Ex Parte Sinde

Board of Patent Appeals and Interferences

Aug 10, 2009

09618615 (B.P.A.I. Aug. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte GARY W. SINDE 8
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10
Appeal 2009-00551 11
Application 09/618,615 12
Technology Center 3600 13
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15
Decided: August 10, 2009 16
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18
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R. 19
MOHANTY, Administrative Patent Judges. 20
21
CRAWFORD, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL25
Appeal 2009-000551
Application 09/618,615

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STATEMENT OF THE CASE 1
Gary W. Sinde (Appellant) seeks our review under 35 U.S.C. § 134 2
(2002) from a final rejection of claims 1-40. We have jurisdiction under 35 3
U.S.C. § 6(b) (2002). 4
Appellant invented systems and methods for identifying sources of 5
ingress noise into networks (Specification, p. 1, ll. 9-11). 6
Claim 1 under appeal is further illustrative of the claimed invention as 7
follows: 8
1. A method of identifying a source of ingress into a 9
network including storing frequency spectra of known sources 10
of ingress, comparing the frequency spectrum of ingress to the 11
frequency spectra of known sources of ingress, and determining 12
from the comparison which of the frequency spectra of known 13
sources of ingress is closest to the frequency spectrum of the 14
ingress. 15
16
The prior art relied upon by the Examiner in rejecting the claims on 17
appeal is: 18
Nickolls et al. US 5,251,626 Oct. 12, 1993 19
Eberhart et al. US 6,516,309 B1 Feb. 4, 2003 20
Declaration of Donald L. Champagne, P.E., Ph.D., mailed with an 21
Office action on 9 November 2007 (hereinafter “Champagne Declaration”). 22
The Examiner rejected claims 1-4, 6-9, 11-14, 16-19, 21-24, 26-29, 23
31-34, and 36-39 under 35 U.S.C. § 103(a) as being unpatentable over 24
Nickolls; and rejected claims 5, 10, 15, 20, 25, 30, 35, and 40 under 35 25
U.S.C. § 103(a) as being unpatentable over Nickolls in view of Eberhart. 26
27
We REVERSE. 28
Appeal 2009-000551
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ISSUE 1
Did the Appellant show the Examiner erred in finding that the 2
Champagne Declaration provides an adequate factual basis for showing that 3
identifying an abnormality that is “an ingress” into a network was known at 4
the time of the claimed invention? 5
6
FINDINGS OF FACT 7
Specification 8
01. Appellant invented systems and methods for identifying sources of 9
ingress noise into networks (Specification, p. 1, ll. 9-11). 10
11
Nickolls 12
02. Nickolls discloses medical devices which: monitor the cardiac state of 13
a patient by sensing the patient’s intrinsic rhythm for the presence of 14
arrhythmias, diagnose the condition, and deliver therapy to restore a 15
normal sinus rhythm to the patient (col. 1, ll. 11-23). 16
03. A neural network is used to recognize ventricular fibrillation (VF) and 17
other forms of arrhythmias in real time (col. 1, ll. 24-29). 18
04. The physiological signals detected by the device may include raw 19
electrocardiogram (ECG) signals, blood impedance measurement 20
waveforms, ventricular filtered peak-to-peak pressure amplitude 21
(VFPPA) or ventricular peak pressure function (VPPF) signals, 22
arterial pressure of oxygen (pO2), partial pressure of carbon dioxide 23
(pCO2), potential of hydrogen (pH), blood temperature, ventricular 24
wall impedance, ventricular volume, and blood flow signals, or other 25
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similar signals known to those skilled in the art (col. 6, ll. 5-13). 1
05. Arrhythmia includes tachyarrhythmias, fibrillation, tachycardias, 2
supraventricular tachycardias (SVT), ventricular tachycardias (VT), 3
ventricular floutter and VF, and bradycardia (col. 7, ll. 3-8). 4
06. Sensing circuit 37 detects analog signals 40 from heart 14 (col. 9, ll. 5
47-49). 6
7
PRINCIPLES OF LAW 8
Prior Art 9
A person shall be entitled to a patent unless - (a) the invention was 10
known or used by others in this country, or patented or described in a printed 11
publication in this or a foreign country, before the invention thereof by the 12
applicant for a patent. 35 U.S.C. § 102(a) 13
The statutory language “known or used by others in this country” (35 14
U.S.C. § 102(a)), means knowledge or use which is accessible to the public.” 15
Carella v. Starlight Archery, 804 F.2d 135, 139 (Fed. Cir. 1986). 16
Argument in the brief does not take the place of evidence in the 17
record. In re Schulze, 346 F.2d 600, 602 (CCPA 1965). 18
19
Obviousness 20
During examination, the examiner bears the initial burden of 21
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 22
1443, 1445 (Fed. Cir. 1992). 23
When a work is available in one field [of endeavor], design 24
incentives and other market forces can prompt variations of it, 25
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either in the same field or [a different one]. If a person of 1
ordinary skill can implement a predictable variation, and would 2
see the benefit of doing so § 103 likely bars its patentability. 3
Moreover, for the same reason, if a technique has been used to 4
improve one device, and a person of ordinary skill in the art 5
would recognize that it would improve similar devices in the 6
same way, using the technique is obvious unless its actual 7
application is beyond his or her skill. 8
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). 9
The analysis of the apparent reasons to combine the known elements 10
in the fashion claimed by the patent at issue should be made explicit. KSR, 11
550 U.S. at 418 (2007). 12
The analogous arts test begins the inquiry into whether a skilled 13
artisan would have been motivated to combine references by defining the 14
prior art relevant for the obviousness determination, and that it is meant to 15
defend against hindsight The motivation-suggestion-teaching test picks up 16
where the analogous art test leaves off and informs the Graham analysis. In 17
re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006). 18
19
ANALYSIS 20
We are persuaded of error on the part of the Examiner by Appellant’s 21
argument that the Champagne Declaration does not provide an adequate 22
factual basis for showing that identifying an abnormality that is an ingress 23
into a network was known at the time of the claimed invention (App. Br. 22-24
24; Reply Br. 5-6). The crux of whether something was known or used by 25
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others in this country is whether the “knowledge or use was accessible to the 1
public.” See Carella, 804 F.2d at 139. The Champagne Declaration fails in 2
this regard. Aside from the assertion that, “[c]ombustion noise was known 3
to have caused fatigue failures in rockets and aircraft gas turbine engines.” 4
(Champagne Declaration 4), there is no indication that any of the other 5
knowledge or uses set forth in the Champagne Declaration was publicly 6
known or accessible at the time of the invention. Specifically, while the 7
Champagne Declaration sets forth what the declarant knew and performed 8
from 1973 to 1976, the Champagne Declaration does not set forth any facts 9
to indicate that what the declarant knew and performed was publicly known 10
and accessible. 11
The Examiner does attempt to remedy this deficiency by asserting on 12
pages 10-11 of the Examiner’s Answer that “[t]he declaration did fail to 13
expressly note, as the examiner has now done above, that the GE task force 14
used off-the-shelf diagnostic equipment and otherwise relied on publicly-15
known art. Nothing attested to here or in the declaration was a GE trade 16
secret.” However, such an attempted remedy is insufficient because these 17
statements must be set forth within the four corners of the declaration in 18
order to be given evidentiary weight. See In re Schulze, 346 F.2d at 602. 19
Accordingly, because (1) the Examiner bears the initial burden of 20
establishing a prima facie case of obviousness under In re Oetiker, 977 F.2d 21
at 1445, (2) the Examiner admits on page 4 of the Examiner’s Answer that 22
Nickolls does not teach that the abnormality is an ingress into (external to) a 23
network, and (3) the Champagne Declaration does not provide an adequate 24
factual basis for showing that identifying an abnormality that is an ingress 25
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into a network was known at the time of the claimed invention, the 1
Examiner has failed to establish a proper prima facie case of obviousness 2
with respect to the rejections of claims 1-40. 3
Moreover, we also agree with the Appellant that the Examiner has 4
failed to provide an explicit reasoning as to why one of ordinary skill would 5
modify Nickolls to identify an abnormality that is an ingress into (external 6
to) a network (App. Br. 25). The Examiner is correct that KSR recites that 7
predictable variations likely bar patentability. See KSR, 550 U.S. at 417. 8
However, the key word is “likely,” because even if the variation is 9
predictable, the Examiner must still set forth an explicit reason to combine 10
the known elements in the fashion claimed by the patent at issue. See Id. at 11
418. 12
Although primarily set forth in the non-analogous art context, the 13
Appellant has essentially argued that there would be no reason to modify 14
Nickolls to identify abnormalities external to the heart, because Nickolls is 15
directed to identifying, diagnosing, and treating abnormalities (arrhythmias) 16
internal to the system (heart), (App. Br. 17, 19, 20-21; Reply Br. 2-4)1. 17
Indeed, all the arrhythmia conditions set forth in Nickolls are internal to the 18
heart. While Nickolls does not preclude identifying abnormalities external 19
to the heart, the Examiner has not provided any reason (e.g., design 20
incentives, market forces, improvements, etc.) as to why one of ordinary 21

