STRLEK, Kresimir

Patent Trials and Appeals Board

Apr 14, 2021

2020005454 (P.T.A.B. Apr. 14, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/356,726 05/07/2014 Kresimir Strlek ABAC1025US 7694
78284 7590 04/14/2021
Charles H Jew
236 West Portal Avenue
Suite 533
San Francisco, CA 94127
EXAMINER
MILLER, CHRISTOPHER E
ART UNIT PAPER NUMBER
3785
MAIL DATE DELIVERY MODE
04/14/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KRESIMIR STRLEK
____________

Appeal 2020-005454
Application 14/356,726
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and
WILLIAM A. CAPP, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Sept. 17, 2019, hereinafter “Final
Act.”) rejecting claims 22, 26–28, 31, 32, 34, 38–40, 43, and 46–53. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Kresimir Strlek, the sole inventor, is identified as the real
party in interest in Appellant’s Appeal Brief (filed Apr. 21, 2020, hereinafter
“Appeal Br.”). Appeal Br. 3.
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SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellant’s invention relates to a neurophysiological stimulation
device. Spec. 1, ll. 15–16.
Claims 22, 27, 32, and 34 are independent. Claim 22 is illustrative of
the claimed invention and reads as follows:
22. A neurophysiological stimulation device, for
stimulating a living being by transmitting movements
generated by the stimulation device to the living being,
which comprises a movement mechanism that includes at
least one drive unit and a movement unit having a moving
plate, wherein the movement unit is configured to interact
with an overlay-cover device that is placed on the moving
plate of the movement unit and wherein the overlay-cover
device has a support side that is on top of the moving plate
and a transmission side for transmitting and/or relaying
movements received by the support side to the living being,
wherein the moving plate has a support surface whereby
movements generated by the movement unit are transmitted
to the living being that is adjacent to the movement unit, and
wherein the at least one drive unit is coupled to the
movement unit, and wherein
the at least one drive unit comprises an eccentric pin
that is connected to the movement unit wherein the eccentric
pin, which has an eccentric bearing, is connected by a belt to
an electric motor whereby the at least one drive unit is
configured as an eccentric drive unit and rotates the
movement unit eccentrically when in operation, and the
movement unit rests on a plurality of support elements of
the movement mechanism when at rest and lifts from at
least one of the plurality of support elements at least
temporarily during operation as a result of rotation caused
by the at least one drive unit, wherein the plurality of
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support elements that contact the movement unit have
different lengths or heights and wherein the overlay-cover
device, which comprises a plurality of hollow spaces that
are partially filled with an oscillating mass comprising
granules, is placed on the moving plate of the
neurophysiological stimulation device which transmits the
movements generated by the stimulation device to the living
being and is designed as a passive support mechanism
configured in the form of a mat or plate, the transmission
side having a plurality of protruding stimulation elements
that are arranged in a structural unit and that transmit the
movements generated by the stimulation device for
neurophysiological stimulation to the living being and
wherein the at least one drive unit produces a three-
dimensional oscillation with a Schumann frequency.

REJECTIONS

I. The Examiner rejects claims 22, 26–28, 31, 32, 34, 38–40, 43,
and 46–53 under 35 U.S.C. § 112(a) as failing to comply with
the enablement requirement. 2

2 The Examiner also objected to Figures 5B and 5C of Appellant’s Drawings
for introducing new matter into the original disclosure. See Final Act. 2–3.
MPEP § 2163.06 (II) (9th Ed., Rev. 10, June 2020) states that “[i]f both the
claims and specification contain new matter either directly or indirectly, and
there has been both a rejection and objection by the examiner, the issue
becomes appealable and should not be decided by petition.” In this case,
however, the issue of new matter is not the subject of both an objection and
a rejection, and, thus, the issue is not appealable. Accordingly, the
Examiner’s objection to Figures 5B and 5C of Appellant’s Drawings for
introducing new matter into the original disclosure is reviewable by petition
under 37 C.F.R. § 1.181.

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II. The Examiner rejects claims 22, 26–28, 31, 32, 34, 38–40, 43,
and 46–53 under 35 U.S.C. § 112(b) as being indefinite based
on the omission of essential elements.

