Ex Parte Lee

Patent Trial and Appeal Board

Oct 31, 2018

14285822 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/285,822 05/23/2014
78198 7590
Studebaker & Brackett PC
8255 Greensboro Drive
Suite 300
Tysons, VA 22102
11/02/2018
FIRST NAMED INVENTOR
KiwonLee
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
600600-000016 8790
EXAMINER
MALAMUD, DEBORAH LESLIE
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
info@sbpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIWON LEE 1
Appeal2017-010720
Application 14/285,822
Technology Center 3700
Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant states that the real party-in-interest is YBRAIN INC. App. Br. 2.
Appeal2017-010720
Application 14/285,822
SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 12-20 under 35 U.S.C. § 102(a)(l) as
being anticipated by Parker et al. (US 8,311,639 B2, November 13, 2012)
("Parker").
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellant's invention is directed to an electrical brain stimulation
system that includes electrodes configured to be adhered to a subject, a
power supply for supplying electric power to the electrodes, and a control
unit for controlling the electric power by limiting at least one of a variation
and maximum energy of the electric power. Abstr.
REPRESENTATIVE CLAIM
Claim 12 is representative of the claims on appeal and recites:
12. An electrical brain stimulation system, the system
compnsmg:
at least two electrodes configured to be adhered to a subject;
a power supply configured to supply electric power to the
electrodes;
a contact detection unit configured to check whether at least a
first part of at least one of the electrodes is not adhered to the subject;
and
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Application 14/285,822
a control unit configured to control, when the first part of at
least one of the electrodes is not adhered to the subject, the electric
power supplied to second parts of the electrodes adhered to the
subject, by limiting at least one of a variation and a maximum of
energy of the electric power,
wherein each of the electrodes comprises a plurality of
separated unit electrodes each having an electric current limiting
circuit configured to control an electric current flowing into the
corresponding unit electrode.
App. Br. 14--15.
ISSUES AND ANALYSIS
We adopt the Examiner's findings, reasoning and conclusion that the
claims on appeal are anticipated by the cited prior art reference. We address
Appellant's arguments below.
Issue
Appellant argues that the Examiner erred in finding that Parker
discloses the limitation of claim 12 reciting:
[A] contact detection unit configured to check whether at least a
first part of at least one of the electrodes is not adhered to the
subject; and a control unit configured to control, when the first
part of at least one of the electrodes is not adhered to the subject,
the electric power supplied to second parts of the electrodes
adhered to the subject, by limiting at least one of a variation and
a maximum of energy of the electric power.
App. Br. 6.
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Appeal2017-010720
Application 14/285,822
Analysis
The Examiner finds Parker discloses electrodes that are implanted in,
or adhered to, a subject. Final Act. 3 (citing Parker col. 3, 11. 41-50). The
Examiner finds that electric power is supplied, in the form of signals, to the
electrodes and that a contact detection unit ( detector 119) checks for whether
parts (contacts Cl, C2, etc.) of an electrode are no longer adhered by
detecting impedance changes. Id. ( citing Parker col. 4, 11. 7-25; col. 10, 11.
51----67). The Examiner further finds that when the first part of at least one of
the electrodes is not adhered to the subject, resulting in an open circuit, a
control unit (microprocessor 107) controls the power to the second, adhered
parts of the electrodes by changing contacts in the circuit and controlling
those contacts. Id. at 3 (citing Parker col. 6, 11. 34--55). The Examiner finds
that the control unit controls the power by limiting at least one of a variation
and a maximum of energy of electric power. Ans. 5 ( citing Parker col. 9, 11.
46-50; col. 6, 11. 34--55 ("reducing the signal strength ... and then gradually
increasing the signal strength after the change in the circuit ... [to] avoid
subjecting the patent to a sudden increase in the applied signal").
As an initial matter, Appellant argues that the Examiner erred in
failing to specifically match the citations of Parker to each claim element.
App. Br. 6-8. Specifically, Appellant argues that the Examiner "merely
cited col. 9, line 46 through col. 10, line 50 of Parker, without further
providing any reasons for relevance." Id. at 6.
We are not persuaded by Appellant's argument. We find that the
Examiner's findings rely on specific citations to Parker as disclosing the
relevant claim elements. In pointing to specific teachings of Parker, the
Examiner established a prima facie case of anticipation, thereby shifting the
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Application 14/285,822
burden to Appellant to specifically identify deficiencies in the rejection.
Appellant's argument fails to identify which elements of claim 12 are not
disclosed by Parker.
Appellant next argues that Parker does not disclose controlling power
"to second parts ... adhered to the subject" by limiting at least one of a
variation and a maximum of energy. App. Br. 8-9. Appellant argues that:
"[ t ]here is no disclosure related to controlling any current/voltage to be
supplied to the other leads connected to the patient when there is the open
circuit that is disconnected to the patient." Reply Br. 4. Appellant's
position is that Parker discloses controlling power by limiting at least one of
a variation and a maximum of energy to non-adhered contacts but does not
disclose making such limitations of power to adhered contacts.
We are not persuaded that Parker limits controlling power, by limiting
at least one of a variation and a maximum of energy, only to non-adhered
contacts in an open circuit. Parker discloses that, in response to determining
that the electrical therapy circuit is open:
Process portion 235 can . . . include changing one or more
contacts ... that form a portion of the electrical therapy circuit ...
by opening and closing appropriate switches.. . . Once the change
has been made, process portion 236 can include gradually
increasing the strength of the signal applied to the therapy
circuit. . . . . By first reducing the signal strength . . . and then
gradually increasing the signal strength after the change in the
circuit has been made .... the process 220 can avoid subjecting
the patient to a sudden increase in the applied signal, which may
cause patient discomfort.
Parker col. 6, 11. 34--55
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Application 14/285,822
The Examiner finds that Parker thus discloses "reducing" power (i.e.,
limiting the maximum power) to contacts-including both adhered and non-
adhered contacts. See Final Act. 3 (citing Parker col. 6, 11. 34--55). We
agree with the Examiner that Parker expressly discloses changing contact(s)
in response to an open circuit. Once the change has been made, i.e., the non-
adhered contact is removed from the circuit, the Examiner finds Parker
discloses "gradually increasing" power (i.e., limiting the variation of power
supplied to electrodes) power to the adhered contacts making up the closed
circuit to avoid causing discomfort to the subject. Id. If the contacts were
not adhered, there would be no possibility to cause discomfort by applied
signals because there would be no electrical connection to the subject. We
are consequently not persuaded by Appellant's argument that Parker fails to
disclose the disputed limitation.
Appellant does not present separate arguments with respect to claims
13-20, which depend from independent claim 12. App. Br. 6, 8. We
therefore affirm the Examiner's rejection of claims 12-20.
DECISION
The Examiner's rejection of claims 12-20 under 35 U.S.C.
§ 102( a)( 1) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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