1 We agree with the Examiner that Nickolls is analogous art to the claimed
invention because they are both directed to identifying frequency spectra
abnormalities. However, just because a reference is analogous art and could
be used to in an obviousness rejection does not, by itself, satisfy the separate
requirement that the Examiner must provide a reason for combining
references. See In re Kahn, 441 F.3d at 986.
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skill would wish to do so. Accordingly, because the fact that a variation is 1
possible, without more, is not a reason for combining known elements, the 2
Examiner has also failed in this regard to establish a proper prima facie case 3
of obviousness with respect to the rejections of claims 1-40. 4
5
6
CONCLUSION OF LAW 7
On the record before us, Appellant has shown that the Examiner erred 8
in finding that Nickolls and the Champagne Declaration render obvious the 9
subject matter of claims 1-40. 10
11
DECISION 12
13
The decision of the Examiner to reject claims 1-4, 6-9, 11-14, 16-19, 14
21-24, 26-29, 31-34, and 36-39 under 35 U.S.C. § 103(a) as being 15
unpatentable over Nickolls; and to reject claims 5, 10, 15, 20, 25, 30, 35, and 16
40 under 35 U.S.C. § 103(a) as being unpatentable over Nickolls in view of 17
Eberhart is reversed. 18
No time period for taking any subsequent action in connection with 19
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v). 20
21
REVERSED 22
23
mev 24
25
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