Ex Parte Fadem

Patent Trial and Appeal Board

Dec 29, 2017

13229089 (P.T.A.B. Dec. 29, 2017)

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.
13/229,089 09/09/2011 Kalford C. Fadem 0103701.0569440 8851
26874 7590 01/03/2018
FROST RROWN TODD T T C
EXAMINER
3300 Great American Tower BERHANU, ETSUB D
301 East Fourth Street
CINCINNATI, OH 45202 ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
01/03/2018 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):
patents @ fbtlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KALFORD C. FADEM
Appeal 2017-000501
Application 13/229,089
Technology Center 3700
Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JASON M. REPKO, Administrative Patent Judges.
REPKO, Administrative Patent Judge.
Opinion Concurring filed by JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4, 5, 7, 8, 10-15, and 19-22. See App. Br. 8.2
1 Appellant identifies the real party in interest as Neuronetix Solutions, LLC
App. Br. 3.
2 Throughout this opinion, we refer to (1) the Final Rejection (“Final Act.”)
mailed October 5, 2015, (2) the Appeal Brief (“App. Br.”) filed March 16,
2016, (3) the Examiner’s Answer (“Ans.”) mailed August 11, 2016, and (4)
the Reply Brief (“Reply Br.”) filed October 11, 2016.
Appeal 2017-000501
Application 13/229,089
Claims 3, 6, 9, 16—18, and 23 have been canceled. See id. at 15—18. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.
THE INVENTION
Appellant’s invention is an evoked-response-potential (ERP) testing
apparatus. Abstract. The testing apparatus provides stimuli to the test
subject, and a headset’s electrodes detect ERPs associated with the stimuli.
Spec. 12. For example, the stimuli can be auditory, visual, or tactile. Id.
The apparatus measures the electrodes’ real-time, skin-contact impedance
during the test’s execution. Id. 1 87. The invention detects and analyzes
artifacts that may cause issues with the test protocol or software. Id. The
apparatus’s headset uses six channels for communicating information.
Id. 1132. To generate a set of impedance values from the measurements,
the invention uses digital signal processing (DSP) algorithms for the six
channels. Id. The DSP algorithms can be implemented at the channel
frequencies of 27.7 Hz and 13.5 Hz. See id. 132^41.
Claim 1 is reproduced below with our emphasis:
1. An apparatus comprising:
(a) a headset comprising a plurality of electrodes operable
to measure evoked response potential (ERP) readings, wherein
the headset is configured to be positionable on a test subject;
(b) a control unit in communication with the headset,
wherein the control unit is configured to store an ERP test
protocol, wherein the control unit is configured to administer an
ERP test through the headset, wherein the control unit is further
configured to administer an impedance test, wherein the
impedance test is operable to measure the real-time impedance
of the electrodes of the headset during execution of an ERP test
on the test subject, wherein the control unit is operable to process
the impedance of the electrodes; and
(c) a signal amplifier; wherein the control unit and headset
are configured to:
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(i) execute the ERP test through a first set of channels and
receive ERP readings at a first frequency,
(ii) execute the impedance test through the same
first set of channels, in band with the executed ERP test,
at the first frequency,
wherein the impedance test comprises instructions that
when executed cause the control unit and headset to:
(A) obtain a baseline impedance
measurement,
(B) generate a baseline impedance value
from the baseline impedance measurement,
(C) obtain a set of active impedance
measurements during each null-action duration by:
(1) enabling an active electrode tone
and a reference electrode tone,
(2) resetting the signal amplifier,
(3) capturing a set of samples from the
first set of channels,
(4) applying a DSP algorithm to the set
of samples, and
(5) disabling the active electrode tone
and the reference electrode tone, and
(D) generate a set of impedance values based
upon the set of active impedance measurements,
(iii) automatically pause the ERP test in response to
an impedance value of the set of impedance values, the
impedance value exceeding an initial impedance
measurement, and
(iv) display information identifying an electrode
whose measured impedance exceeds the initial impedance
measurement; and
wherein generating a set of impedance values based upon the set
of active impedance measurements comprises instructions that
when executed cause the control unit and headset to:
(A) compute impedance for an active electrode
using the equation Z#[ohms] = 2600 ~ 2) where Z
is an impedance value, V#zis a set of voltage values from
the set of active impedance measurements, and V # b is a
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Application 13/229,089
set of voltage values from a baseline impedance
measurement, and
(B) compute impedance for a reference electrode
using the equation Zref[ohms] = 2600 (—^ — 2),
where Z is an impedance value, Vrz is a reference voltage
value from the set of active impedance measurements,
and Vrb is a reference voltage value from a baseline
impedance measurement.
