Ex Parte Merfeld

Board of Patent Appeals and Interferences

Mar 30, 2012

11261394 (B.P.A.I. Mar. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DANIEL M. MERFELD
__________

Appeal 2010-004095
Application 11/261,394
Technology Center 3700
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
apparatus and method for stimulating a vestibular system. The Patent
Examiner rejected the claims as anticipated and as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 This Appeal is related to Appeal No. 2008-2165, Application No.
10/738,920.
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STATEMENT OF THE CASE
Claims 1-20 are on appeal. Claims 1, 5, 8, 9, and 12 are
representative and read as follows:
1. An apparatus to stimulate a vestibular system, the apparatus
comprising:
an actuator configured to mechanically stimulate the vestibular
system; and
a control module coupled to the actuator, the control module being
configured to provide a control signal that causes the actuator to
stimulate the generation of a stationary nerve signal by the
vestibular system.

5. The apparatus of claim 1 wherein the actuator comprises an elastic
membrane, the elastic membrane being configured to expand in response to
the control signal.

8. The apparatus of claim 1, wherein the control module is configured to
generate the control signal in response to a non-stationary signal detected by
a sensor positioned proximate to the vestibular system.

9. The apparatus of claim 1, wherein the stationary signal includes at
least one of: a pulse train characterized by a constant pulse repetition rate,
and a sinusoidal signal.

12. The method of claim 10, wherein causing the actuator to stimulate
comprises displacing a semi-circular canal of the vestibular system.

The Examiner rejected the claims as follows:
• claims 1, 2, 5-13, and 16-20 under 35 U.S.C. §102(e) as anticipated
by Lattner;2

2Patent No. US 6,748,275 issued to Stefanie Lattner et al., Jun. 8, 2004.
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• claims 3, 4,3 14, and 15 under 35 U.S.C. § 103(a) as unpatentable
over Lattner and Zarowski.4

ANTICIPATION/OBVIOUSNESS
The Issues
For both the anticipation and obviousness rejections, the Examiner’s
position is that Lattner taught an apparatus and method for stimulating the
vestibular system. (Ans. 3.) The Examiner found that Lattner disclosed an
actuator to mechanically stimulate the vestibular system and a control
module electrically coupled to the actuator that provides a control signal that
causes the actuator to stimulate the generation of a stationary nerve signal by
the vestibular system. (Id.) The Examiner also found that Lattner taught
that the control module may be configured to generate the control signal in
response to a non-stationary signal detected by a sensor. (Id.) Additionally,
the Examiner found that Lattner disclosed that the actuator may comprise
either a balloon, which the Examiner interpreted as an “elastic membrane
being configured to expand,” or a pressure cuff for carrying an inflating
fluid. (Id.)
Appellant asserts that the Examiner’s position is that Lattner’s
controller “must be reprogrammed, or reconfigured, in some way before it
can carry out the recited function of the claimed structure.” (App. Br. 6.)

3 The Examiner clarified, and Appellant acknowledged, that “claim 4 was
not intended to be rejected as anticipated by Lattner et al., rather as obvious
over Lattner et al. in view of Zarowski et al.” (Ans. 2; Reply Br. 5.)
4 Patent Application Publication No. US 2006/0161255 A1 by Andrej
Zarowski et al., published Jul. 20, 2006.

