Ex Parte DiUbaldi et al

Patent Trials and Appeals Board

Mar 28, 2019

14272637 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/272,637 05/08/2014
33766 7590 04/01/2019
COHEN & HILDEBRAND, PLLC
2409 Church Road
CHERRY HILL, NJ 08002
FIRST NAMED INVENTOR
Anthony R. DiUbaldi
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.
GYN5022USCNT1 1577
EXAMINER
GRAND, JENNIFER LEIGH-STEW AR
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
chery lcohen @aol.com
hildebrand.ip@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY R. DIUBALDI and
MICHAEL R. TRACEY 1
Appeal2018-007266
Application 14/272,637
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1 and 3. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Ethicon, Inc. (Appellant) is the applicant as provided in 37 C.F.R. § 1.46
and is identified as the real party in interest. Appeal Br. 2.
Appeal2018-007266
Application 14/272,637
THE CLAIMED SUBJECT MATTER
Appellant's invention relates to "devices and methods for electrical
nerve stimulation." Spec. ,r 2. Claims 1 and 3 are independent. Appeal
Br. 11, 12 (Claims App.). Claim 1, reproduced below, is representative of
the claimed subject matter.
1. An electrical stimulation device for use in a mammal
compnsmg:
a first waveform generator configured to generate a first
waveform having a frequency capable of stimulating a
predetermined target of the mammal;
a second waveform generator configured to generate a
carrier waveform having a frequency capable of passing
through tissue of the mammal;
an amplitude modulation device electrically coupled to
the first and second waveform generators and configured to
modulate the first and carrier waveforms to create a modulated
waveform; the amplitude modulation device is configured
to multiply the carrier waveform and the first waveform to
create the modulated waveform that maintains a modulation
envelope and frequency information of the first waveform and
carrier waveform; and
an electrode electrically coupled to the modulation device
and configured to be positioned substantially adjacent to skin of
the mammal, and adapted to apply the modulated waveform
thereto;
wherein the first waveform has a selected amplitude and
frequency capable of stimulating the predetermined target,
wherein the generated first waveform is itself incapable
of transdermally stimulating the predetermined target;
the carrier waveform has a selected amplitude and
frequency, wherein the frequency of the carrier waveform is
greater than that of the first waveform, wherein the carrier
waveform is capable of passing through the mammal's skin and
tissue to reach the predetermined target, and wherein the
frequency of said generated carrier waveform is itself incapable
of electrically stimulating the predetermined target; and
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the modulated waveform is capable of transdermally
electrically stimulating the predetermined target.
REJECTIONS
I. Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Charters (US 4,938,223, issued July 3, 1990)
and Padjen (US 4,719,922, issued Jan. 19, 1988).
II. Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schondorf (US 5,476,481, issued Dec. 19, 1995)
and Padjen.
DISCUSSION
Rejection I
Independent claim 1 recites an amplitude modulation device that "is
configured to multiply the carrier waveform and the first waveform to create
the modulated waveform that maintains a modulation envelope and
frequency information of the first waveform and carrier waveform." Appeal
Br. 11 (Claims App.). Independent claim 3 recites a step of "amplitude
modulating by multiplying said first waveform with said carrier waveform to
produce a modulated waveform; wherein the modulated waveform maintains
a modulation envelope and frequency information of the first waveform and
the carrier waveform." Id. at 12 (Claims App.). Appellant relies on the
arguments presented for claim 1 in contesting the rejection of claim 3. See
Appeal Br. 9. Thus, we decide the appeal of the rejection based on Charters
and Padjen on the basis of claim 1, and claim 3 stands or falls with claim 1.
See 37 C.F.R. § 4I.37(c)(l)(iv) (permitting the Board to select a single claim
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to decide the appeal as to a single ground of rejection of a group of claims
argued together).
The Examiner finds that Charters's amplitude modulator block 24
satisfies the aforementioned limitations of claim 1. See Final Act. 2; Ans. 6.