THE REJECTIONS
The Examiner relies on the following as evidence:
Levendowski
Eder
Kopke
Fadem
Matthews Jr.
Causevic
Bibian
US 2002/0183644 A1
US 2006/0089561 A1
US 2007/0123795 A1
US 2007 /0191727 A1
US 2011/0015538 A1
US 2011/0144520 A1
US 8,538,512 B1
Dec. 5, 2002
Apr. 27, 2006
May 31,2007
Aug. 16, 2007
Jan. 20, 2011
June 16, 2011
Sept. 17,2013
Claims 1, 2, 4, 5, 7, 8, 10, 12—15 and 19-22 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Fadem, Causevic, Bibian,
Levendowski, Matthews Jr., and Eder. Final Act. 2—8.
Claims 1, 2, 4, 5, 7, 8, 10-15 and 19—22 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Fadem, Kopke, Bibian, Levendowski,
Matthews Jr., and Eder. Final Act. 8—13.
THE REJECTION OVER FADEM, CAUSEVIC, BIBIAN,
LEVENDOWSKI, MATTHEWS JR., AND EDER
The Examiner’s Rejection
The Examiner cites Fadem, Causevic, Bibian, Levendowski,
Matthews Jr., and Eder in concluding that the subject matter in claim 1
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would have been obvious. See Final Act. 2—8. Regarding the impedance
calculation, the Examiner concludes that “[wjithout evidence of criticality or
unexpected results, it would be an obvious design choice to a person of
ordinary skill in the art to modify the impedance calculating algorithms of’
the six references to include the recited equations and algorithms. Id. at 8;
Ans. 8. According to the Examiner, Appellant has not disclosed that the
impedance calculation “provides an advantage, is used for a particular
purpose, or solves a stated problem,” and the invention would have
performed equally well compared to the “calculating means” in the six-
reference combination. Final Act. 8; Ans. 8.
The Examiner further concludes that one of ordinary skill in the art
could have substituted the “impedance calculating means” of the six-
reference combination for the invention’s “impedance calculating means”
because doing so would have been a simple substitution and would have
produced predictable results. Final Act. 8; Ans. 8—9.
Lastly, in Answer’s the “Response to Argument” section, the
Examiner states that “[wjithout any details or evidence or arguments as to
why the equations of the recited claims provide some sort of advantage or
unexpected result,” the equations are an “alternate equivalent means” for
determining impedance. Ans. 14.
Appellant’s Contentions
Appellant argues that the Examiner has not established a prima face
case of obviousness. App. Br. 8—10. According to Appellant, the cited
references do not teach any algorithms or equations for calculating
impedance. Id. In Appellant’s view, the Examiner’s obviousness rejections
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are merely conclusions and lack some articulated reasoning with some
rational underpinning. Id. Appellant explains that evidence of criticality or
unexpected results is an appropriate rebuttal to a prima facie case of
obviousness, but the Examiner has not presented such a case here to shift the
burden to Appellant. Reply Br. 2 (citing MPEP § 2144.05 II. A. (9th ed.
Rev. 07.2015, Nov. 2015)).
Issue
Has the Examiner met the initial burden of establishing a prima facie
case of obviousness?
Analysis
The Examiner bears the initial burden of establishing a prima facie
case of obviousness. In re Deuel, 51 F.3d 1552, 1557 (Fed. Cir. 1995).
