Ex Parte Haugland et al

Board of Patent Appeals and Interferences

Mar 13, 2009

10465798 (B.P.A.I. Mar. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MORTEN HAUGLAND and MORTEN HANSEN
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Appeal 2008-6210
Application 10/465,798
Technology Center 3700
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Decided1: March 13, 2009
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Before DONALD E. ADAMS, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-10, 13, and 16-
19. Pending “[c]laim 15 stands objected to as being dependent upon a
rejected base claim” and is not before us on appeal (Ans. 5). We have
jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-6210
Application 10/465,798

STATEMENT OF THE CASE
The claims are directed to a transmitter apparatus (claims 1-10), an
electrical stimulation unit (claims 13 and 15), and a method of producing
nerve stimulation (claims 16-19). Claims 1, 3, and 18 are illustrative:
1. A transmitter apparatus, comprising:
a controller;
a transmitter;
a wire connecting the controller to the transmitter; and
a mounting for fixing the transmitter to a surface, the mounting
comprising a mounting pad and a transmitter housing, the mounting pad
having a face for applying to the surface and an opposite face and being
provided with a first mating component of a rotatable connection and the
transmitter housing having a second cooperating mating component of the
rotatable connection, whereby the two components are mateable to mount
the transmitter housing rotatably on the opposite face of the mounting pad;
wherein a housing rotatable relative to the mounting pad is provided
while the two components are mated; and
wherein the rotatable connection is attachable and detachable by the
user.

3. A transmitter apparatus as claimed in Claim 2, wherein the
transmitting antenna is a transmitting coil.

18. [A transmitter apparatus as claimed in Claim 1, wherein the
transmitter housing is in the form of a dish and the mounting pad is in the
form of a plate, such that when the two components are mated the mounting
pad sits at least substantially within the transmitter housing], wherein the
electrical nerve stimulator is implanted.

The Examiner relies on the following prior art reference to show
unpatentability:
Katoh US 2001/0053674 A1 Dec. 20, 2001

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Application 10/465,798

The rejections presented by the Examiner are as follows:
1. Claim 18 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
2. Claims 1, 2, 7-10, 13, 16, and 17 stand rejected under 35 U.S.C. § 102(b)
as anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious
over Katoh.
3. Claims 3-6 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Katoh.
We affirm the rejection under 35 U.S.C. § 112, second paragraph. We
reverse the other grounds of rejection.

Definiteness:
ISSUE

Does the limitation “electrical nerve stimulator”, as it appears in claim
18, have antecedent support?

FINDINGS OF FACT
FF 1. The Examiner finds that there is insufficient antecedent basis for the
limitation “electrical nerve stimulator” as it appears in claim 18.

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Application 10/465,798

PRINCIPLES OF LAW
The legal standard for indefiniteness under 35 U.S.C § 112, second
paragraph, is whether a claim reasonably apprises those of skill in the art of
its scope. See Amgen Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d
1200, 1217 (Fed. Cir. 1991).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(“Any arguments or authorities not included in the brief or a reply brief ...
will be refused consideration by the Board, unless good cause is shown.”).

ANALYSIS
Appellants concede that the limitation “electrical nerve stimulator”, as
it appears in claim 18 lacks antecedent support. In this regard, Appellants
contend that “claim 18 should be dependent on claim 17, rather than claim
7” (Reply Br. 12).

CONCLUSION OF LAW
The limitation “electrical nerve stimulator”, as it appears in claim 18,
lacks antecedent support. The rejection of claim 18 under 35 U.S.C. § 112,
second paragraph, as being indefinite is affirmed.