Appellant contends that the signal produced at output 30 from amplitude
modulator block 24 "is not produced by multiplying of the amplitudes of the
first waveform (pulse signal 14) and carrier waveform (e.g., trapezoidal
signal 16)." Appeal Br. 6-7 (underlining omitted). In support of this
contention, Appellant submits that the modulated signal (bursts 70) "is equal
in amplitude only to that of the trapezoidal signal 16," rather than "an
amplitude representative of multiplying the amplitude of the pulse signal 14
and trapezoidal signal 16." Id. at 7. Thus, Appellant argues that Charters
"fails to disclose the amplitude modulator (24) as being 'configured to
multiply the carrier waveform and the first waveform to create the
modulated waveform that maintains a modulation envelope and frequency
information of the first waveform and carrier waveform,'" as recited in
claim 1. Id. According to Appellant, claim 1 requires that the modulated
waveform maintain a modulation envelope of the first waveform and the
carrier waveform, and the only way to do this "is for the claimed modulated
waveform to have a modulation envelope representative of multiplying the
amplitudes of the first waveform and the carrier waveform." Reply Br. 2.
Appellant admits that the modulated waveform of Charters "maintains the
modulation envelope of the trapezoidal signal," but contends that "the
modulation envelope of the pulse burst 14 is not maintained, as called for in
claim 1." Id.
The Examiner reproduces an excerpt from chapter 10 of The Scientist
and Engineer's Guide to Digital Signal Processing to show what amplitude
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modulation means to those of skill in the art, and, thus, how a person having
ordinary skill in the art would understand the amplitude modulation of
Charters. See Ans. 4--5. The caption beneath Figure 10-14 from the
textbook states that "[i]n the time domain, amplitude modulation is achieved
by multiplying the audio signal, (a), by the carrier signal, ( c ), to produce the
modulated signal, ( e )." Id. at 5.
Appellant does not dispute that the explanation of "amplitude
modulation" set forth in the textbook cited by the Examiner accurately
reflects what amplitude modulation means to those of ordinary skill in the
art, nor does Appellant proffer any evidence to show that there is any other
way to achieve amplitude modulation, without multiplying the signals,
known in the art. See Appeal Br. 6-9; Reply Br. 2--4. Rather, Appellant
directs our attention to Charters' s disclosure that the modulated signal
resulting from the amplitude modulation of pulse signal 14 and trapezoid
signal 16 comprises stimuli burst 70 having stimuli corresponding in
frequency to pulse signal 14 and in amplitude to the magnitude of trapezoid
signal 16, and contends this means that amplitude modulator block 24 does
not multiply pulse signal 14 and trapezoid signal 16 to produce the
modulated signal. Appeal Br. 6-7 (citing Charter 3:44--50); Reply Br. 4.
Charters does disclose that when pulse signal 14 is amplitude
modulated with trapezoid signal 16, the resulting signal comprises "stimuli
burst 70, having stimuli corresponding in frequency to pulse signal 14 and in
amplitude to the magnitude of trapezoid signal 16." Charters 3 :44--50
(boldface omitted). However, a person having ordinary skill in the art would
not necessarily consider this to be inconsistent with the amplitude modulator
block multiplying pulse signal 14 and trapezoid signal 16 together. First, the
phrase "corresponding ... in amplitude to" has a meaning that encompasses,
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but is somewhat broader than, equal to. Further, a brief review of the circuit
diagram in Figure 4 of Charters indicates that pulse signal 14 is not
specifically scaled to have a particular amplitude; rather, its amplitude
appears to be derived from the reference 4 volts shown throughout the
circuit diagram. Trapezoid signal 16, on the other hand, has an amplitude
set in part by a multiplier input at amplitude determining module 90. See id.,
Figs. 1, 4; 4:37-53. Thus, viewing the amplitude of pulse signal 14 as
essentially a reference value or level, one would reasonably consider the
amplitude of the product of multiplying pulse signal 14 and trapezoid signal
16 to correspond effectively to the amplitude of trapezoid signal 16.
