Ex Parte Burbank et al

Patent Trial and Appeal Board

Dec 1, 2014

12396358 (P.T.A.B. Dec. 1, 2014)

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.
12/396,358 03/02/2009 Fred Burbank 212/671 6136
23371 7590 12/01/2014
CROCKETT & CROCKETT, P.C.
26020 ACERO
SUITE 200
MISSION VIEJO, CA 92691
EXAMINER
LOUIS, LATOYA M
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
12/01/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRED BURBANK, MIKE JONES, and
AL MEMMOLO
____________

Appeal 2014-007043
Application 12/396,358
Technology Center 3700
____________

Before EDWARD A. BROWN, ANNETTE R. REIMERS, and
MICHAEL L. WOODS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Fred Burbank et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision to reject under 35 U.S.C. § 103(a):
(1) claims 1, 6, and 13–17 as unpatentable over Branch (US 2007/0255187
A1; pub. Nov. 1, 2007), Thorpy,1 Aikman (US 7,578,013 B2; iss. Aug. 25,
2009) and Gibree (US 2007/0085286 A1; pub. Apr. 19, 2007); (2) claims

1 Michael J. Thorpy, New Paradigms in the Treatment of Restless Legs
Syndrome 64 NEUROLOGY S28–S33, AAN Enterprises, Inc. (2005).
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3–5, 7–9, 11, 12, and 20 as unpatentable over Branch, Thorpy, Aikman,
Gibree, and Davis (US 6,093,164; iss. July 25, 2000); (3) claim 10 as
unpatentable over Branch, Thorpy, Aikman, Gibree, Davis, and Avni
(US 2009/0112134 A1; pub. Apr. 30, 2009); (4) claims 15–17 and 20–28 as
unpatentable over Thorpy, Branch, Davis, Aikman, Gibree, and Karell
(US 5,759,198; iss. June 2, 1998). Claims 2, 18, and 19 have been canceled.
Appellants present additional evidence in (1) the Declarations of Dr. Richard
K. Bogan (hereafter the “Bogan Declaration”) and Dr. Mark Joseph
Buchfuhrer (hereafter the “Buchfuhrer Declaration”) filed under 37 C.F.R.
§ 1.132 on June 27, 2013; (2) the Declaration of Mr. Michael L. Jones
(hereafter the “Jones Declaration”) filed under 37 C.F.R. § 1.132 on
February 3, 2014; and (3) the Montagna reference.2 We have jurisdiction
under 35 U.S.C. § 6(b). An oral hearing was held on November 6, 2014.
We REVERSE.

CLAIMED SUBJECT MATTER
The claimed subject matter relates to systems and methods “useful to
treat Restless Leg Syndrome.” Spec. para. 2; Figs. 62–65. Claims 1, 15, and
21–24 are independent.
Claims 1 and 15 are illustrative of the claimed subject matter and
recite:

2 Pasquale Montagna, Clonazepam and Vibration in Restless Legs Syndrome
69 ACTA. NEUROL. SCAND. 428–430 (1984), filed with an Information
Disclosure Statement (IDS) on May 6, 2013.
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1. A system for generating a counter-stimulation in a patient
suffering from restless leg syndrome, the system comprising:
a vibration generator configured and arranged to generate
a counter-stimulation vibration in a patient suffering from
restless leg syndrome, the counter-stimulation having a
frequency of between 50hz and 10 per minute and of an
amplitude and time duration either lower than that which would
wake the patient and higher than that sufficient to relieve
restless leg syndrome symptoms, or sufficient to relieve restless
leg syndrome symptoms and allow the patient to return to sleep;
a controller configured and arranged to drive the
vibration generator, the controller in communication with the
vibration generator, the controller being configured and
arranged to ramp down the counter-stimulation so as not to
waken or alarm the patient; and
a base configured and arranged to hold the vibration
generator adjacent to a patient, the vibration generator attached
to the base.

15. A method of treating restless leg syndrome, the method
comprising:
selecting a patient experiencing restless leg syndrome;
vibrating a portion of the patient with a vibration
generator at a frequency of between 50hz and 10 per minute
during a restless leg syndrome episode at an amplitude and
duration sufficient to act as a counter-stimulation vibration to
said restless leg syndrome episode and either to allow the
patient to return to sleep or to not wake a sleeping patient; and
ramping down the counter-stimulation vibration so as not
to waken or alarm the patient.