“Only if this burden is met does the burden of coming forward with rebuttal
argument or evidence shift to” Appellant. Id. Here, the Examiner’s
reasoning is based, in part, on Appellant’s failure to first produce evidence
of criticality and other objective evidence of non-obviousness. See
Final Act. 8—9; Ans. 8. To be sure, Examiners are instructed that
“Applicants can rebut a prima facie case of obviousness by showing the
criticality of the change.” MPEP § 2144.05 II. A. But here, we agree with
Appellant that the Examiner has not made a prima facie case of obviousness
in the first instance. See App. Br. 8; Reply Br. 2. Accordingly, the burden
of coming forward with rebuttal argument or evidence did not shift to
Appellant. Deuel, 51 F.3d at 1557. In this way, the Examiner erred by
requiring Appellant to first prove patentability by showing criticality. See In
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re Stepan, 868 F.3d 1342, 1348 (Fed. Cir. 2017) (concluding that it was
improper to require a showing of the criticality absent any prima facie case
of obviousness).
We now specifically explain the deficiencies in the Examiner’s prima
facie case. On this issue, we agree with Appellant that the Examiner has not
shown that any of the six references teach or suggest the recited algorithms
or equations for calculating impedance. App. Br. 8—10. Notably, the
Examiner does not expressly find that any particular reference among the six
teach the recited impedance calculations. Final Act. 8; see also Ans. 8.
Rather, the Examiner refers to an “impedance value calculating means of
Fadem ’727 further in view of Causevic et al. ’520 further in view of Bibian
et al. ’512 further in view of Levendowski et al. ’644 further in view of
Matthews, Jr. ’538 further in view of Eder et al. ’561.” Final Act. 8. The
Examiner, however, does find that Fadem teaches administering an
impedance test and has a control unit to “process the impedance of the
electrodes.” Id. at 2 (citing Fadem Figs. 1, 3, 5,11313) (emphasis added).
So, as best understood, the Examiner relies upon Fadem for at least some
impedance calculation involved in this process. See Final Act. 3.
Indeed, Fadem discloses an impedance test. Fadem 1131. In
particular, Fadem places a headset on an infant subject’s head. Id.', see also
id. Figs. 1, 3 (showing the headset). The headset is attached to a computer.
Id. 1130; see also id. Fig. 5. Fadem’s headset initiates a self-test to verify
good reception of the EEG signal4 from the subject. Id. 1131. This self-test
3 Although the Examiner cites to “section [0131]” on page 11, we
understand the Examiner to refer to Fadem’s paragraph 131.
4 EEG signals refer to electroencephalogram signals. Fadem 14.
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uses an impedance test in one example. Id.; see also id. Fig. 8 (block 119).
If the self-test fails, the clinician checks the electrodes or connections.
Id. 1131; id. Fig. 8 (block 120). If the self-test succeeds, the system
proceeds to capture data, stimulate the subject, and analyze ERPs. Id. 1132;
id. Fig. 8 (blocks 121-129).
Even assuming that Fadem’s impedance test uses some algorithms
and equations, the Examiner has not identified what those equations or
algorithms are. See Final Act. 2—3, 8. Accordingly, the Examiner’s
discussion of the performance of the prior art’s equations and algorithms
compared to those recited is speculative and unsupported by the record. See
Ans. 8. Essentially, the Examiner presents conclusory statements about
unidentified processes. See id. Appellant contends, and we agree, that such
statements alone cannot sustain an obviousness rejection. App. Br. 8
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted in KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)).
Next, we discuss each of the Examiner’s conclusions and why each
fails to contribute to a prima facie case of obviousness.
First, the Examiner concludes that Appellant’s DSP algorithms and
equations are a design choice. Final Act. 3. The Examiner has not identified
which DSP algorithms or equations were used in the six-reference
combination. Id. at 8. Thus, we see no basis for the Examiner’s conclusion
that Appellant’s invention would perform “equally well.” Id. The
Examiner’s conclusory reasoning here is insufficient to shift the burden to
Appellant. See Cutsforth, Inc. v. MotivePower, Inc., 636 Fed. Appx. 575,
578 (Fed. Cir. 2016) (non-precedential) (“Merely stating that a particular
placement of an element is a design choice does not make it obvious.”).
