Ex Parte Souder

Patent Trial and Appeal Board

Sep 28, 2017

12940610 (P.T.A.B. Sep. 28, 2017)

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.
12/940,610 11/05/2010 James J. Souder BIO-10003/38 7869
13173 7590
Blue Filament Law
700 E. Maple Road
Suite 450
Birmingham, MI 48009
EXAMINER
TALPALATSKI, ALEXANDER
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
ag @bluefil amentlaw.com
ap @bluefil amentlaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES J. SOUDER
Appeal 2016-006738
Application 12/940,6101
Technology Center 2800
Before MARK NAGUMO, N. WHITNEY WILSON, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals2 under 35 U.S.C. § 134(a) from the Examiner’s
decision3 finally rejecting claims 1-3, 7, 9-12, 14, 15, 19, and 20 in the
above-identified application. We have jurisdiction pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 Appellant identifies the inventor James J. Souder as the real party in
interest. Appeal Br. 1, Feb. 27, 2015.
2 Appeal Br.; Reply Br., Aug. 31, 2015.
3 Final Office Action, Oct. 15, 2014 [hereinafter Final Action]; Examiner’
Answer, June 29, 2015 [hereinafter Answer],
Appeal 2016-006738
Application 12/940,610
BACKGROUND
Appellant’s invention relates to a therapeutic4 method and apparatus
for treating a subject by exposing the subject to high intensity permanent
magnets in a particular configuration. See Spec. Iflj 2-3, 7.
Independent claims 1 and 9 are representative:
1. A process for adjusting a magnetic field characteristic
projecting from a magnetic treatment apparatus comprising:
laying out a plurality of planar magnets having a planar
geometric shape in a rigid flat planar pattern, each of said
plurality of planar magnets that range in pole width from A to 2
inches across with a nominal thickness of 0.060 to 0.150 inches
oriented with pole face perpendicular toward the body in a
treatment orientation, said plurality of magnets having a total
weight of less than one International pound, with a first magnet
of said plurality of magnets positioned with north flux
positioned adjacent to a south flux of a second magnet of said
plurality of magnets, said plurality of magnets being semi­
circular magnets or nested planar geometric shapes arranged
with their side walls abutting adjacent elements, and having
pole faces oriented into nested groupings of alternating polarity
pole faces with said nested groupings of alternating polarity
pole faces oriented perpendicular toward the body in a
treatment orientation such that the magnetic field characteristic
projecting from said plurality of magnets is applied
perpendicularly to a treatment subject;
repositioning one of said plurality of magnets to define a
reoriented array to adjust the magnetic field characteristic
projecting from the magnetic apparatus relative to the pattern of
said plurality of magnets; and
applying said reoriented array to, or proximal to a
treatment subject.
4 We do not address whether or not the invention is operable for its alleged
therapeutic purpose under 35 U.S.C. § 101 and/or § 112, as this issue is not
before us on appeal.
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Appeal 2016-006738
Application 12/940,610
9. A magnet apparatus comprising:
a plurality of discrete, separate, and removable high
energy magnets with energy products higher than 3 MGOe, said
plurality of magnets having a physical junction between at least
two adjacent magnets of said plurality of magnets and a total
weight of less than one International pound, with a first magnet
of said plurality of magnets positioned with north flux
positioned adjacent to a south flux of a second magnet of said
plurality of magnets;
at least one gap between adjacent magnets of said
plurality of magnets', and
a securement for retaining said plurality of discrete
magnets as an array in proximity to a subject in need of therapy.
Appeal Br. 15-17 (emphasis of key limitations added). Claim 14 is also
independent, and recites an apparatus similar to that of claim 9. See id. at
17-18.
The Examiner maintains the following grounds of rejection:
1. Claims 1-3 and 7 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Catlett.5 See Final Action 3-5.
2. Claims 9-12, 14, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bove6 in view of Qui7 and Bakst.8 9See
id. at 5-8.
3. Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bove in view of Qui, Bakst, and Bove ’446.9 See id. at 5-
8.
5 Catlett, US 6,348,033 B1 (issued Feb. 19, 2002).
6 Bove et al., US 6,846,379 B1 (issued Jan. 25, 2005).
7 Qui et al., US 6,360,457 B1 (issued Mar. 26, 2002).
8 Bakst, US 5,707,333 (issued Jan. 13, 1998).
9 Bove et al., US 6,652,446 B1 (issued Nov. 25, 2003).
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Appeal 2016-006738
Application 12/940,610
Appellant argues independent claims 9 and 14 together and do not
argue for the separate patentability of any of the dependent claims. See
Appeal Br. 10-13. Therefore, consistent with 37 C.F.R. § 41.37(c)(l)(iv),
we limit our discussion to claims 9 and 14. Claims 10-12, 15, 19, and 20
stand or fall with their respective base claims 9 and 14. See Appeal Br. 11,
13.
DISCUSSION
Rejection based on Catlett (Claims 1—3, 7)
Catlett discloses a self-adjusting, magnetic penile band. See Catlett,
Abstract. Figure 1 of Catlett is reproduced below:
Figure 1 is a perspective view of the magnetic penile band that includes a