2 The Reply Brief is not paginated. Accordingly, we refer to the pages of the
Reply Brief as if it were numbered consecutively starting with the first page.
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Anticipation and Obviousness:
PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
“In determining whether obviousness is established by combining the
teachings of the prior art, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations
omitted). “[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art. Although common sense directs one to look with
care at a patent application that claims as innovation the combination of two
known devices according to their established functions, it can be important
to identify a reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the claimed new
invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, ___, 127 S.Ct.
1727, 1741 (2007).
If proposed modification would render the prior art invention being
modified unsatisfactory for its intended purpose, then there is no suggestion
or motivation to make the proposed modification. In re Fritch, 972 F.2d
1260, 1266 n.12 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984).

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Application 10/465,798

ISSUE
Does Katoh teach a rotatable connection that is attachable and
detachable by the user and if not would such a connection have been prima
facie obvious to a person of ordinary skill in the art?

FINDINGS OF FACT
FF 2. The Examiner finds that Katoh “discloses a transmitter apparatus
with a controller, transmitter, wire, mounting and housing and thus meets the
limitations of the claims” (Ans. 6).
FF 3. The Examiner finds that “Katoh utilized a rotatable connection as
claimed by the Applicant [sic], Kotoh is therefore capable of being attached
and detached by [the] user” (Ans. 4). In the alternative, the Examiner finds
that “Katoh discloses the claimed invention except for [the] rotatable
connection being attachable and detachable by the user” (id.).
FF 4. The Examiner finds that “Katoh is capable of being detached and
reattached since nothing prevents the user from removing and later reaffixes
[sic] the removed piece by some adhesive means” (Ans. 6).

ANALYSIS
Based on the foregoing factual findings (FF 2-4) the Examiner
concludes that Katoh anticipates claim 1 (Ans. 4). In the alternative, the
Examiner finds that
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to make the connection
attachable and detachable, since it has been held that
constructing a formerly integral structure in various elements
involves only routine skill in the art. Nerwin v. Erlicnman [sic,
Erlichman], 168 USPQ 177, 179. (see MPEP 2144.04).
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(Id.)
Appellants contend that Katoh “fails to disclose, teach or suggest the
claimed transmitter apparatus wherein the rotatable connection is attachable
and detachable by the user, as recited in independent claim 1” (App. Br. 10).
Appellants contend that “a full reading of Katoh and a conventional
understanding of the art would have provided the understanding that
portable telephones are not designed to be destructible or reconfigurable by a
user” (App. Br. 11-12). Further, Appellants contend that “[e]ven if the hinge
A disclosed in Katoh were to correspond to Appellants’ rotatable connection
. . . the hinge of Katoh is not attachable or detachable by a user” (App. Br.
11).
The Examiner disagrees. According to the Examiner, “Katoh is
capable of being detached and reattached since nothing prevents the user
from removing and later reaffixes [sic] the removed piece by some adhesive
means” (FF 4). Appellants contend that the Examiner’s response “employs
circular logic and, effectively, acknowledges that a user would not be able to
disassemble the connection of Katoh and then properly reassemble it”
(Reply Br. 2). In this regard, Appellants contend that “if one broke the hinge
of Katoh to separate the parts and then used adhesive to reaffix them, one
would not expect to maintain the rotatability of the original hinge, so the
resulting connection by adhesive would not be rotatable” (Reply Br. 3).
We agree. If a proposed modification would render the prior art
invention being modified unsatisfactory for its intended purpose, then there
is no suggestion or motivation to make the proposed modification. In re
Fritch, 972 F.2d at 1266 n.12. See also KSR, 550 U.S. 398, ___, 127 S.Ct.
at 1741.
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CONCLUSION OF LAW
Katoh fails to teach a rotatable connection that is attachable and
detachable by the user and the Examiner has not shown that such an
arrangement would have been obvious to a person of ordinary skill in this
art.
The rejection of claims 1, 2, 7-10, 13, 16, and 17 under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as
obvious over Katoh is reversed.
For the same reasons, the rejection of claims 3-6 and 19 under 35
U.S.C § 103(a) as unpatentable over Katoh is reversed.

TIME PERIOD FOR RESPONSE
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-IN-PART

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