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Moreover, the Examiner explains that Appellant’s algorithms and equations
are not “used for a particular purpose” or solve a stated problem. Final Act.
8. But this statement contradicts the claim language. Here, claim 1
expressly recites that system uses the calculated impedance values to pause
the ERP test automatically. Accordingly, we agree that the Examiner’s
design-choice rationale is unsupported on this record. App. Br. 8.
Second, the Examiner concludes that one of ordinary skill in the art
could have substituted the “impedance calculating means” of the six-
reference combination for the invention’s “impedance calculating means.”
Final Act. 8; Ans. 8—9. It is well established that substituting one known
element for another according to known methods is likely to be obvious
when it yields nothing more than predicable results. KSR, 550 U.S. at 401.
Yet, we agree that the Examiner’s rationale lacks a finding that the
substituted equations and algorithms along with their functions were known
in the art. App. Br. 10. Rather, the Examiner merely concludes that a
substitution would have been obvious and the results predictable.
Final Act. 8. We, therefore, agree that the Examiner’s unsupported
conclusion here cannot support the obviousness rejection. App. Br. 10.
Third, in the Answer’s “Response to Argument” section, the
Examiner discusses an “alternate equivalent means” for determining
impedance. Ans. 14. To rely on such a rationale, equivalency cannot be
based solely on the fact that the components are functional or mechanical
equivalents. In re Ruff, 256 F.2d 590, 599 (CCPA 1958); see also MPEP
§ 2144.06 (instructing Examiners that “the equivalency must be recognized
in the prior art”). Apart from the showing the same result, the Examiner has
not provided sufficient details of how Fadem determines impedance to
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assess equivalency. See Reply Br. 2 (discussing that the Examiner has not
shown that the art teaches the algorithms and equations). Even if Fadem’s
undisclosed impedance calculations produce the same result as the recited
algorithms and formulas, such a finding is insufficient to establish a prima
facie case of obviousness here. Accord id. (stating that “no prima facie case
of obviousness has been made.”)
Lastly, we note that the Examiner uses the phrase “alternate
equivalent means.” Ans. 14. To the extent that the Examiner regards the
limitation-at-issue as invoking pre-AIA5 35 U.S.C. § 112, sixth paragraph,
the Examiner also has not made a prima facie case of equivalence in this
regard. See id. As discussed in detail above, the Examiner has not identified
how Fadem’s impedance test is carried out. See App. Br. 8—10; see also
Reply Br. 2. Therefore, the Examiner lacks a sufficient basis for concluding
that Fadem or the other five references are an equivalent means or otherwise
would have been obvious.
We need not reach Appellant’s remaining arguments (App. Br. 10-11;
Reply Br. 2—3) because the arguments against the Examiner’s prima facie
case (App. Br. 8—10; Reply Br. 2) are persuasive.
Accordingly, Appellant has persuaded us of error in the rejection of
(1) independent claim 1, (2) independent claim 19, which recites
5 The application was filed before the effective date of the Leahy-Smith
America Invents Act (AIA), Pub. L. No. 112-29, § 3, 125 Stat. 284, 285—93
(2011), and it is governed by the previous version of § 112.
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commensurate limitations, and (3) dependent claims 2, 4, 5, 7, 8, 10, 12—15
and 20—22 for similar reasons.
THE REJECTION OVER FADEM, KOPKE, BIBIAN, LEVENDOWSKI,
MATTHEWS JR., AND EDER
In the alternative, the Examiner rejects independent claims 1 and 19 as
being obvious over Fadem, Kopke, Bibian, Levendowski, Matthews Jr., and
Eder. Final Act. 8—13. The Examiner also rejects dependent claim 11 under
this set of references. Id. at 9. The additional reference, Kopke, is not relied
upon to teach the impedance calculations, and thus, Kopke does not cure the
deficiency discussed above. See id. at 8—13. Rather, the Examiner presents
a rationale similar to the one discussed above. Compare id. at 8 with
id. at 13. Accordingly, we do not sustain the Examiner’s rejection under this
combination of references for the same reasons discussed above in
connection with Fadem, Causevic, Bibian, Levendowski, Matthews Jr., and
Eder.
