Ex Parte Saroka et al

Patent Trial and Appeal Board

Sep 24, 2018

14366704 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/366,704 06/19/2014
67801 7590 09/26/2018
MARTIN D. MOYNIHAN d/b/a PRTSI, INC.
P.O. BOX 16446
ARLINGTON, VA 22215
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Amir Saroka
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.
59472 4376
EXAMINER
MEHL, PATRICK M
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
usptomail@ipatent.co.il
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMIR SAROKA, LEONID VOSHIN, JONATHAN BAR-OR,
TAL LEVI, OFER KARP, YIFTACH BARASH, NADAV MIZRAHI,
DAN RAPPAPORT, SHLOMI BERGIDA, and JONATHAN BAHAT
Appeal2018-006605 1
Application 14/366,704
Technology Center 3700
Before FRANCISCO C. PRATS, JOHN E. SCHNEIDER, and
DAVID COTTA, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to thoracic
garments that bring one or more antennas for transmitting and/or
intercepting electromagnetic (EM) energy into contact with a thoracic skin
surface area of a wearer. The Examiner rejected the claims for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The real party in interest is Sensible Medical Innovations Ltd. Appeal Br.
2.
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Application 14/366,704
STATEMENT OF THE CASE
Claims 1-3, 6-14, 17, 18, 29, 30, 32-36, 42, and 43 are pending. See
Appeal Br. 3. The Examiner entered eleven grounds of obviousness against
those claims, based on a number of references (see Non-Final Act. 4--31
( entered April 26, 2017) ). 2
Claims 1, 29, and 3 0 are the independent claims on appeal. See
Appeal Br. 35-39 (Claims App'x).
Claim 1 illustrates the subject matter on appeal, and reads as
follows:
1. A thoracic garment configured for bringing one or more
antennas for transmitting and/or intercepting electromagnetic
(EM) energy into contact with a thoracic skin surface area of a
wearer, compnsmg:
a thoracic garment having a posterior piece, an anterior
piece, and a Y shape strap arrangement comprising two non-
elastic straps each having an adjustable length and is not
stretched by bodily movements of the wearer, said at least two
non-elastic straps are adapted to maintain a location of a
placement portion adapted to support at least one EM
transducer for transmitting and/ or intercepting EM energy in
relation to a thoracic skin surface area of the wearer, said two
non-elastic straps comprise:
an underarm strap adapted to be placed tightly under
an armpit of the wearer and angling up from said posterior
piece to a point on said anterior piece that is higher than said
armpit,
and
2 The action from which this appeal was taken included a rejection under
§ 112(b) (Non-Final Act. 3--4). That rejection has been withdrawn. See
Advisory Action 1, item 5 (Advisory Action entered October 26, 2017).
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Application 14/366,704
a shoulder strap adapted to be supported around a
shoulder and/or around the neck region of the wearer; and
a pressure applying element associated with said EM
transducer for applying a pressure on the EM transducer when
said thoracic garment is worn by said wearer so that said EM
transducer is adapted to apply a respective pressure on a
thoracic skin surface area of said wearer.
Id. ( emphasis added to show claim limitations at issue).
Appellants' Figure 6C is reproduced below:
l "I('' 6(" < i .. } .. •
Figure 6C shows an embodiment of Appellants' invention having the
Y-shaped strap arrangement recited in Appellants' claims, including an
underarm strap adapted to be placed tightly under an armpit of the wearer
and angling up from a posterior piece to a point on an anterior piece that is
higher than the armpit.
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OBVIOUSNESS-
y ARDEN, RUSSEK, AND AUGUSTYNIAK
The Examiner's Prima Facie Case
The Examiner rejected claims 1-3 and 7 under 35 U.S.C. § I03(b) for
obviousness over Yarden, 3 Russek, 4 and Augustyniak. 5 Non-Final Act. 4--7.
The Examiner found that Y arden describes a thoracic garment having
almost all of the features of the garment recited in Appellants' claim 1, but
conceded that Yarden's garment differs from the garment of claim 1 in that
"Y arden does not teach a posterior piece, and the underarm strap angling up
from said posterior piece to a point on said anterior piece that is higher than
said armpit." Id. at 5.
