Ex Parte Kiderman

Board of Patent Appeals and Interferences

Jun 5, 2012

11181019 (B.P.A.I. Jun. 5, 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.
11/181,019 07/13/2005 Alexander D. Kiderman NeuroKinetics-0304 4188
36787 7590 06/05/2012
BLYNN L. SHIDELER
THE BLK LAW GROUP
3500 BROKKTREE ROAD
SUITE 200
WEXFORD, PA 15090
EXAMINER
SZMAL, BRIAN SCOTT
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
06/05/2012 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 ALEXANDER D. KIDERMAN
__________

Appeal 2011-003334
Application 11/181,019
Technology Center 3700
__________

Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a neuro-otologic, neuro-opthalmologic testing device and
an integrated dynamic visual acuity testing platform. The Patent Examiner
rejected the claims for obviousness. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.
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Application 11/181,019

2
STATEMENT OF THE CASE
The Specification explains that “[h]umans use three basic systems,
namely visual, vestibular, and proprioceptive, to obtain a sense of balance in
daily life. The three systems interact to maintain posture and impart a
conscious sense of orientation in space.” (Spec. 1, ¶ [0003].) “A defect in
one of these systems, or incongruous inputs amongst the systems can be
compensated by a patient through reliance on the other two systems,” but “a
defect can result in a serious subjective feeling of disequilibrium in the
affected patient until compensation for the deficit occurs.” (Id.)
According to the Specification, “[t]here is a growing need, both in the
US and worldwide, to improve the health care provided for people who
suffer from hearing, balance, and vestibular function disorders.” (Id. at 5,
¶ [0010].) Thus, “[t]here is a need in the industry to provide a compact
neuro-otologic testing device producing rapid response or fast cycling (e.g.
faster than 75 mille-seconds) shapes and images and in which the motion of
the display may be easily matched to the motion of the patient.” (Id. at 6,
¶ [0013].)
Claims 1, 2, and 4-18 are on appeal. Claims 1 and 12 are
representative and read as follows:
1. A neuro-otologic, neuro-ophthalmologic testing device comprising:
a housing having a laser opening therein;
an image producing laser mounted within the housing adapted to
project through the laser opening, wherein the laser is configured to produce
non-circular images; and
a servo controlled galvanometric based XY interface controlling the
laser projection through the opening to form an image for neuro-otologic,
neuro-ophthalmologic testing, wherein the servo controlled XY interface can
drive the laser image at velocities in excess of 12000 degrees/second.

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Application 11/181,019

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12. An integrated Dynamic Visual Acuity Testing Platform comprising:
a mechanism for providing passive movement to the patient during
testing; and
a laser based image producing testing device including a housing
having a laser opening therein and mounted on the mechanism for providing
passive movement to the patient, an image producing laser mounted within
the housing adapted to project through the laser opening, and a servo
controlled galvanometric based XY interface controlling the laser projection
through the opening to form the image for testing, wherein the image is an
non-circular optotype sufficient for dynamic visual acuity testing.

The Examiner rejected the claims as follows:
claims 1, 2, 4-9, 11-13, and 15-18 under 35 U.S.C. § 103(a) as
unpatentable over Ledley
1
in view of Applicant‟s admitted use of a
Cambridge Technologies‟ servo controlled galvanometric based XY
interface; and
claims 10 and 14 under 35 U.S.C. § 103(a) as unpatentable over
Ledley in view of Applicant‟s admitted use of a Cambridge
Technologies‟ servo controlled galvanometric based XY interface and
Naganuma.
2

OBVIOUSNESS
The Issues
The Examiner‟s position is that Ledley described a testing device
similar to Appellant‟s, but for the servo controlled galvanometric based XY
interface. (Ans. 4.) The Examiner found that Appellant‟s own disclosure
using a Cambridge Technologies‟ servo controlled galvanometric based XY

1
Robert S. Ledley et al., US 4,474,186, issued Oct. 2, 1984.
2
Hideaki Naganuma, US 2004/0189079 A1, filed Feb. 5, 2004.
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Application 11/181,019

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interface rendered it obvious “to modify the means of Ledley et al to include
the use of a servo controlled XY interface, as per the Applicant's disclosure,
since it would provide a means of controlling the laser to produce an image
for testing the subject's eyesight.” (Id. at 5.)
Appellant contends that
the applied prior art, even if combined in the manner suggested
by the examiner, fails to teach or suggest a neuro-otologic,
neuro-ophthalmologic testing device comprising an image
producing laser mounted within the housing that “is configured
to produce non-circular images” nor a servo controlled XY
interface configured to “drive the laser image at velocities in
excess of 12000 degrees/second[.]”

