical force for transmission to the recipient's skull….The piezoelectric layers mechanically deform (i.e. expand or contract) in response to application of the electrical signal thereto. This deformation (vibration) causes motion of a mass component attached to the piezoelectric element. The deformation of the piezoelectric element and the motion of the mass component generate a mechanical force that is transferred to the recipient's skull. The direction and magnitude of deformation of a piezoelectric element in response to an applied electrical signal depends on material properties of the layers”)
However, Andersson fails to teach that the piezoelectric element is non-planar.
Tibbetts teaches a piezoelectric film with an alternating curved geometry that would make it a “non-planar piezoelectric element”. (Figure 1, element 1)
It would be prima facie obvious to one of ordinary skill in the art before the effective filing date of the application to modify the structure taught in Andersson (figure 9, element 900B) to have a non-planar piezoelectric element taught in Tibbetts. One of ordinary skill in the art would have been able to recognize that the direction and magnitude of deformation of a piezoelectric element in response to an applied electrical signal depends on material properties of the layers, orientation of the electric field with respect to the polarization direction of the layers, geometry of the layers, etc. Therefore, one of ordinary skill in the art can change features such as shape to have the desired deformation effect in the piezoelectric. See paragraph column 5, line 55 of Andersson.
Regarding claim 2, Andersson teaches the apparatus of claim 1 wherein the fixture and the at least one actuator are configured to be implanted on or within a recipient's body. (column 4, line 62: “In the illustrative arrangement of FIG. 1, anchor system comprises a percutaneous abutment fixed to the recipient's skull bone 136. The abutment extends from bone 136 through muscle 134, fat 128 and skin 132 so that coupling 140 may be attached thereto. Such a percutaneous abutment provides an attachment location for coupling 140 that facilitates efficient transmission of mechanical force. A bone conduction device anchored to a recipient's skull is sometimes referred to as a bone anchored hearing aid (Baha)“)
Regarding claim 4, Andersson teaches the apparatus of claim 1 wherein the at least one mass is affixed to at least one edge portion of the at least one non-planar piezoelectric element. (Figure 9, Element 994A is affixed to the edge portion of piezo element 900B)
Regarding claim 6, Andersson teaches the apparatus of claim 1 but fails to teach wherein the at least one non-planar piezoelectric element has a cross-sectional shape comprising one or more curves in at least one plane extending through the coupler and the at least one mass.
However, Tibbetts teaches wherein the at least one non-planar piezoelectric element has a cross-sectional shape comprising one or more curves (Figure 3) in at least one plane extending through the coupler and the at least one mass. The examiner is modifying piezoelectric element 900B in Andersson to have the curved shape of the piezoelectric in Figure 3 in Tibbetts. Therefore, the non-planar piezoelectric element would comprise one or more curves in a plane extending through the coupling (Anderson, fig 9, element 980) and mass (Anderson, fig 9, element 994A)
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to modify the piezoelectric element taught in Andersson to have one or more curves as taught in Tibbetts. One of ordinary skill in the art would have been able to recognize that the direction and magnitude of deformation of a piezoelectric element in response to an applied electrical signal depends on material properties of the layers, orientation of the electric field with respect to the polarization direction of the layers, geometry of the layers, etc. Therefore, one of ordinary skill in the art can change features such as shape to have the desired deformation effect in the piezoelectric. See paragraph column 5, line 55 of Andersson.
Regarding claim 7, Andersson teaches the apparatus of claim 6 but fails to teach wherein the cross-sectional shape comprises a first portion affixed to the coupler and extending substantially perpendicularly to a central axis of the coupler.
