Ex Parte Buchner

Board of Patent Appeals and Interferences

Jun 21, 2010

10840064 (B.P.A.I. Jun. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KELLY W. BUCHNER
____________

Appeal 2009-007963
Application 10/840,064
Technology Center 3700
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Decided: June 21, 2010
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Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-007963
Application 10/840,064

2
STATEMENT OF THE CASE
Kelly W. Buchner (Appellant) appeals under 35 U.S.C. § 134 (2006)
from the Examiner’s decision finally rejecting claims 1 and 5. Claims 2-4
and 6-8 are objected to by the Examiner as being dependent upon a rejected
base claim and otherwise indicated as being allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claim. Claims 9-11 have been allowed by the Examiner. We
have jurisdiction over this appeal under 35 U.S.C. § 6 (2006).

THE INVENTION
Appellant’s invention relates to a procedure for treatment of human
and animal tissues by stimulating deep layered muscle contractions in the
tissue. Spec. 1, ll. 6-8.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A procedure for [therapeutic] treatment of
human and animal tissues surrounding articular
joints evidencing symptoms of fibromyalgia
comprising the steps of:
identifying an articular joint evidencing
symptoms of fibromyalgia;
sandwiching the tissue surrounding the
identified articular joint between one or more pairs
of opposed emitter pads in contact with the skin;
and
applying a biphasic [faradic] pulse sequence
to the pairs of emitter pads to stimulate deep
layered muscle contractions in the sandwiched
tissue.

Appeal 2009-007963
Application 10/840,064

3
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Grey US 5,397,338 Mar. 14, 1995

Appellant seeks review of the Examiner’s rejection of claims 1 and 5
under 35 U.S.C. § 103(a) as unpatentable over Grey.

SUMMARY OF DECISION
We REVERSE.

OPINION
Appellant argues that Grey does not disclose stimulating deep layered
muscle contractions, as required by independent claim 1. Br. 7. In response,
the Examiner first points to column 1, lines 32-35 of Grey to show that Grey
discloses adjusting the pulse amplitude, pulse width, and pulse rate
depending on user preferences. The Examiner then opines that an
. . . electrical current strong enough to promote
healing of tissue such as tendon, muscle and bone,
as taught in Grey, would be enough to provide for
deep layered muscle contractions in the typical
patient.
Ans. 4-5.
In view of the above findings, the Examiner then concludes that the Grey
device is “considered to be able to stimulate deep layered muscle
contractions.” Ans. 3.
At the outset, it appears that the Examiner is relying on a theory of
inherency to establish that the electrical current of Grey’s device is capable
of stimulating deep layered muscle contractions. In relying upon the theory
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Application 10/840,064

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of inherency, the Examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. &
Inter. 1990). In this case, the question raised is whether the electrical current
of Grey is necessarily capable of stimulating deep layered muscle
contractions.
While the Examiner correctly points out that the device of Grey can
adjust the pulse amplitude, pulse width, and pulse rate of the electrical signal
delivered, so as to promote healing and aid in pain relief, this in no way
demonstrates that the electrical current of Grey’s device is capable of
stimulating deep layered muscle contractions, as the Examiner contends.
See Grey, col. 1, ll. 8-11. In other words, just because the pulse amplitude,
pulse width, and pulse rate of the electrical current of Grey’s device can
promote healing of tissue it does not necessarily mean that it can also
stimulate deep layered muscle contractions. For example, Grey discloses
that adjustment of pulse amplitude, pulse width, and pulse rate of the
delivered electrical signal is performed in order to avoid accommodation of
the excitable tissue to stimulation. Grey, col. 9, ll. 9-11. Hence, although
Gray discloses adjustment of the pulse amplitude, pulse width, and pulse
rate, the resulting electrical current does not necessarily stimulate deep
layered muscle contractions, as the Examiner opines. Therefore, the
Examiner’s finding that the electrical current of Grey’s device is strong
enough to provide for deep layered muscle contractions is mere speculation
and conjecture based on an unfounded assumption that adjustments of the
pulse amplitude, pulse width, and pulse rate of the delivered electrical signal
Appeal 2009-007963
Application 10/840,064

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would necessarily generate an electrical current strong enough to stimulate
deep layered muscle contractions.
Since speculation and conjecture cannot form the basis for concluding
obviousness, the rejection of independent claim 1 and dependent claim 5
under 35 U.S.C. § 103(a) as unpatentable over Grey cannot be sustained.
See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an independent
claim is nonobvious under 35 U.S.C. § 103, then any claim dependent
therefrom is nonobvious).

DECISION
The Examiner’s decision to reject claims 1 and 5 is reversed.

REVERSED

Klh

FRANK J. CATALANO
FRANK J. CATALANO, P.C.
100 WEST 5TH ST., 10TH FLOOR
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