ANALYSIS
Rejection I
Each of independent claims 22 and 32 requires, inter alia, an
eccentric drive unit having an eccentric pin connected to a movement
unit, wherein when the drive unit eccentrically rotates the movement
unit during operation, the movement unit is lifted at least temporarily
from at least one of a plurality of support elements. Appeal Br. 12, 14
(Claims App.). Of similar scope, independent claim 27 requires, inter alia,
an eccentric drive unit having an eccentric pin connected to a movement
unit, wherein when the drive unit eccentrically rotates the movement
unit during operation “support elements provided on an edge of the
movement unit . . . alternatingly contact and do not contact the
movement unit during operation.” Id. at 13. Each of independent
claims 22, 27, and 32 further requires, inter alia, “produc[ing] a three-
dimensional oscillation with a Schumann frequency,” whereas independent
claim 34 recites “produc[ing] a three-dimensional oscillation in the form of
swiveling or wobbling movement with a Schumann frequency.” Id.
at 12–15 (Claims App.).
The Examiner determines that the above noted “subject matter is not
described in the present disclosure in such a way as to enable one skill in in
the art to make and/or use the invention without undue experimentation.”
See Final Act. 4 (citing In re Wands, 858 F.2d 731 (Fed. Cir. 1988)), 6, 7.
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According to the Examiner “[t]he amount of direction provided by the
inventor is insufficient because the disclosure lacks a clear explanation as to
how the components of the drive unit are operationally coupled to produce
the claimed three-dimensional oscillating movement.” Id. at 5 (emphasis
added). In particular, the Examiner determines that the claims fail to comply
with the enablement requirement because “it is unclear by what mechanism
the eccentric drive unit allows the movement unit to be lifted from the at
least one support element.” Id. The Examiner explains that paragraph 31 of
the instant published application3 “describes the use of columns on the edges
of the device which will cause the movement unit to be lifted and provide a
wobbling motion,” whereas paragraph 28 “states that ‘a lifting movement of
the pin or shaft does not occur.’” Id.
The test for compliance with the enablement requirement is whether
the disclosure, as filed, is sufficiently complete to enable one of ordinary
skill in the art to make and use the claimed invention without undue
experimentation. Wands, 858 F.2d at 737. The PTO bears the initial burden
when rejecting claims for lack of enablement.
When rejecting a claim under the enablement requirement of
section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by
the description of the invention provided in the specification of
the application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the
scope of enablement. If the PTO meets this burden, the burden
then shifts to the applicant to provide suitable proofs indicating
that the specification is indeed enabling.

3 US 2015/0150745 A1, published June 4, 2015 (hereinafter “Strlek”).
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In re Wright, 999 F.2d 1557, 1561–62 (Fed. Cir. 1993) (citing In re
Marzocchi, 439 F.2d 220, 223–24 (CCPA 1971)). In this case, Appellant’s
Specification describes an eccentric drive unit 42 including electric
motor 43, belt 44, eccentric pin 46 coupled to movement unit 41, and
eccentric bearing 45. Spec. 22, ll. 25–34; Strlek, para. 68. The Specification
further describes movement unit 41 as “supported on supports” when in a
resting state. Spec. 14, ll. 10–12; Strlek, para. 31. According to Appellant’s
Specification, “the supports are adjustable in length and height,” can “be
tilted or inclined differently” at the end facing movement unit 41, “have an
elastic or deformable end piece,” such as, “a vibration damper,” and are
located on the edge of movement unit 41. Spec. 14, ll. 20–25; Strlek,
paras. 31, 35. Furthermore, the Specification states that when
an eccentric rotational motion is implemented, then the moving
unit [41] begins to vibrate. That is, the moving unit [41] is no
longer in contact with all supports at the same time, but is set
into three-dimensional rotation as a result of the different
support lengths, the elasticity of the rubber elements and the
eccentric rotation, so that a wobbling motion is realized.

