University of South Carolina

Patent Trials and Appeals Board

Feb 2, 2022

2021004736 (P.T.A.B. Feb. 2, 2022)

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. 15/915,388 03/08/2018 Manuel F. Casanova USC-541 (1237) 3995 22827 7590 02/02/2022 DORITY & MANNING, P.A. POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 EXAMINER FAIRCHILD, MALLIKA DIPAYAN ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 02/02/2022 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): USDOCKETING@DORITY-MANNING.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MANUEL F. CASANOVA and ESTATE M. SOKHADZE Appeal 2021-004736 Application 15/915,388 Technology Center 3700 Before BENJAMIN D. M. WOOD, BRETT C. MARTIN, and WILLIAM A. CAPP, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-4 and 7-14, which constitute all the claims pending in this application. Claims 5, 6, and 15-20 were canceled during prosecution. Claims App’x. We have jurisdiction 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(a). Appellant identifies the real party in interest as University of South Carolina. Appeal Br. 3. Appeal 2021-004736 Application 15/915,388 2 We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to a passive resonator and method of use for brain wave entrainment. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for entrainment of brain waves comprising: generating a carrier wave; modulating the carrier wave by an entrainment wave; emitting a resulting modulated carrier wave from a first antenna located 10 cm or less from a surface of a subject's head and directing the emitted modulated carrier wave from the first antenna to a first cortical region of the subject's brain; emitting an identical modulated carrier wave from a second antenna located 10 cm or less from the surface of the subject's head and directing the identical emitted modulated carrier wave from the second antenna to a second, different cortical region of the subject's brain; wherein the modulated carrier waves encourage sympathetic resonance between neurons of the first cortical region, neurons of the second cortical region, and the entrainment waves of the modulated carrier waves, and thereby establish coherence in neuronal firing frequency between the first cortical region and the second cortical region of the subject's brain. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Fischell US 2003/0028072 A1 Feb. 6, 2003 John US 2006/0149337 A1 July 6, 2006 REJECTIONS Claims 1-4, 7, and 10-14 stand rejected under 35 U.S.C. § 102(a)(1) as being anticipated by John. Non-Final Act. 7. Appeal 2021-004736 Application 15/915,388 3 Claims 8 and 9 stand rejected under 35 U.S.C. § 103 as being unpatentable over John and Fischell. Non-Final Act. 9. OPINION Anticipation Appellant argues “that a §102 rejection cannot properly rely upon picking and choosing elements from various embodiments found in John for combination.” Reply Br. 2. Appellant also argues that “[p]icking and choosing only those elements of John common to teaching in the subject application and then stitching those elements together to combine to a new method is not a proper analysis under §102.” Id. In support of these arguments, Appellant points out that the Examiner’s rejection relies on the assertion that John “can” function as claimed, not that it discloses a method that actually functions as is claimed. Id. Appellant also supports these arguments by noting that the Examiner has drawn support from various portions of John, specifically paragraphs 96, 98, 103, and 68, to find that John teaches all of the claimed elements. Appellant is correct “that even if a reference teaches various method steps that conceivably can function in a certain fashion (though Appellant is in no way admitting that such is the case for the teachings of John), this possibility does not support a proper anticipation rejection under 35 U.S.C. § 102.” Reply Br. 2. As Appellant points out, paragraphs 96 and 98 discuss embodiments related to TMS or rTMS treatment while paragraph 68 refers to a different embodiment that teaches a trial and error method (“TAEM”). See Appeal Br. 7-8. This alone is evidence that the Examiner is picking and choosing aspects of John that are not necessarily disclosed as a single embodiment as would be required under a proper anticipation rejection. Appeal 2021-004736 Application 15/915,388 4 It is telling that in responding to Appellant’s arguments, the Examiner states that “the system as taught by John can function as a sympathetic resonator capable of establishing resonance between the entrainment wave and brain elements in targeted regions of the brain.” Ans. 6. The mere fact that a system can function as claimed is not proper evidence of anticipation. Nowhere does John even mention a sympathetic resonator. The Examiner has merely gone through John using Appellant’s Specification as a roadmap to find various teachings within John that meet individual elements. Nowhere in John, however, is there a teaching of a method that would actually operate as claimed, nor does John attempt to achieve the desired result of sympathetic resonance. Essentially, the Examiner has found ingredients disclosed within John to achieve one or more purposes and reconfigured those ingredients to arrive at Appellant’s claimed invention. Even under an obviousness rationale, this would be questionable, but it certainly is improper under anticipation. Accordingly, we do not sustain the Examiner’s rejections as they both rely on this same faulty application of John. Furthermore, Fischell does not cure this deficiency. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 7, 10- 14 102 John 1-4, 7, 10- 14 8, 9 103 John, Fischell 8, 9 Appeal 2021-004736 Application 15/915,388 5 Overall Outcome 1-4, 7-14 REVERSED