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Appellant asserts that “once reprogrammed as the Examiner proposes,
Lattner’s controller 36 would become a different structure.” (Id. at 5)(citing
In re Bernhart, 417 F.2d 1395, 1398-1400 (CCPA 1969) and WMS Gaming
v. Int’l Game Tech., 184 F.3d 1339, 1348 (Fed. Cir. 1999)). According to
Appellant, “reprogramming a processor does indeed result in a change of
structure.” (Id. at 6.)
Regarding claims 8 and 18, Appellant further asserts that while
Lattner disclosed some embodiments of its invention may use a sensor to
provide a variety of signals to the controller, “there is no indication that, in
response to a non-stationary signal detected by such a sensor, the controller
will cause an actuator to mechanically stimulate the vestibular signal in a
way that causes the generation of a stationary nerve signal.” (App. Br. 8.)
According to Appellant, Lattner only discloses one system that mechanically
stimulates the vestibular system, which embodiment is not depicted or
described as using a sensor. (Id.)(citing Lattner Fig. 8 and col. 19, l. 62; col.
7, ll. 24-27.) Appellant asserts that it is not enough that Lattner disclosed the
individual pieces of the invention, when those pieces are not arranged as
recited in claims. (Id. at 9.)
Regarding claims 9 and 19, Appellant further asserts that while
Lattner disclosed that pressure cuffs 88, 92 stimulate a signal on the nerve,
there is no disclosure that this signal is either a pulse train or sinusoidal
signal, as required by the claims. (Id.)
Regarding claim 12, Appellant further asserts that Lattner’s pressure
cuffs, 88, 92 do not displace the semi-circular canal of the vestibular system,
as recited by the claim. (Id. at 10.) According to Appellant, inwardly
directed radial force applied by each cuff would result in “no net force for
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displacing the canal.” (Id.) Moreover, Appellant asserts that structure 90 is
made of bone and a skilled artisan would “have understood that bone does
not deform when one applies an inwardly radial force, such as that applied
by cuffs 88, 92.” (Reply Br. 4.)
Regarding claims 5 and 16, Appellant further asserts that “[t]he
Examiner’s position is that Lattner’s pressure cuffs in FIG. 8 are balloons
and that balloons are elastic.” (App. Br. 11.) According to Appellant, “there
are many examples of balloons made of inelastic materials. For example,
Mylar balloons do not comprise an elastic membrane.” (Id.)
Appellant does not raise separate arguments for the obviousness
rejection of claims 3, 4, 14, and 15, but instead relies on the arguments set
forth in connection with the anticipation rejection of the parent claims.
(App. Br. 12; Reply Br. 5.) Therefore, we consider the anticipation and
obviousness rejections together.
The issues are whether the Lattner disclosed:
(a) the control module being configured to provide a control signal
that causes the actuator to stimulate the generation of a stationary nerve
signal by the vestibular system;
(b) the control module being configured to generate the control signal
in response to a non-stationary signal detected by a sensor positioned
proximate to the vestibular system;
(c) the stationary signal includes at least one of: a pulse train
characterized by a constant pulse repetition rate, and a sinusoidal signal;
(d) causing the actuator to stimulate comprises displacing a semi-
circular canal of the vestibular system; and
(e) the actuator comprises an elastic membrane.
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Findings of Fact
1. We agree with the Examiner’s explicit findings regarding the scope
and content of Lattner. (Ans. 3-5.)
2. Lattner disclosed an embodiment wherein stimulation of the
semicircular canals is accomplished by inducing a rocking sensation in a
patient
by alternatively actuating [and deactivating] first and second
stimulation elements 88 and 92….This process can be repeated
to move the fluid back and forth within the semicircular canal,
which is the same effect that takes place when the person is
physically rocked. Of course, the frequency of the back and
forth movement of the fluid can be altered to change the
rocking speed of the patient.