Spec. 14, ll. 30–37; Strlek, para. 31. Thus, the Specification describes
Appellant’s drive unit 42 “as a wobbling and/or swiveling unit” that
generates a “wobbling movement . . . configured as a circular path, elliptical
path or the like which, in addition to the movement in the plane, also
includes a component running transversely to the plane.” Spec. 11,
ll. 35–36; Spec. 12, ll. 14–17; Strlek, para. 27. The Specification further
explains that because
movement unit [41] is set into circular or planar motion by the
eccentric drive unit during operation . . . [and] support elements
. . . provided on the edge of the movement unit . . . alternatingly
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contact and do not contact the movement unit [41] . . . the
[resulting] circular motion has a further direction of movement
transversely to a circular path and the three-dimensional
oscillation is realized.

Spec. 15, l. 37–Spec. 16, l. 7; Strlek, para. 35. According to the
Specification, movement unit 41 “does not perform a lifting movement via a
corresponding actuator,” that is, it “forgo[es] a separate lifting movement of
an actuator.” See Spec. 12, ll. 30–35; Strlek, para. 28.
In light of the Specification’s descriptions noted supra, we appreciate
that when movement unit 41 oscillates transversely to a circular or planar
motion generated by eccentric drive unit 42, movement 41 is not in “contact
with all supports at the same time,” as support elements 47, 49 have different
lengths and/or inclinations. See Appeal Br. 9. However, this merely
describes the result of movement unit 41 exhibiting a three-dimensional
oscillation, namely, not being in “contact with all supports at the same time,”
but not the cause of movement unit 41 exhibiting the three-dimensional
oscillation. Without undue experimentation, it is not clear how employing a
plurality of supports 47, 49, having different lengths and/or inclinations,
would “cause the movement mechanism [41] to lift from at least one of the
plurality of supports at least temporarily during operation as a result of
[eccentric] rotation caused by the at least one drive unit [42].” Examiner’s
Answer (dated May 28, 2020, hereinafter “Ans.”) 10.
Furthermore, the Examiner is correct that if pin 46 is fixed to
movement 41, it is not clear how movement 41 can also pivot vertically due
to support elements 47, 49 having different lengths and/or inclinations; if
movement 41 pivots vertically, then pin 46 is not fixed to movement 41. Id.
We, thus, agree with the Examiner’s assessment that it is unclear how
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eccentric pin 46 “is connected to the movement unit 41 . . . in a manner that
allows the movement unit [41] to rotate and lift off of support element(s) . . .
yet the pin [46] will not also be lifted.” Id. at 12. In particular, the
Examiner is correct that
[i]f the pin is fixed to the movement unit, then vibration created
by the eccentric bearing (45) would be expected to be
horizontal vibration instead of pivoting the movement unit (41)
up and down. If the support elements (49) cause the movement
unit (41) to pivot as it rotates . . . then the pin (46) must not be
fixed to the movement unit (41).

