STRLEK, Kresimir Download PDFPatent Trials and Appeals BoardApr 14, 20212020005454 (P.T.A.B. Apr. 14, 2021) Copy Citation 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. Appeal 2020-005454 Application 14/356,726 2 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 Appeal 2020-005454 Application 14/356,726 3 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. Appeal 2020-005454 Application 14/356,726 4 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. Appeal 2020-005454 Application 14/356,726 5 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”). Appeal 2020-005454 Application 14/356,726 6 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 Appeal 2020-005454 Application 14/356,726 7 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 Appeal 2020-005454 Application 14/356,726 8 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 Appeal 2020-005454 Application 14/356,726 9 (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 Appeal 2020-005454 Application 14/356,726 10 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, Appeal 2020-005454 Application 14/356,726 11 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, Appeal 2020-005454 Application 14/356,726 12 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 Copy with citationCopy as parenthetical citation