(App. Br. 11-12.) First, according to Appellant, Ledley‟s light spot source, a
laser, produced “a circular image . . . which may of course move.” (Id. at
12.) “What the examiner cannot find, because it is not there, is any teaching
or suggestion of using the light spot or laser 12 to form non-circular
optotypes in which the „laser‟ formed non-circular optotypes are used for the
testing procedures.” (Id.) Second, Appellant contends that
The examiners statements are not the proper test of
patentability. First, for clarity the proper test here is what would
have been obvious to one of ordinary skill in the art at the time
the present invention was made - not whether one of ordinary
skill in the art could physically build the device.

(Id. at 14.)
To Appellant‟s first point, the Examiner responds that
While the stationary laser stimulus in Ledley et al could be
circular, Ledley et al fail to disclose the actual shape of the
stationary laser point. Furthermore, a moving laser configured
to produce a “pre-programmed pattern”, as discussed in Ledley
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Application 11/181,019

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et al, would be clearly capable of forming a “non-circular
image”, such as a line.

(Ans. 6-7.) Appellant replies that Ledley‟s laser forms a light spot, i.e., a
circular test stimulus, which may move in pre-programmed patterns, but
Ledley‟s laser itself is not configured to produce non-circular images.
(Reply Br. 1-3.)
To Appellant‟s second point, that the rejection relied on hindsight, the
Examiner responds: “the Examiner would like to point out the Applicant's
admitted prior art of Cambridge Technologies' servo controlled
galvanometric based XY interface. The admitted prior art discloses the
claimed servo controlled interface and the claimed velocities.” (Id. at 7.)
Thus, “[w]hile the Examiner has relied upon the Applicant's admitted prior
art of the Cambridge Technologies‟ device, the Examiner would like to
respectfully point out the Applicant has utilized an off-the-shelf component,
and clearly disclosed it as such.” (Id. at 8.)

Discussion
Appellant‟s argument as to the first issue is persuasive. The evidence
shows that Ledley‟s light source was configured to produce a spot rather
than a non-circular image. Ledley disclosed:
relay panel 20 controls the usage of a light spot source 12 (such
as a laser) which operates in conjunction with a shutter 66 and
x-y scanning mirrors 14 to provide test stimuli comprising a
light spot which moves in accordance with a pre-programmed
pattern corresponding to desired test stimuli for the particular
test being administered (e.g., EOG tracking).

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(Ledley, col. 11, ll. 31-37.) Because Ledley‟s laser produced only a spot,
3
it
was not configured to produce a non-circular image. Ledley described
moving the spot with scanning mirrors. But even if mirrors were configured
to move the spot and induce a person to perceive a non-circular image, e.g. a
line as the rejection suggests, the laser was configured to produce only the
round spot, not a line. There is no evidence to support the rejection‟s
finding that Ledley‟s laser itself was configured to produce anything other
than a round spot. Nor was there any evidence, as opposed to simple
argument, presented by the Examiner to support a finding that Ledley‟s laser
would inherently produce anything other than a round spot.
4

Appellant‟s argument as to the second issue is also persuasive. An
invention “composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also
Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir.
2011) (“Obviousness requires more than a mere showing that the prior art
includes separate references covering each separate limitation in a claim
under examination.”).
The rejection identified the Specification‟s use of the Cambridge
Technologies equipment as admitted prior art. Appellant does not disagree
that the Cambridge Technologies equipment was known to be available, but
contends that mere availability is not the standard for obviousness. We

3
The ordinary meaning of spot is “a small round or roundish mark.” Oxford
Dictionaries, Oxford University Press (2012), available at
www.oxforddictionaries.com/definition/spot, accessed May 30, 2012.
4
There is no evidence that Ledley‟s “preprogrammed pattern” is anything
other than a pattern of round spots.
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Application 11/181,019

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agree with Appellant. “[T]he proper analysis requires a form of amnesia that
„forgets‟ the invention and analyzes the prior art and understanding of the
problem at the date of invention.” Mintz v. Dietz & Watson, ___ F.3d ___,
___, 2012 WL 1940157 *7 (Fed. Cir. 2012). Because the rejection did not
articulate a reason for replacing the prior art‟s equipment with the equipment
defined in the claim, the rejection must be reversed. See In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”); see also, MANUAL OF PATENT
EXAMINING PROCEDURE § 2144 (discussing rationales for supporting
obviousness conclusion).

SUMMARY
We reverse the rejection of claims 1, 2, 4-9, 11-13, and 15-18 under
35 U.S.C. § 103(a) as unpatentable over Ledley in view of Applicant‟s
admitted use of a Cambridge Technologies‟ servo controlled galvanometric
based XY interface.
We reverse the rejection of claims 10 and 14 under 35 U.S.C. § 103(a)
as unpatentable over Ledley in view of Applicant‟s admitted use of a
Cambridge Technologies‟ servo controlled galvanometric based XY
interface and Naganuma.

REVERSED

cdc