Id. at 10.
In addition, we appreciate Appellant’s position that an unbalanced
rotation of movement 41, i.e., three-dimensional oscillation, can be
generated by:
(1) locating pin 46 “away from the center of the movement unit [41]”;
(2) positioning pin 46 at an inclined angle to movement unit 41;
(3) intermittent friction between movement unit 41 and different end
pieces 47;
(4) shifting granules held in the device;
(5) employing an uneven weight distribution; and
(6) accommodating loads of up to 200 kg. See Appeal Br. 6–7.
However, such features are not recited in the claims and do not explain how
without undue experimentation a skilled artisan would employ a plurality of
supports 47, 49, having different lengths and/or inclinations, to cause
movement unit 41 to lift temporarily from supports 47, 49 when
movement 41 rotates eccentrically. See also Ans. 10–12. Moreover, if
movement unit 41 is “supported on supports [47, 49]” when in a resting state
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(see Spec. 14, ll. 10–12; Strlek, para. 31), without undue experimentation a
skilled artisan would not know how to lift movement unit 41 from
supports 47, 49 in an active state when movement unit 41 rotates
eccentrically in-plane.
We are also not persuaded by Appellant’s argument that because
movement unit 41 is rectangular, when moving in a circular-like path, end
pieces 47 (supports) “will not simultaneously contact the movement unit,”
that is, “[a]s the movement unit 41 rotates, it will lose contact with one of
the end pieces 47.” See Reply Brief (filed July 17, 2020, hereinafter “Reply
Br.”) 2. Once more, Appellant is merely describing the result of movement
unit 41 exhibiting a three-dimensional oscillation, namely, not being
simultaneously in contact with all supports 49 (end pieces 47), but not the
cause of movement unit 41 exhibiting the three-dimensional oscillation.
In regards to the limitation of producing three-dimensional
oscillations with “a Schumann frequency,” Appellant’s Specification defines
a “Schumann frequency” as “a resonant frequency of the human body at
which the body itself begins to resonate.” Spec. 13, ll. 19–20; Strlek,
para. 29. However, the Examiner is correct that “it is unclear how the
resonant frequency of a particular human is determined, as the originally
filed disclosure does not disclose a method of measuring such a resonant
frequency.” Ans. 15.
Although we appreciate that known methods exist to determine the
resonant frequency of an inanimate object, i.e., bridge, automobile, etc., it is
not clear from Appellant’s disclosure whether a skilled artisan would
recognize that such methods are also applicable to measuring a resonant
frequency of a human being or whether an entirely different method is
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required. In particular, Appellant’s disclosure lacks information regarding
the state of the prior art (measuring a Schumann frequency), the amount of
direction provided by the inventor (no indication on how to measure a
Schumann frequency), the level of predictability in the art (whether known
measurement methods are applicable to measuring a Schumann frequency),
and, fails to provide any working examples. See Wands, 858 F.2d at 737
(Factors 3, 5, 6, and 7).
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 112(a) of independent claims 22, 27, 32, and 34, and their
respective dependent claims 26, 28, 31, 38–40, 43, and 46–53, as failing to
comply with the enablement requirement.

Rejection II
The Examiner finds that each of independent claims 22, 27, 32,
and 34 fails to recite “the element(s) which couple the at least one drive unit
to the movement unit and movement mechanism,” and, on that basis,
determines them to be indefinite. See Final Act. 8–9.
Appellant argues that the claims recite an “eccentric bearing,” which
in conjunction with “eccentric drive unit 42 causes the movement unit 41 to
move eccentrically.” Appeal Br. 10–11.
The Examiner responds that the rejection does not merely refer to
“how the at least one drive unit is coupled to the movement mechanism and
movement unit,” but rather, how the at least one drive unit in conjunction
with the movement mechanism and movement unit “produce the resulting
lifting movements while rotated eccentrically.” Ans. 18. The Examiner
explains that “[t]he eccentric pin and bearing produce an eccentric rotation,
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but these structures alone do not produce lifting movements.” Id.
We appreciate the Examiner’s assessment that “there must be some
structure such as perhaps a pivoting connection or a flexible joint which
would allow the plate to be lifted off of the support elements while a lifting
movement of the eccentric pin or shaft does not occur.” Id. at 19. However,
when making an indefiniteness rejection based on the omission of essential
matter, the Examiner must provide an explanation for concluding that the
inventor regards the omitted matter to be essential to the invention. See
MPEP § 2172.01. In this case, the Examiner fails to provide such an
explanation, and, in fact, Appellant’s disclosure does not have any
description of a structure that couples drive unit 42, in general, and pin 46, in
particular, to movement unit 41, to produce the resulting lifting movement of
movement unit 41 as movement unit 41 rotates eccentrically.
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 112(b) of independent claims 22, 27, 32, and 34, and their
respective dependent claims 26, 28, 31, 38–40, 43, and 46–53, as being
indefinite based on the omission of essential elements.

CONCLUSION

Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
22, 26–28,
31, 32, 34,
38–40, 43,
46–53
112(a) Enablement 22, 26–28, 31,
32, 34, 38–40,
43, 46–53

22, 26–28,
31, 32, 34,
112(b) Indefiniteness 22, 26–28,
31, 32, 34,
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38–40, 43,
46–53
38–40, 43,
46–53
Overall
Outcome
22, 26–28, 31,
32, 34, 38–40,
43, 46–53

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED