Ex Parte Buhlmann et al

Patent Trial and Appeal Board

Sep 30, 2016

12321691 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/321,691 01/23/2009
119053 7590 10/04/2016
Knobbe, Martens, Olson & Bear LLP
DJO GLOBAL (DJOCO)
2040 Main Street
Fourteenth Floor
Irvine, CA 92614
FIRST NAMED INVENTOR
Felix Buhlmann
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
DJOC0.013Cl 2973
EXAMINER
MORALES, JON ERIC C
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte FELIX BUHLMANN, PIERRE-YVES LAMPO,
PIERRE RIGAUX, PIERRE-YVES MULLER, DAVID TRUFFER, and
KLAUSSCHONENBERGER
Appeal2014-004833 1
Application 12/321,691 2
Technology Center 3700
Before PHILLIP J. HOFFMANN, BRADLEY B. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-3, 5-8, 11-20, 22-25, and 27--44. Appellants' representative
presented arguments at oral hearing. 3 We have jurisdiction under
35 U.S.C. § 6(b).
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
Nov. 5, 2013), Reply Brief ("Reply Br.," filed Mar. 14, 2014), and the
Examiner's Answer ("Ans.," mailed Jan. 14, 2014).
2 Appellants identify the real party in interest as "Compex Medical S .A."
(App. Br. 2).
3 Hearing Transcripts ("Hearing," conducted on July 7, 2016).
Appeal2014-004833
Application 12/321,691
SUMMARY OF THE DECISION
We AFFIRM.
THE INVENTION
Appellants' invention relates generally to electro-stimulation, and,
more particularly, to a system and method for automated adaptive muscle
stimulation, wherein the muscle stimulation may be adjusted by a measured
muscle reaction. Spec. i-f 2.
Claims 1 and 11 are the only independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. An automated adaptive tissue stimulation system configured to
be applied transcutaneously to a user comprising:
[a] at least one electrode assembly having a stimulation electrode
adapted to deliver a stimulation signal through the user's skin to
a subcutaneous target tissue of a user, a sensor adapted to detect
the presence of a tissue response, and
[b] a first housing, \'I/herein the stimulation electrode and sensor are
positioned within the first housing; and
[ c] an electrical stimulation device operably coupled to the at least
one electrode assembly, the electrical stimulation device
including a control system operable to automatically diagnose
at least one characteristic of a tissue from the detected tissue
response and adjust at least one parameter of the stimulation
signal in response thereto to deliver an adjusted stimulation
signal to the target tissue.
App. Br. 13, Claims Appendix (with added bracketed matter).
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Application 12/321,691
REJECTION4
Claims 1-3, 5-8, 11-20, 22-25, and 27--445 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Lieber (US 5,507,788, iss. Apr. 16,
1996) and Rigaux (US 6,324,432 Bl, iss. Nov. 27, 2001). Ans. 2.
DISCUSSION
Claims 1-3, 5, 7, 8, 11-14, 17-20, 22-25, 27, 28, and 30--44
As an initial matter, we note that Appellants argue independent claims
1 and 11 together. App. Br. 3-10. We select claim 1 as being
representative. Thus, claim 11 stands or falls with independent claim 1. See
C.F.R. § 41.37(c)(l)(iv).
In rejecting independent claim 1, the Examiner finds that Lieber
discloses elements [a] and [ c] of the claimed device, but is deficient as to
element [b]. Ans. 2. The Examiner finds that the teachings of Rigaux
remedy this deficiency. Id. at 2-3. And the Examiner concludes:
Therefore it would have been obvious to one of ordinary skill in
the art, at the time of the invention, to modify the device of
Lieber by having housing with both the stimulation electrode
and sensor within in the same housing as taught by Rigaux in
order to facilitate proper placement for sensing and therapy to
be delivered to a patient.
Id. at 3.
Appellants raise arguments challenging the proposed combination and
dispute the Examiner's finding as to claim element [b]. We address each in
the order presented in Appellants' Appeal Brief.
4 The Double Patenting rejection is rendered moot in view of Terminal
Disclaimer filed on June 19, 2013.
5 We note that claims 4, 9, 10, and 26 are objected to as being dependent
upon a rejected base claim (Ans. 5). Thus, claims 4, 9, 10, and 26 are not
before us on appeal.