However, Tibbetts teaches wherein the cross-sectional shape comprises a first portion affixed to the coupler and extending substantially perpendicularly to a central axis of the coupler. (figure 1, labeled by elements 8,9) The examiner is modifying the piezoelectric element in Andersson (figure 9, element 900B) to have the shape taught in Tibbetts (figure 1, element 1) to connect to the coupling (Andersson, figure 9, element 980) via the perpendicular portion of the piezoelectric film (Tibbetts, figure 1, element 8). Therefore, the cross-sectional shape would comprise a portion affixed to the coupler and extending substantially perpendicular to a central axis (interpreted as a vertical line extending from element 900A, through 900B to the end of the coupling 980 in Anderson figure 9) of the coupler.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to modify the piezoelectric taught in Andersson to have the shape and perpendicular extension taught in Tibbetts. One of ordinary skill in the art would have been able to recognize that this is a known technique to improve similar devices for sound processing and used in bone conduction systems – ex: hearing aid microphone, headphones, and speakers. See column 6, line 6 and column 8, line 21 of Tibbetts.
Regarding claim 9, Andersson and Tibbetts teaches the apparatus of claim 7 but fails to teach wherein the cross-sectional shape comprises at least one second portion affixed to the at least one mass and extending at an angle that is less than or equal to 90 degrees relative to the central axis.
However, Tibbetts teaches wherein the cross-sectional shape comprises at least one second portion affixed to the at least one mass and extending at an angle that is less than or equal to 90 degrees relative to the central axis. (figure 1, elements 8,9) The examiner is modifying the piezoelectric element in Andersson (figure 9, element 900B) to have the shape taught in Tibbetts (figure 1, element 1) to connect to the mass component (Andersson, figure 9, element 994A) via the perpendicular portion of the piezoelectric film (Tibbetts, figure 1, element 9). Therefore, the cross-sectional shape would comprise a portion affixed to the at least one mass and extending at an angle that is less than or equal to 90 degrees relative to a central axis (interpreted as a vertical line extending from element 900A, through 900B to the end of the coupling 980 in Anderson figure 9) of the coupler.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to modify the piezoelectric in Andersson to the piezoelectric taught in Tibbetts. One of ordinary skill in the art would have been able to recognize that this is a known technique to improve similar devices for sound processing and used in bone conduction systems – ex: hearing aid microphone, headphones, and speakers. See column 6, line 6 and column 8, line 21 of Tibbetts.
Regarding claim 10, Andersson fails to teach further comprising a plurality of electrodes affixed to the at least one non-planar piezoelectric element and positioned at portions of the cross-sectional shape having a non-zero slope relative to a plane extending from the coupler to the at least one mass.
However, Tibbetts teaches further comprising a plurality of electrodes affixed to the at least one non-planar piezoelectric element and positioned at portions of the cross-sectional shape having a non-zero slope relative to a plane extending from the coupler to the at least one mass. (Figure 1, Elements S1-S6). The examiner is modifying the piezoelectric element in Andersson (figure 9, element 900B) to have the shape taught in Tibbetts (figure 1, element 1) to connect to the coupling (Andersson, figure 9, element 980) via the perpendicular portion of the piezoelectric film (Tibbetts, figure 1, element 8). Therefore, the cross-sectional shape at the “peak” or “valley” of the non-planar piezoelectric would have a non-zero slope relative to the plane extending from the coupler to the at least one mass. The examiner is interpreting the portions of the piezoelectric that have a non-zero slope to be only the point at the “peak” or “valley” locations of the piezoelectric. Therefore, since the electrodes taught in Tibbetts cover the portions of the piezoelectric “ascending” or “descending” from that peak or valley point they are being interpreted as positioned at portions of the cross-sectional shape having a non-zero slope.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to modify the piezoelectric in Andersson to have the electrodes in the piezoelectric taught in Tibbetts. One of ordinary skill in the art would have been able to recognize the surface electrodes on the film, moreover, are divided, i.e., gapped, in selected locations between adjacent segments to interrelate electrically the separate transducer elements in a prescribed fashion, i.e., series, parallel, or series-parallel. See column 2, line 67 of Tibbetts.
Regarding claim 11, Andersson fails to teach wherein the at least one non-planar piezoelectric element has a length between the coupler and the at least one mass, a width perpendicular to the length, and a thickness perpendicular to the width and the length, the at least one non-planar piezoelectric element having a first natural vibration frequency that is less than a second natural vibration frequency of a planar piezoelectric element having the length, the width, and the thickness.
However, Tibbetts teaches the non-planar piezoelectric element (figure 1, element 1) has a length between the coupler and the at least one mass (along the line 2-2 in figure 1), a width perpendicular to the length (examiner notes this as measuring along element S1), and a thickness perpendicular to the width and the length (the examiner notes this as the distance from the top line between elements 8 and 9 to the element labeled 5G). The examiner also notes that while Tibbetts is silent on whether the natural vibration frequency of the non-planar piezoelectric is lower than the natural vibration frequency of a planar piezoelectric, Tibbetts teaches a non-planar piezoelectric film that has the same structural shape (alternating curvature, sinusoidal) as the elected species in the claim. As noted by applicant in paragraph [0053]-[0054] this structural shape has a first natural vibration frequency that is less than a second natural vibration frequency of a planar piezoelectric element having the same length, the width, and the thickness.. Please see In re Schreiber, 128 F.3d 1473, 44 USPQ2d 1429 (Fed. Cir. 1997), In re Best, 562 F.2d at 1255, 195 USPQ at 43, and MPEP section 2112.01.I.
It would be prima facie obvious to one of ordinary skill in the art before the effective filing date to modify the piezoelectric actuator taught in Andersson to have the shape and structure of the piezoelectric film taught in Tibbetts which would yield the film having a first natural vibration frequency that is less than a second natural vibration frequency of a planar piezoelectric element having the same length, width, and thickness. One of ordinary skill in the art would have been able to recognize that the direction and magnitude of deformation of a piezoelectric element in response to an applied electrical signal depends on material properties of the layers, orientation of the electric field with respect to the polarization direction of the layers, geometry of the layers, etc. Therefore, one of ordinary skill in the art can change features such as shape to have the desired deformation effect in the piezoelectric. See paragraph column 5, line 55 of Andersson.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Andersson in view of Tibbetts further in view of Berrang (US 2005/0020873).
Andersson teaches a housing (column 4, line 37: “In the embodiment illustrated in FIG. 1, bone conduction device 100 comprises a housing 125 having a sound input element 126 positioned in, on or coupled to housing 125.”)
However, Andersson fails to teach that the housing is configured to hermetically seal the at least one mass and the at least one non-planar piezoelectric element from an environment surrounding the at least one actuator.
Berrang teaches an implantable hearing device with a housing (fig 1, element 9) is configured to hermetically seal the at least one mass and the at least one non-planar piezoelectric element from an environment surrounding the at least one actuator. (paragraph [0026] “The vibrator of this invention may use an inertial mass, driven by a stack of piezocrystals, encapsulated within a biocompatible hermetic housing.”)
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to modify the housing taught in Andersson to hermetically seal the actuator from the surrounding environment as taught in Berrang. One of ordinary skill would have been able to recognize that this is a known technique in similar devices that would improve the claimed invention and yield predictable results of protecting device elements from an environment.
Response to Arguments
Election / Restriction Requirement
Applicant's arguments filed 3/24/26 have been fully considered but they are not persuasive. Although the elected claims are not directed merely to the presence of a piezoelectric element, coupler, and a mass, these are the shared technical features between Groups I, II, and species A1-A7. There is a lack of unity between the groups because the shared technical feature between all groups is not a special technical feature as it does not make a contribution over the prior art listed, Andersson (US 8837760). Species A1 specifically is patentably distinct from other species for the following reasons:
Compared to species A2 – A5: the cross-sectional shape is at a perpendicular angle instead of an acute angle.
Compared to species A3 – A7: The mass is one singular mass instead of a plurality of masses.
Compared to species A6 – A7: The mass is not covering an edge face of a piezoelectric element.
All the properties listed above would change the force transmission and deformation of the piezoelectric element making each species a patentably distinct species. Therefore, the restriction/election requirement is upheld.
The examiner acknowledges and agrees with the typographical error of stating claim 11 is a withdrawn claim, and claim 11 will remains under examination.
U.S.C. 112 (b)
The 112(b) had a typographical error, claim 6 should have been claim 10. The rejection is updated and clarified above. U.S.C. 103
Applicant's arguments traversing claim 1 rejection of Andersson in view of Tibbetts have been fully considered but they are not persuasive.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Regarding the claim 1 rejection, Andersson asserts in column 5, lines 53-57 properties of the piezoelectric element such as the geometry of the layers, which includes shape, can change how the piezoelectric behaves. Therefore, the shape of the piezoelectric influences how the element deforms and the resulting electric field from the force transmission. One of ordinary skill would be able to determine a specific shape would be more beneficial to a bone conduction device over another. In fact, Tibbetts asserts (in the abstract) the benefits of a non-planar shape with curved geometry include a useful level of elastic stability without using a static pressure difference on the film, good electromechanical coupling is attained, and the individual transducer elements formed by the divided surface electrodes may be usefully interrelated electrically to substantially cancel even order harmonic distortion and enhance linearity of operation. Despite Tibbetts not explicitly calling this structure “non-planar” it is inherently non-planar due to the curved geometry and that shape has the benefits listed above. It would be obvious to one of ordinary skill to look at the non-planar shape taught in Tibbetts, and be motivated to modify the bone conduction device taught by Andersson to have the same non-planar structure to have the benefits listed above including the desired deformation effect of the resulting alternation of electrical signal fields between adjacent transducer elements, see column 7, line 22 of Tibbetts.
Applicant’s arguments traversing claims 2, 4, 6, 7, and 9-11 has been considered but are not persuasive. Claims 2, 4, 6-7, 9-11 depend on claim 1, a prima facie case of obviousness has been presented above, and therefore the dependent claims do not overcome the prior art and are not in condition for allowance.
Applicant’s arguments traversing claim 7 has been considered but are not persuasive. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Regarding the claim 7 rejection, Andersson is modified in view of Tibbetts in the manner cited in the office action because both figure 9, element 900B in Andersson and figure 1, element 1 in Tibbetts are piezoelectric elements. The piezo element in Andersson is fixed to the coupling component at a perpendicular angle. Tibbetts teaches a piezo element with perpendicular ends. Therefore, when the piezo in Andersson was modified to have the non-planar piezo in Tibbetts the perpendicular ends would be attached to the coupler and extend perpendicular relative to the coupler.
Applicant’s arguments traversing claim 11 has been considered but are not persuasive. Applicant claims that the claimed invention of figure 2A has “first natural vibration frequency that is less than a second natural vibration frequency of a planar piezoelectric element having the length, the width, and the thickness”. Specifically in the applicant’s specification paragraph [0054] states “FIG. 5A shows that the natural frequency of the sinusoidal-shaped piezoelectric element 340 decreases with increasing number of periods N.” and claim 11 is dependent on claim 1 which encompasses the elected invention in figure 2A therefore the claimed invention should have these characteristics. The applicant’s specification indicates any sinusoidal shaped piezo electric element will have a natural frequency that is less than the natural frequency of a planer one of same length width and thickness because of the increasing number of periods. Additionally, the piezoelectric element in Tibbetts has the same structure and geometry as the claimed invention with the claimed vibration frequencies without the structure of the ribbed frame. Further, even if the frame was present, the limitation focuses only on the sinusoidal shape having the natural frequencies, so the sinusoidal shaped piezo claimed in Tibbetts would have the same characteristics based on geometry. Therefore, the shaped piezo in Tibbetts would inherently have the same vibration frequency as the limitations in claim 11. Please see In re Schreiber, 128 F.3d 1473, 44 USPQ2d 1429 (Fed. Cir. 1997).
Applicant’s arguments traversing claim 3 has been considered but are not persuasive. Claim 3 depends on claim 1, a prima facie case of obviousness has been presented above, and therefore the dependent claims do not overcome the prior art and are not in condition for allowance.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/A.L.D./Examiner, Art Unit 3791
/JACQUELINE CHENG/Supervisory Patent Examiner, Art Unit 3791
Prosecution Insights