The Examiner cited Russek as evidence that, despite that difference
between Appellants' claim 1 and Y arden, an ordinary artisan would have
considered the garment of claim 1 obvious. Id. at 5---6.
In particular, the Examiner cited Russek as disclosing an electrode-
bearing garment with "the positioning of the element transmitting electrical
energy to the tissue close to the right or the left clavicle of the wearer
(Fig.16 and Fig.17 #120, 121)." Id. at 5. The Examiner cited Russek as
further disclosing "the underarm strap split in two elements (Fig. I 6, 17
#102, 103 and 102', 103')" and also that the underarm strap "can be placed
on the bottom of the electrode holding device (Fig.16 and 17 # 100 and 100')
with the possibility of using buckles and/or Velcro on front or back to hold
or tighten the straps [](#125, 104, 105) as broadly interpreted as anterior and
posterior pieces." Id.
3 US 2004/0077937 Al (published Apr. 22, 2004).
4 US 4,381,012 (issued Apr. 26, 1983).
5 US 4,188,944 (issued Feb. 19, 1980).
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Based on the combined teachings of Y arden and Russek, the
Examiner concluded that an ordinary artisan would have considered it
obvious
Id.
to have modified the device of Y arden, with anterior and
posterior pieces associated with the electrode holding device
and with the underarm strap, since one of ordinary skill in the
art would recognize that using an underarm strap directly
attached to an electrical energy sensor/transmitter holding
device was routine in the art as taught by Russek and since the
choice of the size of the electrode holding device and its
position and the anchoring position of the straps on the device
are arbitrary design consideration[ s] as taught by Russek.
The Examiner reasoned that a skilled artisan would have expected that
the posited modification "could have been made with predictable results
since both Russek and Y arden teach the electrical energy use for therapeutic
application. The motivation would have been to automate and improve the
positioning of the electrodes on the skin of the patient as suggested by
Russek (col.I 1st ,1)." Id. at 5---6.
The Examiner found that the garment of Appellants' claim 1 differs
from the garment suggested by Y arden and Russek in that "Y arden and
Russek do not teach the underarm strap angling up from said posterior piece
to a point on said anterior piece that is higher than said armpit." Id. at 6.
The Examiner found, however, that the relative position of the
anterior and posterior pieces recited in Appellants' claim 1, "( e.g. posterior
piece below the anterior piece which above the armpit) is considered to be
an arbitrary design parameter and Applicant has not disclosed that this
particular limitation provides an unexpected result or in any way further
limits the function of the claimed process." Id.
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Id.
Accordingly, the Examiner reasoned:
[ A ]t the time the invention was made, one of ordinary skill in
the art would have expected that the device made obvious by
Y arden and Russek could have applied to the underarm strap
angling up from said posterior piece to a point on said anterior
piece that is higher than said armpit, as claimed, because
Augustyniak teaches a positioning brace (Figs.2-4) where the
front buckle (Figs.2-4 #7) can be arbitrarily placed higher that
the armpit (Fig. 2 and 3) while the back Velcro element (Fig.2
#5) can be placed lower than the front buckle (Fig.2 5 and 7)
rendering the underarm strap angling up from the posterior
anchoring element to the anterior anchoring element as claimed.
Therefore, it would have been prima facie obvious to modify
the device of Y arden and Russek, as claimed, because such a
modification would have been considered a mere design
consideration which fails to patentably distinguish over the
prior art of Augustyniak.
Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability ....
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), although the
Supreme Court emphasized "an expansive and flexible approach" when
analyzing the issue of obviousness, id. at 415, the Court also reaffirmed the
importance of determining "whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at issue."
Id. at 418 (emphasis added).
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Thus, even under the flexible analysis outlined in KSR, "[ o ]bviousness
requires more than a mere showing that the prior art includes separate
references covering each separate limitation in a claim under examination."
Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir.
2011).
Rather, "[i]n 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).
In other words, even post-KSR, "obviousness concerns whether a
skilled artisan not only could have made but would have been motivated to
make the combinations or modifications of prior art to arrive at the claimed
invention." Belden Inc. v. Berk-TekLLC, 805 F.3d 1064, 1073 (Fed. Cir.
2015).
Having carefully considered the arguments and evidence advanced by
Appellants and the Examiner, we are persuaded that the preponderance of
the evidence does not support the Examiner's determination that the cited
combination of prior art would have rendered the garment recited in
Appellants' claim 1 obvious. In particular, Appellants persuade us (see
Appeal Br. 16-20; Reply Br. 4---6) that the Examiner has not shown, by a
preponderance of the evidence, that the combination of cited references
would have suggested making the specific modifications to Yarden' s
garment required to arrive at the particular arrangement of straps required by
Appellants' claim 1.
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As illustrated above, Appellants' claim 1 recites a thoracic garment
having a specific arrangement of elements, in which posterior and anterior
pieces of the garment are attached to each other by a Y-shaped strap
arrangement that includes an underarm strap adapted to be placed tightly
under an armpit of the wearer and angling up from the posterior piece to a
point on the anterior piece that is higher than the armpit. Appeal Br. 35.
Figure 4E ofYarden, cited by the Examiner as having a Y-shaped
strap arrangement, is reproduced below:
FtG. 4£
Figure 4E ofYarden shows an embodiment ofYarden's thoracic
garment that includes operative element 14, which may be a patient
monitoring device, as well as a shoulder band 92 and a back strap 94.
Y arden explains that the "the shoulder band 92 and the back strap 94 operate
together to secure the structure 12 (and therefore, the operative element 14)
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relative to a body surface." Yarden ,r 44. Yarden explains that its garment
is worn such that the structure 12 and the attached medical device 14 are
placed at the front of the patient. See id. at Figs. 6, 8.
Figures 16 and 17 of Russek, cited by the Examiner as disclosing the
use of a posterior piece and underarm strap arrangement similar to that
recited in Appellants' claim 1, are reproduced below:
F/6./6
FIG.I?
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Figures 16 and 17 of Russek show front and back views, respectively,
of an embodiment of Russek's device for applying electrical stimulation
only to the right shoulder of a patient, using electrodes connected to
connectors 120. Figures 16 and 17 of Russek show straps 102, 103, 102',
and 103', identified by the Examiner as corresponding to the underarm strap
of Appellants' claim 1, as well as element 125, identified by the Examiner as
corresponding to the posterior piece of Appellant's claim 1, to which the
straps 102, 103, 102', and 103', may be attached by Velcro fasteners.
We agree with Appellants that the Examiner has not explained
sufficiently how or why an ordinary artisan would have modified the
garment shown in Yarden's Figure 4E to have the features cited by the
Examiner shown in Figures 16 and 17 of Russek. We acknowledge
Russek's disclosure, identified by the Examiner (Non-Final Act. 6; Ans. 6),
that its invention "relates to an electrode placement device for automatically
placing and securing electrodes for transcutaneous nerve stimulation,
monitoring of body functions, etc." Russek 1 :5-8.
Thus, it might be true that Russek' s device, as whole, was
advantageous for automatically placing and securing electrodes to a patient.
That fact, however, fails to explain why an ordinary artisan, absent improper
hindsight, would have cherry picked only certain elements from Russek' s
device, and modified Yarden's device to include only those elements, as
opposed to the full complement of features that provides the advantageous
functionality of Russek's garment.
We agree with Appellants, moreover, that the specific modifications
to Yarden's device posited by the Examiner are not clear. In particular, the
posited motivation for modifying Y arden' s device is undermined by the fact
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that, as Appellants point out, the device shown in Figures 16 and 17 of
Russek is for connecting electrodes to the shoulder of a patient, whereas the
device shown in Yarden's Figure 4E presses the medical device to the
patient's chest, a significantly different location on the body. Indeed, we
note that no modification of Y arden' s straps is required to reposition the
medical device, because the device can simply be repositioned within the
carrier element of the garment. See Y arden ,r 3 9.