(Lattner col. 20, ll. 17-38.)
3. Lattner disclosed that its “[s]ensor 34 is a device that detects a
physiological condition of the patient or the external conditions that the
patient is experiencing and provides this information to power/control unit
36.) (Id. at col. 9, ll. 31-34.)
4. Lattner disclosed that examples of suitable sensors for use with the
present invention include an accelerometer. (Id. at col. 9, ll. 37-44.)
5. Lattner disclosed that “the selection and different types of suitable
sensors for use with each embodiment of the present invention can be
appreciated from the discussions of the particular implementations of the
stimulation system of the present invention.” (Id. at col. 9, ll. 55-
59)(emphasis added).
6. Lattner disclosed, with respect to simulating rocking for the purpose
of inducing sleep, “using any one of the variety of known techniques to
detect when the patient is asleep,” and then decreasing, discontinuing, or
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continuing the rocking type stimulation, which “helps promote a more
restful sleep. (Id. at col. 20, l. 61- col. 21, l. 18.)
7. Lattner disclosed that its pressure cuffs are “placed either completely
or partially around the canal or nerve to be stimulated so that inflating the
pressure cuff exerts pressure on the underlying portion of the semicircular
canal or nerve.” (Id. at col. 8, ll. 38-41.)
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).
Analysis
After considering all the evidence and arguments, we conclude that
the record supports the Examiner’s findings and conclusions. Regarding
independent claim 1, Appellant asserts that the Examiner’s rejection requires
Lattner’s controller to be “reprogrammed, or reconfigured.” (See App. Br.
6.) However, the record does not support this assertion. Rather, the
Examiner found that Lattner’s controller, i.e., control module, is configured
to provide a control signal that causes the actuator to stimulate the
generation of a stationary nerve signal by the vestibular system. (Ans. 3, 4.)
According to the Examiner, the Specification describes that “a stationary
nerve signal can be generated in the vestibular system by stimulating the
vestibular system with a control signal having a constant frequency and
amplitude (Page 5, lines 8 - 12).” (Id. at 5.) The Examiner explained that
Lattner disclosed that “its controller is configured to provide a control signal
with any timing, level, pattern, and/or frequency to achieve a desired
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physiological function (See Abstract; Col. 7, lines 20-24).” (Ans. 4-5.) In
particular the Examiner’s position is that Lattner disclosed that its control
module (36) is capable of delivering a control signal to the actuator with a
constant frequency and amplitude, i.e., level, that includes a constant pulse
rate. (Id.) According to the Examiner, “[w]hen creating a rocking
sensation… the control module causes the actuator to stimulate the
vestibular system at a constant pulse rate.” (Id.) We find that the
Examiner’s reasoning is sound and supported by the record evidence.
Appellant did not further respond to the Examiner’s rejection of claim 1 in
the Reply Brief. (See Reply Br. 5, addressing claim 1 without further
argument.)
With respect to claim 9, Appellant asserts in the Reply Brief that
“[s]timulation with a constant pulse rate will not cause a rocking sensation.”
(Reply Br. 1.) According to Appellant, when the pulse repetition frequency
(PRF) is constant, the brain perceives no motion. It is only by varying the
PRF that the brain can be made to perceive motion,” i.e., a rocking
sensation. (Id.) Appellant asserts that Lattner’s disclosure of producing a
rocking sensation “says nothing about applying a stationary signal to the
vestibular nerve.” (Id. at 2.) According to Appellant, Lattner’s procedure
“is guaranteed to apply a non-stationary signal to the vestibular nerve.” (Id.)
We are not persuaded by this argument. As the Examiner correctly
explained, Lattner disclosed inducing a rocking sensation by alternatively
actuating first and second stimulation elements 88 and 92. (FF-2.) Lattner
disclosed that the frequency of the back and forth movement of the fluid can
be altered to change the rocking speed of the patient. (Id.) The Examiner
provided sound reasoning for finding that when this frequency is constant, it
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causes the vestibular system to generate a stationary signal. (See Ans.
5)(citing Spec. 20.) Appellant has not established otherwise with persuasive
evidence.
Further, regarding claims 9 and 19, Appellant asserts that Lattner did
not disclose a stationary signal including either a pulse train or sinusoidal
signal, as required by the claims. (App. Br. 9.) In the Response to
Argument, the Examiner explained that Lattner disclosed “the controller
being capable of creating a constant pulse rate (159) and a sinusoidal signal
(158).” (Ans. 5.) In the Reply Brief, Appellant asserts that “signal 159 is a
square wave, not a pulse train.” (Reply Br. 2.) Additionally, Appellant
asserts that “[a]s for the sinusoidal signal 158, it is not possible to determine
whether that signal is stationary or non-stationary because only one
complete period of the signal is shown.” (Id. at 3.) We are not persuaded
that Lattner’s sinusoidal signal was not a stationary signal as we have
previously found that the Examiner provided sound reasoning for finding
that Lattner’s controller provides a control signal that causes the generation
of a stationary nerve signal.
Regarding claims 8 and 18, Appellant asserts that Lattner did not
disclose using a sensor with its system that mechanically stimulates the
vestibular system because, with respect to Figure 8, a sensor is not depicted
or described. (See App. Br. 8.) However, Lattner disclosed that a sensor
may be selected for use with each embodiment of its invention as could be
appreciated from its discussion of those embodiments. (FF-3.) As the
Examiner correctly explained, when discussing the embodiment depicted in
Figure 8, Lattner disclosed using any one of the variety of known
techniques, e.g., a sensor, to detect when the patient is asleep. (Ans.
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5)(citing Lattner col. 20, l. 61- col. 21, l. 26); (FF-6.) Lattner disclosed that
its sensor detects a physiological condition of the patient or the external
conditions that the patient is experiencing and provides this information to
power/control unit 36. (FF-3.)
In the Reply Brief, Appellant asserts that Lattner did not describe
whether its sleep sensor detects a non-stationary signal. (Reply Br. 3.) We
disagree. Lattner disclosed an accelerometer as an example of a suitable
sensor for use with its invention. (FF-4.) In other words, Lattner disclosed
using a sensor that detects a non-stationary signal, as the Examiner found.
(Ans. 3.)
Also in the Reply Brief, Appellant asserts that “[w]hen the sleep
sensor detects the patient is awake, it causes the controller to stop causing a
rocking sensation,” rather than acting “as a trigger that causes stimulation.”
(Reply Br. 4) We do not find this disclosure in Lattner. Lattner disclosed
simulating rocking for the purpose of inducing sleep, i.e., to induce the sleep
of a person who is awake, and then once sleep is detected, e.g., by a sleep
sensor, the rocking type stimulation can then be decreased or continued to
promote a more restful sleep. (FF-6.) Thus, Lattner’s sleep sensor acted as
a trigger that caused stimulation, contrary to Appellant’s assertion.
Regarding claim 12, Appellant asserts that Lattner’s pressure cuffs,
88, 92 do not displace the semi-circular canal of the vestibular system.
(App. Br. 10.) According to Appellant, inwardly directed radial force
applied by each cuff on the canal, as with a blood pressure cuff on an arm,
would result in “no net force for displacing the canal.” (Id.) We disagree as
Lattner does not disclose that a “net force” results from pressure applied by
its cuffs. Indeed, Lattner disclosed that, unlike a blood pressure cuff that is
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placed entirely around an arm, its pressure cuffs may be placed only partially
around the canal to be stimulated. (FF-7.) Appellant also asserts that
structure 90 is made of bone and a skilled artisan would “have understood
that bone does not deform when one applies an inwardly radial force, such
as that applied by cuffs 88, 92.” (Reply Br. 4.) However, claim 12 does not
recite or otherwise require deforming the semi-circular canal, rather it
requires displacing it.
Regarding claims 5 and 16, Appellant asserts that “[t]he Examiner’s
position is that Lattner’s pressure cuffs in FIG. 8 are balloons and that
balloons are elastic.” (App. Br. 11.) According to Appellant, “there are
many examples of balloons made of inelastic materials. For example, Mylar
balloons do not comprise an elastic membrane.” (Id.) We are not persuaded
by this argument. The Examiner correctly found that Lattner disclosed that
its mechanical stimulation device, i.e., actuator, may be an inflatable balloon
or pressure cuff. (Ans. 3; Lattner col. 8, ll. 31-40.) While Appellant asserts
that not all balloons are made of elastic material, we find that a skilled
artisan at the time of the invention would have understood Lattner’s
disclosure of inflatable balloons necessarily included balloons comprising an
elastic membrane, as inflatable balloons were commonly known to comprise
such material.
Accordingly, we affirm the Examiner’s rejection of claims 1-7, 9-17,
19 and 20, and we reverse the rejection of claims 8 and 18.

CONCLUSION OF LAW
Lattner disclosed the claimed invention.

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SUMMARY
We affirm the rejection of claims 1, 2, 5-13, and 16-20 under 35
U.S.C. §102(e) as anticipated by Lattner;
we affirm the rejection of claims 3, 14, and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Lattner and Zarowski.

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

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