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Application 12/321,691
First, Appellants argue that the Examiner's proposed combination is
improper "because Rigaux directly teaches away from being combined with
Lieber." App. Br. 6. In support of this argument, Appellants assert:
Rigaux describes systems that rely on torque measurements as
being inherently disadvantageous and explicitly points out the
teachings of Lieber, with a direct reference to Lieber by patent
number US 5,507,788, as being an example of one such inferior
system. See Rigaux, col. 3: 16-29. Rigaux directly criticizes
the system of Lieber, noting that Lieber' s use of strain gauges
limits the device and renders it "not ... appropriate if
measurements are made for dorsal or pectoral muscles." Id. at
col. 3 :25-29. Rigaux further stresses the disadvantages of
Lieber in discussing alternative accelerometric and acoustic
sensors that "can be used for any muscles in the body," as
opposed to strain gauges, such as those used in Lieber, which
are limited to specific muscles groups. Id. at col. 4:23-29.
Thus, because Rigaux directly addresses the teachings of Lieber
and discredits the system of Lieber, Rigaux teaches away from
a combination with Lieber and cannot serve as the basis for an
obviousness rejection.
Id. at 7.
Appellants' teaching away argument is not persuasive because it does
not point out why a person of ordinary skill, upon reading Rigaux, would be
led in a direction divergent from the path taken by Appellants. See In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Prior art does not teach away
from claimed subject matter merely by disclosing a different solution to a
similar problem unless the prior art also criticizes, discredits, or otherwise
discourages the solution claimed. See In re Fulton, 391F.3d1195, 1201
(Fed. Cir. 2004). The "mere disclosure of alternative designs does not
teach away." Id. The passage Appellants cite in Rigaux merely recognizes a
limitation in using strain gauges, and provides an alternative that is
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Application 12/321,691
appropriate for measuring dorsal and pectoral muscles as well. However,
the relied upon teachings in Rigaux do not discredit, criticize, or discourage
the claimed solution.
Second, Appellants argue that "[t]he proposed combination of Rigaux
and Lieber renders Lieber inoperable for its intended purpose." App. Br. 7.
In support of this argument, Appellants assert:
Modifying Lieber to have measuring device 14 and stimulation
pads 12 positioned within a housing, as the Examiner proposes,
renders Lieber inoperable for its intended purpose. As
appreciated by Rigaux, the strain gauge of Lieber is arranged "a
distance from the stimulation electrodes" to measure a resultant
torque caused by a "movement of a segment" of muscle. See
Rigaux, col. 3: 16-29. Eliminating the separation between the
torque measuring device 14 and stimulation pads 12 of Lieber
would prevent Lieber from measuring strain caused by
movement of the muscle segment, thereby preventing
measurements of torque. Replacing the torque measuring
device 14 with a component that does not measure torque, such
as an accelerometer, as the Examiner proposes, would eliminate
the torque measurement completely. Lieber uses changes in
peak torque amplitude as feedback for adjusting the applied
stimulation. See Lieber, col. 6:60-63. Without such
measurements, Lieber would not be able to achieve its intended
purpose of adjusting a stimulation signal based on the muscle
response indicated by measured torque.
Id. at 8.
Appellants' argument is not persuasive at least because it is
based on the bodily incorporation of the features of Rigaux into the
Lieber system. The test for obviousness is not whether the features of
one reference may be bodily incorporated into the structure of another
reference. Instead, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.
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See Jn re Keller, 642 F.2d 413, 425 (CCPA 1981). See also Jn re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary
that the inventions of the references be physically combinable to
render obvious the invention under review.").
Additionally, the passage of Rigaux as cited by Appellants in
support of this argument does not place any restrictions on the size of
Rigaux' s housing. In fact, Rigaux contains no such restriction. Thus,
Appellants have not shown that the proposed modification would have
been beyond the capabilities of a person of ordinary skill in the art.
See Rigaux 8:53-56 ("several other alternative embodiments of a
stimulator combining an electrode with a measuring sensor can be
envisaged within the reach of those skilled in the art without departing
from the scope of the invention.").