Accordingly, we are not persuaded that Charters's reference to a modulated
signal corresponding in amplitude to the magnitude of trapezoid signal 16 is
inconsistent with amplitude modulator block 24 multiplying pulse signal 14
and trapezoid signal 16 to produce the modulated signal, especially in light
of the evidence of the conventional meaning of "amplitude modulation"
supplied by the Examiner.
We do not agree with Appellant that claim 1 requires the modulated
signal to maintain the modulation envelope of both the first waveform and
the carrier waveform. The pertinent portion of claim 1 reads "modulated
waveform that maintains a modulation envelope and frequency information
of the first waveform and carrier waveform." Appeal Br. 11 (Claims App.).
Notably, claim 1 recites only that the modulated waveform maintains a
modulation envelope (singular) of the first waveform and carrier waveform,
but does not recite that the modulated waveform maintains the modulation
envelopes (plural) of the first waveform and carrier waveform. Moreover, a
review of the waveforms illustrated in Appellant's Figure 2a indicates that
modulated waveform 206 has an upper envelope that is comparable to the
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shape of waveform 202, but the modulated waveform 206 does not have an
envelope that matches the envelope of waveform 202 or the envelope of
carrier waveform 204. The description in the Specification similarly
indicates that the modulated signal 206 has a "low frequency envelope,"
which we note matches the low frequency of waveform 202 shown in Figure
2a. Spec. ,r 46. Thus, the broadest reasonable construction of the claim
language "modulated waveform that maintains a modulation envelope ... of
the first waveform and carrier waveform," consistent with the Specification,
is that the modulated waveform has an envelope that matches the shape of
either the first waveform or the carrier waveform. As admitted by
Appellant, the modulated waveform of Charters "maintains the modulation
envelope" of trapezoid signal 16. See Reply Br. 2. We agree because, as in
Appellant's example in Figure 2a of the Specification, the upper envelope of
Charters's modulated signal (bursts 70) shown in Figure 3 matches the shape
of the low-frequency trapezoid signal 16. Thus, Charters satisfies the
"maintains a modulation envelope" limitation of claim 1.
Appellant argues that Charters teaches away from substituting "a
conventional amplitude modulator" (i.e., one that multiplies the first
waveform and a carrier waveform), as discussed in Appellant's
Specification, for Charters' s amplitude modulator block 24, which Appellant
asserts does not multiply the signals. Appeal Br. 8. This argument is
unavailing because the Examiner does not propose to modify Charters by
making a substitution; rather, the Examiner finds that Charters's amplitude
modulator block 24 performs such a multiplication. The question whether a
reference "teaches away" from the invention is inapplicable to an
anticipation analysis. Celeritas Techs. Ltd. v. Rockwell Int'! Corp., 150 F.3d
1354, 1361 (Fed. Cir. 1998) (The prior art was held to anticipate the claims
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even though it taught away from the claimed invention.). We appreciate
Appellant's observation that the Examiner's rejection is based on
obviousness under 35 U.S.C. § 103(a) (see Reply Br. 2-3), but the analysis
with respect to amplitude modulating by multiplying the first waveform and
the carrier waveform to create a modulated waveform that maintains a
modulation envelope as claimed is the same as an anticipation analysis; the
Examiner does not propose to modify Charters to replace or modify the
amplitude modulator. 2
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 1, or claim 3, as unpatentable over Charters and Padjen.
