Ex parte Sadkhin

Board of Patent Appeals and Interferences

Jan 16, 2002

08513610 (B.P.A.I. Jan. 16, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GRIGORY SADKHIN
____________
Appeal No. 1999-0028
Application No. 08/513,610
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, and NASE, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of solely
claims 12 and 16 through 19 (Paper No. 8). While the brief
(page 3) indicates that an amendment after final is submitted
herewith to cancel all pending claims not subject to appeal,
in a telepone conversation with Pamela S. Bennett of the Board
of Patent Appeals and Interferences on March 22, 1999, counsel
for appellant indicated that the referenced amendment had not
been filed. Therefore, the only claims before us on appeal
Appeal No. 1999-0028
Application No. 08/513,610
2
are claims 12 and 16 through 19, and the examiner should take
appropriate action relative to the unappealed claims.
Appellant’s invention pertains to a method for diagnosing
a patient. A basic understanding of the invention can be
derived from a reading of exemplary claim 12, a copy of which
appears in the APPENDIX to the brief (Paper No. 12).
As evidence of obviousness, the examiner has applied the
documents listed below:
McMahon et al 4,394,074 Jul. 19,
1983
(McMahon)
Sklar et al 5,098,426 Mar. 24,
1992
(Sklar)
The following rejections are before us for review.
Claims 12 and 16 through 19 stand rejected under 35
U.S.C. § 112, first paragraph, as being based upon a
disclosure which lacks enablement for treatment steps.
Appeal No. 1999-0028
Application No. 08/513,610
In our evaluation of the applied prior art, we have1
considered all of the disclosure of each document for what it
would have fairly taught one of ordinary skill in the art.
See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966). Additionally, this panel of the board has taken into
account not only the specific teachings, but also the
inferences which one skilled in the art would reasonably have
been expected to draw from the disclosure. See In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
3
Claims 12 and 16 through 19 stand rejected under 35
U.S.C. § 103 as being unpatentable over McMahon in view of
Sklar.
The full text of the examiner’s rejections and response
to the argument presented by appellant appears in the answer
(Paper No. 13), while the complete statement of appellants’
argument can be found in the brief (Paper No. 12).

OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellant’s specification and claims, the applied teachings,1
and the respective viewpoints of appellant and the examiner.
Appeal No. 1999-0028
Application No. 08/513,610
4
As a consequence of our review, we make the determinations
which follow.
The enablement rejection
We do not sustain the rejection of claims 12 and 16
through 19 under 35 U.S.C. § 112, first paragraph, as being
based upon a disclosure which lacks enablement for treatment
steps.
Appellant’s disclosure clearly encompasses diagnosis and
treatment. However, the claims before us on appeal are
expressly drawn to a method for diagnosing a patient, with no
mention of any treatment. Thus, we determine that the
examiner’s enablement concerns regarding treatment in
rejecting claims 12 and 16 through 19 are unfounded. It is
for this reason that the enablement rejection cannot be
sustained.
Appeal No. 1999-0028
Application No. 08/513,610
5
The obviousness rejection
We do not sustain the rejection of claims 12 and 16
through 19 under 35 U.S.C. § 103 as being unpatentable over
McMahon in view of Sklar.
Independent method claim 12 requires, inter alia, the
generation of an electrical signal encoding patterns in an
iris, and the comparing of pattern data in that signal with
previously stored pattern data to derive diagnostic
information.
Appellant points out that the “customary procedure” is
for a comparison to be made mentally by a iridology
practitioner and since neither reference discloses or suggests
comparing pattern data in an electrical signal with previously
stored pattern data to derive diagnostic information, it would
not have been obvious to implement the diagnostic procedure
automatically (brief, page 6). Consistent with appellant’s
point of view, the difficulty we have with the examiner’s
rejection is that, absent appellant’s own teaching, the
Appeal No. 1999-0028
Application No. 08/513,610
See the background of the invention section of2
(continued...)
6
combined McMahon and Sklar teachings would not have been
suggestive of the diagnosis method now claimed. McMahon
(column 1, lines 38 through 42, column 2, lines 40 through 44,
and column 4, lines 3 through 8) uses pictures for diagnostic
review, while the diagnostic aspect of the laser surgery
teaching of Sklar (column 22, lines 1 through 18) is achieved
by viewing displayed images (Fig. 2). Thus, notwithstanding
the circumstance that appellant may be now doing automatically
what was previously done manually, the evidence before us
simply would not have been suggestive of the content of method
claim 12, in particular. The rejection of appellant’s claims
12 and 16 through 19 cannot therefore be sustained.
REMAND TO THE EXAMINER
We remand this application to the examiner to consider
the patentability of the claimed method under 35 U.S.C. §
103(a) taking into account the customary diagnostic comparison
procedure manually carried out by an iridology practitioner2
Appeal No. 1999-0028
Application No. 08/513,610
(...continued)2
appellant’s specification (page 1) and, in particular, the
content of the booklet “Iridology Simplified” referenced
therein (copy in application file).
7
in conjunction with any similar known comparison procedure
that may be uncovered by the examiner in searching the
respective fields of criminal investigation and security
practice wherein electrical signals encoding fingerprints,
palm prints, eye images, and face prints may have been
electronically compared with stored data.
In summary, this panel of the board has:
not sustained the rejection of claims 12 and 16 through
19 under 35 U.S.C. § 112, first paragraph, as being based upon
a
disclosure which lacks enablement; and
Appeal No. 1999-0028
Application No. 08/513,610
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not sustained the rejection of claims 12 and 16 through
19 under 35 U.S.C. § 103 as being unpatentable over McMahon
in view of Sklar.
We have also remanded the application to the examiner.
The decision of the examiner is reversed.
REVERSED AND REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
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