ANALYSIS
Obviousness over Branch, Thorpy, Aikman, and Gibree
Claims 1, 6, and 13–17
Independent claim 1 calls for a system for generating a counter-
stimulation in a patient suffering from restless leg syndrome, the system
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including a vibration generator configured and arranged to generate a
counter-stimulation vibration in a patient suffering from restless leg
syndrome, the counter-stimulation vibration having “an amplitude and time
duration . . . sufficient to relieve restless leg syndrome symptoms and allow
the patient to return to sleep.” See Appeal Br. Claims App. 1. The Examiner
finds that “Branch discloses that the vibration is adjustable in frequency,
amplitude, and time duration ([0015] lines 5-12, [0016] lines 1-9) but does
not specifically disclose that the vibration is of an amplitude and time
duration sufficient to [relieve] RLS symptoms and allow a patient to return
to sleep.” Ans. 3.3 The Examiner relies on Aikman for disclosing that the
vibration “is of an amplitude and time duration [sufficient to relieve RLS
symptoms and] allow [a] patient to return to sleep and/or not wake a
sleeping patient . . . Aikman discloses providing vibration that [relieves] the
symptoms of restless legs syndrome and that also encourages relaxation and
restful sleep.” See Ans. 15 (citing Aikman col. 5 ll. 40–55); see also id. at 3,
20.
Appellants contend that “[n]one of the applied references disclose
vibration as counter-stimulation, or at a level sufficient to relieve restless leg
syndrome symptoms but low enough to allow the patient to sleep.” Appeal
Br. 39. Specifically Appellants contend that “Aikman is silent on this issue.
The passage cited by the Examiner, Aikman’s col. 5 11. 50-55, does not

3 The Examiner relies on Thorpy for disclosure of “it is old and well known
that vibration therapy is contemplated in the treatment of the symptoms of
RLS.” Ans. 3. The Examiner relies on Gibree for disclosure of a ramp
down feature to ramp down the counter-stimulation vibration so as not to
waken or alarm the patient. Id. at 4.
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disclose this feature.” Id.
Appellants’ argument is persuasive. Aikman discloses that
[i]n an alternative embodiment, the body
support pillow has means to provide sound (or
music), massage, vibration, sources of scents or
aromas, and/or heat to the different support
sections of the invention body support pillow such
as pockets in the casings to hold hot water bottles
in order to aid in alleviating muscle ache or pain or
strain, restless leg syndrome, the ache of arthritis,
promote increased circulation, and further
encourage relaxation and restful sleep.
Aikman, col. 5, ll. 46–53.

Aikman merely discloses that the body support pillow provides vibration to
aid in alleviating restless leg syndrome and to encourage restful sleep. This
portion of Aikman, cited by the Examiner, does not mention anything
regarding the body support pillow providing vibration amplitude and time
duration and that the vibration is of an amplitude and time duration
“sufficient to relieve RLS symptoms and allow [a] patient to return to sleep
and/or not wake a sleeping patient,” as the Examiner asserts. See Ans. 3; see
also id. at 15, 20. Further, to the extent that the Examiner’s position is
premised on the finding that Aikman’s body support pillow inherently
produces vibration of an amplitude and time duration “sufficient to relieve
RLS symptoms and allow [a] patient to return to sleep and/or not wake a
sleeping patient” (see e.g., Ans. 5), inherency may not be established by
probabilities or possibilities. See MEHL/Biophile Int’l. Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999) (“Inherency . . . may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.”). See
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also In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). (“An inherent
characteristic must be inevitable, and not merely a possibility or
probability.”). The Examiner has not established, by evidence or technical
reasoning, a sufficient factual basis to support a determination that Aikman’s
body support pillow, would inevitably, or necessarily, provide vibration of
an amplitude and time duration sufficient to relieve RLS symptoms and
allow a patient to return to sleep and/or not wake a sleeping patient.
Accordingly, the Examiner has not established that the applied references
disclose the claimed vibration generator and controller configured to provide
the effects recited in claim 1. Consequently, the Examiner has failed to
establish by a preponderance of the evidence that the combined teachings of
Branch, Thorpy, Aikman, and Gibree render obvious the system called for in
independent claim 1.
Independent claim 15 calls for a method of treating restless leg
syndrome including the step of vibrating a portion of a patient with a
vibration generator having counter-stimulation vibration directed to
limitations similar to those discussed above in claim 1. Thus, the
Examiner’s findings and conclusions with respect to Aikman are deficient
for claim 15, as well, for reasons similar to those discussed above for claim
1. See Appeal Br. Claims App. 3; Ans. 4–6.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
claims 1, 6, and 13–17 as unpatentable over Branch, Thorpy, Aikman, and
Gibree cannot be sustained. 4

4 Because we have determined that the Examiner failed to establish by a
preponderance of the evidence that the combined teachings of Branch,

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Obviousness over Branch, Thorpy, Aikman, Gibree, and Davis
Claims 3–5, 7–9, 11, 12, and 20
Claims 3–5, 7–9, 11, 12 depend directly or indirectly from claim 1.
See Appeal Br. Claims App. 1–2. Claim 20 depends directly from claim 15.
See id. at 3. The Examiner’s rejection of claims 3–5, 7–9, 11, 12, and 20 as
unpatentable over Branch, Thorpy, Aikman, Gibree, and Davis (see Ans. 7–
8) is based on the same deficient findings and conclusions discussed above
with respect to independent claims 1 and 15. The addition of Davis is not
relied upon to remedy the deficiencies of Aikman discussed above.
Accordingly, for similar reasons, we do not sustain the Examiner’s rejection
of claims 3–5, 7–9, 11, 12, and 20 as unpatentable over Branch, Thorpy,
Aikman, Gibree, and Davis.
Obviousness over Branch, Thorpy, Aikman, Gibree, Davis, and Avni
Claim 10
Claim 10 depends indirectly from claim 1. See Appeal Br. Claims
App. 2. The Examiner’s rejection of claim 10 as unpatentable over Branch,
Thorpy, Aikman, Gibree, Davis, and Avni (see Ans. 8–9) is based on the
same deficient findings and conclusions discussed above with respect to
independent claim 1. The addition of Avni is not relied upon to remedy the
deficiencies of Aikman discussed above. Accordingly, for similar reasons,
we do not sustain the Examiner’s rejection of claim 10 as unpatentable over
Branch, Thorpy, Aikman, Gibree, Davis, and Avni.

Thorpy, Aikman, and Gibree disclose the limitations as claimed, we do not
need to reach the Bogan, Buchfuhrer, or Jones Declarations or the Montagna
reference.
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Obviousness over Thorpy, Branch, Davis, Aikman, Gibree, and Karell
Claims 15–17 and 20–28
Each of independent claims 15 and 21–23 calls for a method of
treating restless leg syndrome including the step of vibrating a portion of a
patient with a vibration generator having counter-stimulation vibration
directed to limitations similar to those discussed above in claim 1. See
Appeal Br. Claims App. 3–5. Independent claim 24 calls for a method of
treating restless leg syndrome including the step of applying a counter-
stimulation generation device to the leg of a patient, the counter-stimulation
generation device including a vibration generator, the vibration generator
operable to generate a counter-stimulation vibration, the counter-stimulation
vibration directed to limitations similar to those discussed above in claim 1.
See id. at 5. Claims 16 and 17 depend directly from claim 15. See id. at 3.
Claim 25 depends directly from claim 21. See id. at 6. Claim 26 depends
directly from claim 22. See id. Claim 27 depends directly from claim 23.
See id. Claim 28 depends directly from claim 24. See id. The Examiner’s
rejection of claims 15–17 and 20–28 as unpatentable over Thorpy, Branch,
Davis, Aikman, Gibree, and Karell (see Ans. 9–12) is based on the same
deficient findings and conclusions discussed above with respect to
independent claim 1. The addition of Karell is not relied upon to remedy the
deficiencies of Aikman discussed above. Accordingly, for similar reasons,
we do not sustain the Examiner’s rejection of claims 15–17 and 20–28 as
unpatentable over Thorpy, Branch, Davis, Aikman, Gibree, and Karell.

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DECISION
We REVERSE the decision of the Examiner to reject claims 1, 3–17,
and 20–28.

REVERSED

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