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DECISION
We reverse the Examiner’s rejection of claims 1, 2, 4, 5, 7, 8, 10-15,
and 19-22.
REVERSED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KALFORD C. FADEM
Appeal 2017-000501
Application 13/229,089
Technology Center 3700
JEFFERY, Administrative Patent Judge, CONCURRING:
I join the majority in reversing the Examiner’s obviousness rejections,
but emphasize that this reversal is based solely on procedural grounds: the
Examiner simply did not make a prima facie case. Notably, this procedural
defect centers on the impedance computations recited in the last two clauses
of claim 1, and the Examiner’s failure to substantiate on this record that
these particular computations using the recited equations would have been
obvious to ordinarily skilled artisans.
The prima facie case is a procedural tool of patent examination,
allocating the respective burdens between the Examiner and an applicant.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). First, the Examiner
bears the initial burden of presenting a prima facie case of unpatentability.
Id. (citing In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984)). If the
Examiner meets that burden, the burden then shifts to the Applicant to rebut
the prima facie case with evidence or argument. Oetiker, 977 F.2d at 1445.
Then, patentability is determined on the totality of the record by a
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preponderance of evidence with due consideration of persuasiveness of
argument. Id.
Here, the majority finds that the Examiner did not satisfy the initial
burden of presenting a prima facie case of obviousness, and, consequently,
the burden never shifted to Appellant to rebut that case. See Maj. Op. 6.
But had the Examiner established the level of ordinary skill in the art on this
record, and found that the recited impedance computations would have been
within the level of ordinary skill in the art in light of Fadem’s impedance
determination in paragraph 131, the burden would have then shifted to
Appellant to rebut those findings. Even if the Examiner’s prima facie case
in light of these findings could somehow be considered weak in this
instance, it would still be incumbent upon Appellant to rebut this prima facie
case—a rebuttal that would have then required the Examiner to consider all
evidence anew. See Piasecki, 745 F.2d at 1472.
But that never happened here: the Examiner never made it past the
first hurdle to require such a rebuttal. That said, the Examiner’s reliance on
Fadem’s impedance test in paragraph 131 (Final Act. 2; Ans. 2) has merit, at
least to the extent that ordinarily skilled artisans would understand that this
test would involve some form of impedance computation, albeit undisclosed.
Indeed, the majority recognizes this computation as at least a possibility.
See Maj. Op. 8 (“Even assuming that Fadem’s impedance test uses some
algorithms and equations, the Examiner has not identified what those
equations or algorithms are.”).
But the fact that Fadem does not disclose the recited equations is not
dispositive of obviousness. See Nike, Inc. v. Adidas AG, 812 F.3d 1326,
1335 (Fed. Cir. 2016) (“A claimed invention may be obvious even when the
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prior art does not teach each claim limitation, so long as the record contains
some reason why one of skill in the art would modify the prior art to obtain
the claimed invention.”).
Rather, the critical question is whether it would have been obvious to
ordinarily skilled artisans to compute impedance using the particular
equations in claim 1 given Fadem’s undisclosed impedance computation
method. I emphasize “ordinarily skilled artisans” here, for a key aspect of
any obviousness determination, including the one at issue here, is whether
the claimed invention would have been obvious to ordinarily skilled artisans
when the invention was made. Graham v. John Deere Co., 383 U.S. 1, 17
(1966).
This determination is not made with respect to judges, laypersons,
those skilled in remote arts, or even geniuses in the art, but rather those with
ordinary skill in the art. Custom Accessories, Inc. v. Jeffrey-Allan
Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). Custom Accessories
articulates five factors that may be considered in determining the level of
ordinary skill, namely (1) type of problems encountered in the art, (2) prior
art solutions to those problems, (3) rapidity with which innovations are
made, (4) sophistication of the technology, and (5) educational level of
active workers in the field. Id. But these factors are by no means required
in every case; indeed, only one factor may predominate. See id. at 962—63.
