Ex Parte Choy

Board of Patent Appeals and Interferences

Aug 31, 2012

11604444 (B.P.A.I. Aug. 31, 2012)

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.
11/604,444 11/27/2006 Daniel S.J. Choy 40396-0004 3448
20480 7590 08/31/2012
STEVEN L. NICHOLS
Van Cott, Bagley, Cornwall & McCarthy
36 South State Street
SUITE 1900
SALT LAKE CITY, UT 84111
EXAMINER
BIANCO, PATRICIA
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
08/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL S.J. CHOY
____________

Appeal 2010-008277
Application 11/604,444
Technology Center 3700
____________

Before LINDA E. HORNER, PHILLIP J. KAUFFMAN, and
EDWARD A. BROWN, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Daniel S.J. Choy (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1-11 and 13-21 under 35 U.S.C.
§ 103(a) as unpatentable over Carter (US 2006/0161087 A1; pub. Jul. 20,
2006) and Kirkland (US 2,352,390; iss. Jun. 27, 1944). We have jurisdiction
under 35 U.S.C. § 6(b).
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We AFFIRM.
THE INVENTION
Appellant’s claimed invention relates to a spinal compression device
and method. Spec., paras. [0016] – [0017]. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A spinal compression device, comprising:
a shoulder harness;
a footplate assembly connected to said shoulder harness
by at least one connecting member;
at least one hydraulic actuator mechanically coupled to
said footplate assembly, said hydraulic actuator having a
proximal end, a distal end, and a piston mechanically coupled
to said connecting member; and
a hydraulic energy source in fluid communication with
said hydraulic actuator through hydraulic lines;
wherein said footplate is only connected to said hydraulic
energy source by said hydraulic lines.
ISSUES
Appellant does not contest the Examiner’s findings as to the scope
and content of Carter and Kirkland or the Examiner’s articulated reason for
combining the teachings of Carter and Kirkland in the manner claimed.
Rather, Appellant contends that “Carter is not valid prior art against the
claims of the present application.” App. Br. 11.1 In particular, Appellant
asserts that the present application is entitled to the benefit of Provisional

1 Appellants argue claims 1-11 and 13-21 as a group. App. Br. 11-14. We
select claim 1 as representative of the group. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
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Application 60/614,267, filed September 28, 2004 (“the ‘267 provisional
application”), which predates the earliest effective filing date of Carter of
January 17, 2005. Id.
The Examiner determined that the present application is not entitled to
the benefit of the ‘267 provisional application filing date because: (1) the
present application does not contain a proper claim to benefit of the ‘267
provisional application under 35 U.S.C. § 119(e); and (2) the ‘267
provisional application does not provide adequate written descriptive
support under 35 U.S.C. § 112, first paragraph, for the claimed structural
elements and configuration of the hydraulic mechanism of the claims.
Ans. 6-7.
The issues presented by this appeal are:
Does the present application contain a proper claim to benefit of the
‘267 provisional application under 35 U.S.C. § 119(e)?
Did the Examiner meet the Office’s initial burden of presenting
sufficient evidence or reasoning to rebut the presumption that Appellant’s
description as filed in the ‘267 provisional application is adequate support
for the claimed structural elements and configuration of the hydraulic
mechanism of claim 1?
ANALYSIS
Claim to Benefit under 35 U.S.C. § 119(e)
35 U.S.C. § 119(e)(1) provides (emphasis added):
(e)(1) An application for patent filed under section 111(a)
or section 363 of this title for an invention disclosed in the
manner provided by the first paragraph of section 112 of this
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title in a provisional application filed under section 111(b) of
this title, by an inventor or inventors named in the provisional
application, shall have the same effect, as to such invention, as
though filed on the date of the provisional application filed
under section 111(b) of this title, if the application for patent
filed under section 111(a) or section 363 of this title is filed not
later than 12 months after the date on which the provisional
application was filed and if it contains or is amended to contain
a specific reference to the provisional application. No
application shall be entitled to the benefit of an earlier filed
provisional application under this subsection unless an
amendment containing the specific reference to the earlier filed
provisional application is submitted at such time during the
pendency of the application as required by the Director. The
Director may consider the failure to submit such an amendment
within that time period as a waiver of any benefit under this
subsection. The Director may establish procedures, including
the payment of a surcharge, to accept an unintentionally
delayed submission of an amendment under this subsection
during the pendency of the application[.]
The Office Rules set forth the proper procedure for claiming benefit
of a provisional application. At the time Appellant filed the present
application, the Rules then in effect provided:
Any nonprovisional application or international
application designating the United States of America claiming
the benefit of one or more prior-filed provisional applications
must contain or be amended to contain a reference to each such
prior-filed provisional application, identifying it by the
provisional application number (consisting of series code and
serial number).
37 C.F.R. § 1.78(a)(5)(i) (2006).
The present application contains a claim to priority under 35 U.S.C.
§ 120 to parent non-provisional application 11/238,918. Spec., para. [0001].
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The present application contains no reference to the ‘267 provisional
application.2 While the present application incorporates by reference the
parent non-provisional application in its entirety3, which parent non-
provisional application includes a claim under 35 U.S.C. § 119(e) to the
benefit of the ‘267 provisional application4, such an incorporation by
reference is not sufficient to meet the requirements of 37 C.F.R.
§ 1.78(a)(5)(i). In particular, incorporation by reference in a child
application of a non-provisional parent application, which claims benefit to a
provisional application under 35 U.S.C. § 119(e), is not “a reference to” the
provisional application in the child application that identifies it by
provisional application number. As such, we agree with the Examiner that
Appellant has failed in the present application to properly claim the benefit
under 35 U.S.C. § 119(e) of the ‘267 provisional application, and thus Carter
is valid prior art against the claims. Accordingly, we sustain the Examiner’s
rejection of claims 1-11 and 13-21. Since Appellant may be able to correct
the claim to benefit while the present application is still pending5, we deem

2 We note, as did the Examiner, that the Declaration for Utility Patent
Application, dated November 27, 2009, likewise includes a claim to priority
to the parent non-provisional application, but does not include a claim to the
benefit of the ‘267 provisional application.
3 See Spec., para. [0001].
4 See Parent Appl. 11/238,918, para. [0001].
5 We make no determination as to whether an amendment to the
Specification to correct the claim to benefit under 35 U.S.C. § 119(e) is
available at this stage of pendency of the present application. See 37 C.F.R.
§ 1.78(a)(5).
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it advisable, as a matter of judicial economy, to address the other basis for
the Examiner’s determination that Carter is valid prior art.
Written descriptive support under 35 U.S.C. § 112, first paragraph
Under 35 U.S.C. § 119, Appellant’s application is entitled to the
benefit of the ‘267 provisional filing date if the subject matter of the claims
is disclosed in the ‘267 provisional application in the manner provided by
35 U.S.C. § 112, first paragraph. 35 U.S.C. § 119(e)(1). Appellant’s
description as filed is presumed to be adequate, and the Examiner must
present sufficient evidence or reasoning to rebut this presumption. Cf. In re
Wertheim, 541 F.2d 257, 262-63 (CCPA 1976) (holding that where there
was a claim for priority to a foreign patent, the PTO had the initial burden of
presenting evidence or reasons to demonstrate that the foreign patent did not
contain a sufficient written description under 35 U.S.C. § 112, first
paragraph, for the claimed subject matter); In re Marzocchi, 439 F.2d 220,
224 (CCPA 1971) (regarding the Examiner's burden to demonstrate the
claimed subject matter was not enabled under 35 U.S.C. § 112, first
paragraph).6
The Examiner determined that the “limited recitation [in the ‘267
provisional application] of ‘any mechanism’ being used to control the
relative tension of the straps including the mere submission of ‘hydraulic
device’ as an example mechanism does not provide sufficient support for the
invention of appellant’s instant application.” Ans. 7. The Examiner’s

6 Of course, this burden falls on the Office only after a proper claim to
benefit has been made by Appellant.
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analysis is inadequate to meet the Office’s initial burden of presenting
sufficient evidence or reasoning to rebut the presumption that Appellant’s
description as filed in the ‘267 provisional application is adequate.
For example, independent claim 1 is directed to a spinal compression
device that includes at least one hydraulic actuator mechanically coupled to
a footplate assembly and having a piston mechanically coupled to a
connecting member, and a hydraulic energy source in fluid communication
with the hydraulic actuator through hydraulic lines. Upon review of the
complete disclosure of the ‘267 provisional application and consideration of
the knowledge of one of ordinary skill in the art and the predictability of the
art, we find that the Examiner has failed to adequately explain why the ‘267
provisional disclosure would not reasonably convey to one skilled in the art
that Appellant had possession of the subject matter of claim 1.
To satisfy the written description requirement, “the [original]
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). “[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. (citations omitted). “[T]he level of detail required to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology.”
Id. (citing Capon v. Eshhar, 418 F.3d 1349, 1357-58 (Fed. Cir. 2005)).
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The mechanical world, however, is “a fairly predictable field.” Bilstad v.
Wakalopulos, 386 F.3d 1116, 1126 (Fed. Cir. 2004). The claimed invention
need not be recited in haec verba in the original specification to satisfy the
written description requirement. Ariad, 598 F.3d at 1352.
The ‘267 provisional application describes a lumbar disc pressure
control apparatus (200) including a foot support assembly (210) coupled to a
shoulder pad (220) by spaced-apart straps (230). ‘267 prov. appl., para.
[0025]. The application explains that when the shoulder pad (220) is worn
by a patient and the patient’s feet are on the foot support assembly (210), the
patient’s knees will be slightly bent, and that extension of the patient’s legs
generates the required forces on the lumbar discs. ‘267 prov. appl., paras.
[0029]-[0030]. The application also describes that “the distance [between
the shoulder pad (220) and the foot support assembly (210)] may be further
controlled by a hand crank assembly after the straps (230) have been
adjusted, as will be discussed in more detail below with reference to Fig. 4.”
‘267 prov. appl., para. [0030].
The application describes that the hand crank assembly (320) is
coupled to the foot support assembly (210) and the straps (230) are coupled
to the hand crank assembly (320). ‘267 prov. appl., para. [0032]; fig. 4A.
The application describes that “rotation of the crank in the counter clock
wise direction causes the bar (410) [of hand crank assembly (320)] to move
away from the foot support platform (310)” and an increased pressure is
exerted on the lumbar discs of the patient due to the connection between the
hand crank assembly (320) and the shoulder pad (220) via the straps (230).
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‘267 prov. appl., paras. [0037]-[0038]. The application also describes that
“the foot support assembly (210), including the crank assembly (320) is
remote from the lumbar discs” and that “the configuration of the control
apparatus (200) allows the patient to be placed within a MRI imaging system
(500) while the foot support assembly (300) remains outside thereof.” ‘267
prov. appl., paras. [0038]-[0039]. The provisional application further
describes that “[t]he hand crank assembly discussed is for illustrative
purposes only” and that “[a]ny mechanism may be used to control the
relative tension of the straps, including, without limitations hydraulic or
pneumatic devices.” ‘267 prov. appl., para. [0030].
One skilled in the art would understand, based on the ‘267 provisional
application’s disclosure of the detailed hand crank embodiment and the
description to replace the hand crank with a hydraulic device, that Appellant
had possession of an invention in which a hydraulic device, in place of the
hand crank assembly, is coupled to the foot support assembly and coupled to
the straps such that movement of the hydraulic device would control the
relative tension of the straps and thus the pressure exerted on the lumbar
discs of the patient. Further, as evidenced by Kirkland, the knowledge of
one skilled in the art was such that a skilled artisan would recognize that a
“hydraulic device” refers to a hydraulic actuator which uses a piston and a
hydraulic energy source in fluid communication with the actuator through
hydraulic lines. Kirkland, p. 1, second col., ll. 36-48 (describing a hydraulic
jack comprising a hydraulic cylinder 2, a reciprocable fluid operated piston 3
in the cylinder, a hydraulic pump 4, valve means 5 for controlling operation
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of the piston, and a reservoir 6 in communication with the pump and
cylinder). As such, the Examiner has failed to adequately explain how the
‘267 provisional application “is silent to all of the claimed structural
elements and configuration of the hydraulic mechanism that breathes life
and meaning into the claims.” Ans. 7. Accordingly, the Examiner has not
met the Office’s initial burden of presenting sufficient evidence or reasoning
to rebut the presumption that Appellant’s description as filed in the ‘267
provisional application is adequate.
We limit our analysis to claim 1, as exemplary, in light of our
determination that Appellant has failed to properly claim the benefit of the
‘267 provisional application under 35 U.S.C. § 119(e).
CONCLUSIONS
The present application does not contain a proper claim to benefit of
the ‘267 provisional application under 35 U.S.C. § 119(e).
The Examiner failed to meet the Office’s initial burden of presenting
sufficient evidence or reasoning to rebut the presumption that Appellant’s
description as filed in the ‘267 provisional application is adequate support
for the claimed structural elements and configuration of the hydraulic
mechanism of claim 1.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-11 and
13-21.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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