Finally, Appellants argue that the proposed combination does not
render obvious a stimulation electrode and sensor positioned within a
housing as described in the Specification. App. Br. 9; Reply Br. 8-9. In
particular, Appellants dispute the Examiner's finding of element [b] in
Rigaux, asserting that:
Although the Examiner alleges that "Rigaux discloses a first
housing 7, wherein the stimulation electrode 9 and sensor 11
are positioned within the first housing" (Office Action, page 4),
sensor 11 is actually contained within connector 6, not
electrode 7, as is shown in Fig. 2 and explicitly stated in
Rigaux. See Rigaux, col. 5:64 to col. 6:6.
Id. at 1 O; Reply Br. 6. Appellants argue that Figure 3a of "Rigaux also does
not disclose that electrode 7 is structured as a housing (or a casing or an
enclosure) as would reasonably be interpreted by one having ordinary skill
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in the art ... [and] electrode 7 is not described or illustrated as a housing
having a stimulation electrode and sensor positioned within the housing."
Reply Br. 5.
Although much of Appellants' argument is premised upon a
distinction between the claim term housing and the Examiner's finding in
Rigaux, the Specification fails to define the term in describing the claimed
invention. In fact, Appellants acknowledge not using the term housing in
relation to electrodes anywhere in the Specification. Hearing 12: 17-19. As
such, we find that the ordinary and customary meaning of the term
"housing" is "a part designed to shelter, cover, contain, or support a
component. "6 With this meaning in mind, we address Appellants' argument
in relation to Figures 2 and 3 of Rigaux.
We initially note that there is no dispute as to the Examiner's findings
that the "first active conductive surface 9" in Rigaux constitutes the claimed
"stimulation electrode," and "second active conductive surface 11" (sensor
11) constitutes the claimed "sensor." Ans. 2-3. As to Appellants' argument
that "sensor 11 is actually contained within connector 6, not electrode 7, as
is shown in Fig. 2 and explicitly stated in Rigaux," (App. Br. 10), we
disagree because the Examiner does not rely on those findings. In a first
embodiment, Rigaux does show that "[s]ensor 11 is embedded in the body
18 of connector 6." However, the Examiner relies on the second
embodiment of Rigaux, shown in Figures 3a and 3b to reject the claim. See
Ans. 2.
6 httg://www.collinsdictionary.cornJdictionary/english/housing (last visited
Sept. 28, 2016).
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In describing these embodiments, Rigaux indicates that muscle
reaction measuring sensors are either "housed in electrode structure 7 or in
connector 6." Rigaux 5:42--45 ("The sensors are housed either in one of the
electrodes or in one of the connectors or in both."). Rigaux discloses that
"[t]he sensor 11 is intrinsically linked to one of the electrodes 7" (Abstract)
and active conductive surface 9 is fixed to base plane 17 (Rigaux 6:22-24).
Figures 3a and 3b support Rigaux's express disclosure, and depict electrode
structure 7 containing elements 9 and 11. In view of the foregoing, we
disagree that electrode 7 is not described or illustrated as a housing having a
stimulation electrode and sensor positioned within the housing. On the
record before us, the preponderance of the evidence supports the Examiner's
position.
Accordingly, we sustain the Examiner's rejection of independent
claim 1, and claim 11, which falls with claim 1. Appellants rely on the
patentability of the independent claims and do not separately argue
dependent claims 2, 3, 5, 7, 8, 12-14, 17-20, 22-25, 27, 28, and 30--44.
Therefore, we sustain the rejection claims 2, 3, 5, 7, 8, 12-14, 17-20, 22-25,
27, 28, and 30--44 for the same reasons as claims 1 and 11.
Claims 15, 16, and 29
Appellants separately argue the patentability of dependent claims 15,
16, and 29. App. Br. 10-12. In challenging the rejection of these claims,
Appellants address the Examiner's findings as to Lieber at column 4, lines
32--43. See id. The Examiner, however, also relies on Lieber's teachings at
column 5, lines 23--48 in rejecting claims 15, 16, and 29. See Ans. 4, 8.
Appellants have offered no substantive arguments to rebut the additional
underlying factual findings made by the Examiner in support of obviousness.
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And we decline to examine the claims sua sponte, looking for distinctions
over the prior art. Cf In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed.
Cir. 1991) ("It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art."). In the absence of a more detailed
explanation, we are not persuaded of error on the part of the Examiner.
Therefore, we sustain the Examiner's rejection of claims 15, 16, and
29 under 35 U.S.C. § 103(a).
DECISION
The decision to reject claims 1-3, 5-8, 11-20, 22-25, and 27--44 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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