Even where, as here, the Examiner does not articulate the level of
ordinary skill in the art expressly, that alone is not dispositive of error where
the level of ordinary skill is evidenced by the prior art. See In re GPAC Inc.,
57 F.3d 1573, 1579 (Fed. Cir. 1995) (noting that although the Board did not
make a specific finding on skill level, it nevertheless concluded that the level
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of ordinary skill in the art was best determined by appeal to the references of
record—an approach that offered “valuable insight in considering the
Custom Accessories factors”).
Here, the prior art, including Fadem, reflects a relatively high level of
skill in the art, namely at least that level of skill possessed by an electrical
engineer with several years of related industry experience. Cf. In re Mouttet,
686 F.3d 1322, 1333 (Fed. Cir. 2012) (“The Board properly found that an
electrical engineer with several years of related industry experience would
indeed have recognized that Falk’s arithmetic processor could have been
combined with Das’s wired crossbar array to predictably yield Mouttet’s
claimed computing device.”) (emphasis added).
Turning to the equations themselves, Appellant’s Specification notes
that once various voltage responses are calculated, the impedance of the
active and reference electrodes may be calculated using the particular
expressions recited in claim 1. See Spec. Tflf 140-41. According to
Appellant, these equations are used as an example of calculating a set of
impedance values and a reference impedance value. See App. Br. 7 (noting
this example in connection with the same equations recited in independent
claim 19). Notably, paragraph 144 of Appellant’s Specification explains
that, among other things, the examples, ratios, steps, and the like discussed
“above” are illustrative and not required. That is, Appellant characterizes
the recited impedance computations as exemplary (App. Br. 7), and the
recited equations in paragraphs 140 and 141 are just three paragraphs away
from the exemplary and permissive language used in paragraph 144. That
paragraphs 140 and 141 of the Specification merely state that active and
reference electrode impedance may be calculated using the recited equations
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as the Examiner indicates (Ans. 14) is telling in this regard. These facts,
while not dispositive, nevertheless raise a legitimate question whether the
recited impedance computations would have been an obvious variation
within the level of ordinary skill in the art—an electrical engineer with
several years of related industry experience.
To the extent that computing impedance using the recited equations
would have been uniquely challenging or otherwise beyond the level of
ordinarily skilled artisans to render the claimed invention non-obvious over
the prior art, there is simply no evidence on this record to substantiate such a
theory. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007). To the contrary, the record suggests that these
particular impedance computations are merely exemplary: a fact tending to
suggest that they would have been within the level of ordinary skill in the
art.
But no such findings were made on this record. Had such findings
been made, the Examiner would have established a prima facie case of
obviousness that would have shifted the burden to Appellant to rebut those
findings with evidence or argument. See Oetiker, 977 F.2d at 1445. This
would have added significant value and clarity to this record, for it would
have then been incumbent upon Appellant to explain why the recited
impedance computations would have been beyond the level of ordinarily
skilled artisans and, therefore, not an obvious variation over Fadem’s
impedance computation. Preferably, such an explanation would be bolstered
by supporting evidence, perhaps in the form of an expert declaration.
Instead, Appellant’s arguments in connection with these
computations, which are only two paragraphs in the Appeal Brief and Reply
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Brief, respectively, are directed solely to the Examiner’s failure to make a
prima facie case in the first instance. See App. Br. 9—10; Reply Br. 2. This
two-paragraph procedural argument, which the majority finds persuasive,
avoids explaining why the recited impedance computations are non-obvious
over impedance computations in the prior art, including Fadem, instead
alleging error purely on a procedural technicality. See App. Br. 9 (“The
Office did not provide any citations or mappings between the above
calculations and the prior art of record. Because of these deficiencies, the
Office has failed to make a prima facie case of obviousness . . . .”).
On this record, I agree with the majority that the Examiner failed to
make a prima facie case of obviousness as articulated in the Final Rejection
and the Answer. But had the Examiner established the level of ordinary skill
in the art on this record, and found that the recited impedance computations
would have been within the level of ordinary skill in the art in light of
Fadem’s impedance determination in paragraph 131, the burden would have
then shifted to Appellant to rebut those findings with evidence or argument.
6