Accordingly, we sustain the rejection of claims 1 and 3 under
35 U.S.C. § 103(a) as unpatentable over Charters and Padjen.
Re} ection II
Appellant argues claims 1 and 3 together in contesting the rejection
based on Schondorf and Padjen. Appeal Br. 9-10. Thus, we decide the
rejection on the basis of claim 1, with claim 3 standing or falling with claim
I. See 37 C.F.R. § 4I.37(c)(l)(iv).
The only argument Appellant presents against the rejection of claim 1
as unpatentable over Schondorf and Padjen is that Schondorf's modulator 24
"is not equivalent to that of the claimed 'amplitude modulation device' since
the modulator 24 in [Schondorf] does not produce a 'modulated waveform
2 The Examiner relies on Padjen only to show that it was known in the art at
the time of Appellant's invention that a high frequency carrier wave is
necessary to permit transdermal penetration of the skin barrier, and that the
high frequency carrier wave is attenuated as it passes through the skin,
leaving the low frequency signal to stimulate nerves and/or muscles. Final
Act. 3 (citing Padjen 1:22-31).
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that maintains a modulation envelope and frequency information of the first
waveform and carrier waveform." Appeal Br. 10. According to Appellant:
Id.
Rather, [SchondorfJ discloses heterodyning two frequencies not
too far apart wherein at another point in time they cancel one
another, as disclosed in the Background of the Invention
section. ([SchondorfJ: Col. 2, 11. 28-31)[.] As a result of such
cancelation of the two current waveforms, the produced
waveform in [SchondorfJ does not maintain the modulation
envelope and frequency information of the first waveform and
carrier waveform, as called for in claims 1 & 3.
We agree with Appellant that Schondorf discusses heterodyning in the
context of the invention disclosed therein, and not solely in the context of
the background of the invention, as the Examiner suggests. See Reply
Br. 4--5; Ans. 8-9. However, Schondorf discusses heterodyning causing
currents to cancel each other out only in the context of "heterodyning of two
frequencies not too far apart ... , depending on the phasing."
Schondorf 2:27-31.
The Examiner relies on the system illustrated in Figure 5 of
Schondorf, and, in particular, reads the claimed amplitude modulation
device on element 24 in Figure 5. Final Act. 3. Schondorf discloses feeding
the waveforms produced by generators 20 and 21, which have frequencies
not too far apart (i.e., 4000 Hz and 3990 Hz) to mixer circuit 22, where
heterodyning takes place, and then passing the resulting waveform through
heterodyne amplifier 23. Schondorf 5:48---60. The amplified signal then
passes to modulator 24 and is modulated with a sinusoidal signal having a
frequency of about 0.1 to 1 Hz (not at all close to the frequencies that make
up the amplified signal) generated by waveform generator 27. Id. 5:61---65.
Schondorf gives no indication that any heterodyning takes place during the
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modulation of the amplified signal fed from heterodyne amplifier 23 with
the sinusoidal signal fed from waveform generator 27, nor does Appellant
provide any evidence or technical reasoning to explain why one of ordinary
skill in the art would expect any heterodyning to take place during the
modulation at modulator 24, much less heterodyning resulting in
cancellation of the signals at any point.
Thus, even assuming that cancellation of the signals at any point
would be inconsistent with maintaining a modulation envelope and
frequency information of the first waveform and carrier waveform, as
claimed, Appellant's arguments regarding heterodyning do not appear to be
applicable to the modulation that takes place at Schondorf s modulator 24.
Further, Appellant does not persuasively explain why the waveform
illustrated in Figure 4, which results from the system shown in Figure 5,
fails to maintain a modulation envelope and frequency information of the
amplified signal and the sinusoidal signal modulated at modulator 24.
For the above reasons, Appellant fails to apprise us of error in the
rejection of claim 1, or claim 3, as unpatentable over Schondorf and Padjen.
Accordingly, we sustain the rejection of claims 1 and 3 under
35 U.S.C. § 103(a) as unpatentable over Schondorf and Padjen.
DECISION
The Examiner's decision rejecting claims 1 and 3 under
35 U.S.C. § 103(a) as unpatentable over Charters and Padjen is AFFIRMED.
The Examiner's decision rejecting claims 1 and 3 under
35 U.S.C. § 103(a) as unpatentable over Schondorf and Padjen is
AFFIRMED.
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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)(l )(iv).
AFFIRMED
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