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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/26/2025 is being considered by the examiner.
Applicant should note that the large number of references in the attached IDS from 2/2/2024 have been considered by the examiner in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search. See MPEP 609.05(b). Applicant is requested to point out any particular reference in the IDS which they believe may be of particular relevance to the instant claimed invention in response to this office action.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Based on Applicant’s specification, the “means for magnetically retaining” in claim 43 is a magnet within a housing (paragraphs 00114-00116; figures 14 and 15).
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 27-30 and 42 are 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 27 recites the limitation "the case" and “the absence” in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claims 28-30 are unclear as the claims appear to be directed to a result, but it is not clear what structure is being used to get the result.
Claim 42 recites the limitation "the external device" in line 6. There is insufficient antecedent basis for this limitation in the claim. This should probably be –the external component--.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 21-26 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2011/0264172 (Zimmerling et al/, hereinafter Zimmerling).
In regards to claim 21, Zimmerling discloses an MRI-safe disc magnet used in implants, specifically hearing prosthesis (see title, abstract and paragraphs 6-10). Zimmerling shows an embodiment in figures 9-13 (paragraphs 35- 37) with the following components:
an external device (405) including a magnet (1101 and 1102); and
an implantable device including a magnet apparatus, the magnet apparatus including a magnet (402) and a container (401) containing the magnet (figures 9-12), wherein
the magnet apparatus is configured so that the magnet revolves relative to the container about a longitudinal axis of the magnet of the magnet apparatus and such that the magnet rotates relative to the container about an axis that is normal to the longitudinal axis, wherein the axis that is normal to the longitudinal axis lies on a plane on which the longitudinal axis lies (paragraph 37; magnet is free to rotate in the plane of the implant housing, and the plane would have both axes mentioned. Also, note that the claim recites rotation/revolution about an axis not on an axis which allows the limitations to be met by Zimmerling), and
the hearing prothesis is configured to utilize the magnet of the external device and the magnet apparatus of the implantable device to retain the external device to a recipient of the hearing prosthesis (paragraph 37).
In regards to claim 22, Zimmerling discloses the limitations of claim 21. In addition, Zimmerling shows in figure 11 below, there are two axes of the disk magnet/second magnet that is normal to the longitudinal axis of the disk magnet/second magnet is normal to a longitudinal axis of an interior of the container. It can be seen that one axis normal to the longitudinal axis extends in a direction of a width of the interior. It can also be seen that the height of the container is smaller than the width of the interior of the container.
In regards to claim 23, Zimmerling discloses the limitations of claim 21. In addition, Zimmerling shows in paragraph 32 and figure 8 that there is a lubrication coating (802) around the magnets.
In regards to claims 24-26, Zimmerling discloses the limitations of claim 21. In addition, it can be seen in figures 3, 4, 7, 8, and 12-15 that the magnet in the container can have a circular cross-section configuration. This would make the magnet also have a second cross-section have a curved portions on opposite sides of the longitudinal axis of the cross section as a circular cross section would have curves.
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In addition, the disk magnets rotations and revolutions would be relative to the container. Furthermore, because of the structure of the container and the placement of the magnet, the rotation relative to the container about an axis that is normal to the longitudinal axis would naturally be limited due to the interior walls of the container (not enough space for full rotation from) while the revolution about the longitudinal axis is unlimited (walls of the container would not inhibit the revolution).
In regards to claims 28-30, due to the 112 issues of the claims, Zimmerling would meet the limitations of the claims.
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(s) 31 and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0264172 (Zimmerling et al.) as applied to claim 21 above, and further in view of US 2008/0009920 (Gibson et al., hereinafter Gibson).
In regards to claims 31 and 32, Zimmerling discloses the limitations of claims 21. However, Zimmerling does not teach the presence of wire antenna coils. In a related area, Gibson discloses an alignment system of a cochlear implant. Gibson describes a cochlear implant in figure 1 (paragraphs 47-53; prior art) Gibson states that antenna coil systems are commonly used between external units and implanted units of cochlear implants (paragraph 8) where the external unit has a wire antenna coil and the implanted unit has a wire antenna coil (paragraphs 48-50). Gibson also states that the external unit has a microphone and a speech processor to detect and convert sounds (paragraph 5) and has a stimulator unit/device (15) and an electrode array (18) to stimulate the auditory nerve (paragraph 49). Thus, it would be obvious to one of ordinary skill in the art before the filing date of the claimed invention to substitute the implant attachment system of Zimmerling in place of the attachment system in the cochlear implant disclosed by Gibson in order to allow the cochlear implant to be compatible with MRI systems.
Claim(s) 33 and 35-42, 43, 47, 48, and 49 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0264172 (Zimmerling et al.) in view of US 2008/0009920 (Gibson et al., hereinafter Gibson).
In regards to claims 33, 37, 41, 43, 47, 48, and 49, Zimmerling discloses an MRI-safe disc magnet used in implants, specifically hearing prosthesis (see title, abstract and paragraphs 6-10). Zimmerling shows an embodiment in figures 9-13 (paragraphs 35- 37) with the following components:
an implantable component of a medical prosthesis, including:
a magnet apparatus including a magnet and a housing (the magnet apparatus including a magnet/magnetized portion (402) and a container (401) containing the magnet (figures 9-12), which meets the means recited in claim 43);
wherein the implantable medical device is configured to enable movement of a portion of the magnet in a curved trajectory in at least two planes normal to each other (as shown in the diagram of figure 11 in the rejection of claim 21 and figure 12, there the circular magnet would rotate/spin, thus making it enabled to move a portion of the magnet in a curved trajectory in at least two planes normal to each other), and
the magnet has a curved outer surface that extends about an axis that extends in a direction of a direction of extension of a longitudinal axis of the housing (the disk magnet shown in figures 12-15 have a curved outer surface).
However, Zimmerling does state the presence of wire antenna coils on the external and implantable devices. In a related area, Gibson discloses an alignment system of a cochlear implant. Gibson describes a cochlear implant in figure 1 (paragraphs 47-53; prior art) Gibson states that antenna coil systems are commonly used between external units and implanted units of cochlear implants (paragraph 8) where the external unit has a wire antenna coil and the implanted unit has a wire antenna coil (paragraphs 48-50). Gibson also states that the external unit has a microphone and a speech processor to detect and convert sounds (paragraph 5) and has a stimulator unit/device (15) and an electrode array (18) to stimulate the auditory nerve (paragraph 49). Thus, it would be obvious to one of ordinary skill in the art before the filing date of the claimed invention to substitute the implant attachment system of Zimmerling in place of the attachment system in the cochlear implant disclosed by Gibson in order to allow the cochlear implant to be compatible with MRI systems.
Due to the lack of specific points of reference for the location of the longitudinal axis, any longitudinal axis can be defined on the container that can meet the limitation of claim 43.
In regards to claim 35, Zimmerling and Gibson disclose the limitations of claim 33. In addition, Zimmerling shows in paragraph 32 and figure 8 that there is a lubrication coating (802) around the magnets, which can be thought of a container that contains the magnet.
In regards to claim 36, Zimmerling and Gibson disclose the limitations of claim 33. Furthermore, it can be seen in figures 8-15 of Zimmerling that the magnet (402) is a disk magnet arrangement.
In regards to claim 38, Zimmerling and Gibson disclose the limitations of claim 33. In addition, figures 12-14 show that the magnet (402) has a circular outer profile. In addition, the axes drawn on figure 11 show that there is the longitudinal axis, the axis normal to the longitudinal axis, and the axis normal to the axis that is normal to the longitudinal axis. This would also make the axis of the magnet arrangement that is normal to the longitudinal axis of the magnet arrangement normal to a longitudinal axis of an interior of the container.
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In regards to claims 39 and 40, Zimmerling and Gibson disclose the limitations of claim 33. In addition, Zimmerling shows in figure 12 and states in paragraph 37 that the magnet rotates, which would meet the limitations of claims 39 and 40.
In regards to claim 42, Zimmerling and Gibson disclose the limitations of claim 33. In addition, Zimmerling shows in figures 11-15 the presence of an external component (405) having a second magnet (1101, 1102) and shows that the second magnet and the magnet apparatus of the implantable device retain the external device to the recipient (figures 4-11, paragraphs 32-43).
Claim(s) 46 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0264172 (Zimmerling et al.) in view of US 2008/0009920 (Gibson et al., hereinafter Gibson), as applied to claim 43 above, and further in view of US 2015/0088226 (Tourrel et al., hereinafter Tourrel).
In regards to claim 43, Zimmerling and Gibson disclose the limitations of claim 43 but do not explicitly state the use of a hermetic seal. In a related area, Tourrel discloses an implantable hearing aid (title and abstract). Tourrel states in paragraphs 47-49 that a hermetically sealed container provides protection from fluids for the container’s internal components. Thus, it would have been obvious to one of ordinary skill in the art, before the filing date of the claimed invention to modify the device of Zimmerling and Gibson to hermetically seal the means for retaining as taught by Tourrel in order to protect the container’s contents from fluids.
In addition, without knowing specifics about the movement in the two planes in relation to the volume, the movements of Zimmerling and Gibson would meet the claimed movement limitations.
Allowable Subject Matter
Claims 27, 34, 44, 45, and 50 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
In regards to claim 27, the prior art of record does not teach or suggest a hearing prosthesis, as claimed by Applicant, where the magnet is enabled by the container to rotate about the axis that is normal to the longitudinal axis.
In regards to claim 34, the prior art of record does not teach or suggest a device, as claimed by Applicant, wherein the magnet includes a North-South magnetic axis that extends diametrically.
In regards to claim 44, the prior art of record does not teach or suggest a device, as claimed by Applicant, that includes a plurality of plates that sandwich the magnet.
In regards to claim 45, the prior art of record does not teach or suggest a device, a claimed by Applicant, where the movement in one of the two planes is rotation and the movement in the second of the two planes is revolution.
In regards to claim 50, the prior art of record does not teach or suggest a hearing prosthesis, as claimed by Applicant, wherein the magnet in the container is polarized to have a north pole and a south pole positioned away from the longitudinal axis.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA DARYL DEANON LANNU whose telephone number is (571)270-1986. The examiner can normally be reached Monday-Thursday 8 AM - 5 PM, Friday 8 AM -12 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Marmor can be reached at (571) 272-4730. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA DARYL D LANNU/Examiner, Art Unit 3791
/CARRIE R DORNA/Primary Examiner, Art Unit 3791
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