In addition, as is evident, and as the Examiner concedes (Non-Final
Act. 6), neither Y arden nor Russek discloses a strap arrangement having the
configuration required by Appellants' claim 10, in which the underarm strap
angles up from a posterior piece to a point on an anterior piece that is higher
than the armpit. As noted above, the Examiner cited Figures 3 and 4 of
Augustyniak, reproduced below, as evidence that such a strap arrangement
was known in the art:
I
FIG.3
2
FIG.4 .
Figures 3 and 4 of Augustyniak show embodiments of Augustyniak' s
device-a brace for stabilizing a broken or disclocated clavicle and
acromion bones (see Augustyniak 1 :9--12}-wom by a patient.
In FIG. 3, the brace is shown in place on a patient with
the shoulder strap 1 passing beneath and engaging the pants belt
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12 of the patient, exerting the necessary downward force upon
the shoulder block with the body strap 15 attached at one end to
the eye 7 and passing around the chest and back of the patient
while being attached to the strap 1 by the loop 14 passing
around the strap, leaving the arm completely mobile.
FIG[]. 4 . . . show[ s] the brace in place on the patient
with the shoulder strap 1 passing under the forearm adjacent the
elbow and one end of the body strap 15 secured to the eye 7 and
passing around the chest and back and upper arm just above the
elbow, limiting the mobility of the arm.
Id. at4:17-30.
We agree with Appellants that the Examiner has not explained
sufficiently why, absent improper hindsight, an ordinary artisan using
Y arden' s device to locate a medical device adjacent to a patient's skin,
would have abandoned the strap arrangement taught in Y arden, and instead
adopted the arrangement taught in Augustyniak, based on Augustyniak's
teachings that its strap arrangement was useful for an entirely different
purpose-aligning a shoulder to allow healing of a broken/dislocated
clavicle. As to the Examiner's contention that strap placement for the types
of devices taught in Y arden and Russek is merely a matter of design choice,
our reviewing court has squarely rejected that rationale, absent identification
of some reason for choosing the specific solution employed in the claim at
issue. See Cutsforth, Inc. v. MotivePower, Inc., 636 Fed. Appx. 575, 578
(Fed. Cir. 2016) ("Merely stating that a particular placement of an element is
a design choice does not make it obvious. The Board must offer a reason for
why a person of ordinary skill in the art would have made the specific design
choice to locate the spring on the mounting block.").
In sum, for the reasons discussed, Appellants persuade us that the
Examiner has not shown, by a preponderance of the evidence, that the
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combination of Y arden, Russek, and Augustyniak teaches or suggests a
garment having all of the features recite in Appellants' claim 1. We,
therefore, reverse the Examiner's rejection of claim 1, and its dependent
claims 2, 3, and 7 over Yarden, Russek, and Augustyniak.
REMAINING REJECTIONS
Claims 29 and 30, the other independent claims on appeal, both recite
thoracic garments similar to the garment of claim 1, discussed above, and
include claim 1 's arrangement of elements, in which posterior and anterior
pieces of the garment are attached to each other by a Y-shaped strap
arrangement that includes an underarm strap adapted to be placed tightly
under an armpit of the wearer and angling up from the posterior piece to a
point on the anterior piece that is higher than the armpit. See Appeal Br. 37-
38.
In rejecting claims 29 and 30, the Examiner relies on the combination
of Y arden, Russek, and Augustyniak, discussed above, to show that this
arrangement of elements would have been obvious. See Non-Final Act 7,
12-15 (rejecting claim 29); see also id. at 23-24 (rejecting claim 30).
Accordingly, for the reasons discussed above, we reverse the Examiner's
rejections of claims 29 and 30.
In addition, because the references applied in the Examiner's
rejections of the claims depending from claims 1, 29, and 30 were applied
only to show the obviousness of additional features recited in the dependent
claims (see Non-Final Act. 7-31), we reverse the Examiner's rejections of
the claims that depend from claims 1, 29, and 30.
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SUMMARY
For the reasons discussed, we reverse each of the Examiner's
obviousness rejections.
REVERSED
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