string of rod-shaped permanent magnets 26 arranged in series along the
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Appeal 2016-006738
Application 12/940,610
support band 14, with some spacing between the magnets 26. Catlett 5:62—
63, 9:8-19. Figure 15, reproduced below with the Examiner’s annotations,
shows the band in the disclosed operable configuration:
Final Action 4. Figure 15 is a cross-sectional view of the band around a
penis 12. Catlett 7:3-7.
The Examiner finds that the band has a planar shape as required by
claim 1. See Final Action 3 (citing Catlett 11:51-54 (stating that magnetic
members 26 may be “cylindrical, rod, or linear square-like, magnetically and
physically resilient, flexible magnets”)). The Examiner also finds that
Catlett teaches that the magnets are “oriented with pole face perpendicular
toward the body in a treatment orientation” because, as shown in the
annotated Figure 15 above, a solid line may be drawn representing the body,
and the dashed line representing the pole face is perpendicular to the body.
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Appeal 2016-006738
Application 12/940,610
See id. In the Answer, the Examiner also finds that “the human body has
many curved portions, therefore the pole face is inherently perpendicular
towards the body at least at some areas on the body.” Answer 2-3.
As Appellant correctly points out, in the disclosed operative
orientation as shown in Figure 15, the north and south poles of the magnets
face upwards and downwards in relation to the page, which is parallel to the
surface of the subject. See Appeal Br. 9. Moreover, in Catlett’s device, the
magnets do not have “a planar geometric shape in a rigid flat planar pattern”
as claim 1 requires. See id. at 15. While the Examiner is correct that the
band is rigid in one dimension (along the direction of the magnetic rods), see
Appeal Br. 2, rigidity in one dimension does not mean that the magnets are
in a “rigid flat planar pattern.” Catlett’s Figure 15 shows that the band 14
supporting the magnets is flexible and does not hold the magnets in a rigid,
geometric flat pattern.
For the above reasons, we reverse the Examiner’s rejection of claim
1-3 and 7 under 35 U.S.C. § 103(a).
Rejections based on Bove, Qui, and Bakst
(Claims 9—12, 14, 15, 19, and 20)
Bove discloses a flexible magnetic insole for a shoe, containing
ferromagnetic materials in an elastic binder such as neoprene. Bove 3:30—
32, Abstract, Fig. 1. The magnetic material may be configured with the
magnetic polarity in alternating patterns. See id. at 4:37-39, 7:25-30, Fig. 8.
Qui discloses a shoe with tablet-shaped magnets in the sole, and an
insole with magnet cavities for receiving the magnets, that is placed on top
of the sole. Id. at 3:4, 16-30, 6:16-26, Abstract, Figs. 1-3.
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Application 12/940,610
Bakst teaches that permanent magnets with a strength of from about
1000 Gauss to about 5000 Gauss may be used for magnet therapy. See Bakst
3:17-31.
The Examiner finds that Bove teaches a magnetic apparatus disclosing
limitations of claim 9, but that “Bove does not explicitly teach the specific
value of claimed weight of the magnets of the claimed gap, or the claimed
energy product.” Final Action 5. Regarding the weight, the Examiner finds
that in a shoe apparatus, the magnets would inherently be less than an
international pound. See id. According to the Examiner, the magnet weight
is a result effective variable, and finding the optimum weight value for the
magnets would have been a matter of routine optimization. See id. at 6.
The Examiner also finds that Qui teaches a similar apparatus that uses
magnets having gaps between them. See id. at 5-6. According to the
Examiner, “it would have been obvious to one of ordinary skill in the art at
the time the invention was made to have modified the configuration of Bove
with gaps between magnets as shown by Qui in order to provide a more
localized/targeted field application.” Id. at 6.
Further, the Examiner finds that “it would have been obvious to one of
ordinary skill in the art at the time the invention was made to have provided
magnets of the strength as taught by Bakst for the device of Bove/Qui in
order to provide a more effective treatment as disclosed by Bakst.” Id.
(citing Bakst 3:17-24).
Appellant argues that the magnets in Bove are not “discrete, separate,
and removable” as required by claim 9. See Reply Br. 5; Appeal Br. 11.
While this is true, we do not find this argument persuasive of reversible
error. The Examiner finds that modifying the structure of Bove to include
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Application 12/940,610
discrete, gapped, magnetizable portions would have been within the ordinary
skill in the art. See Answer 4. In particular, the Examiner notes that Qui
discloses rigid magnets, with gaps between them and an appropriate support
structure, and that this structure “is also conducive for the intended
application.” Id. Thus, the Examiner has provided a rationale as to how the
combined structure of Bove and Qui meets the “discrete, separate, and
removable” limitation of claim 9, and we are not persuaded of reversible
error in that rationale.
Appellant argues that “separate, movable, rigid magnets . . . would not
be conducive to use as an insole as magnets sliding and being a hard surface
would be unacceptable for this purpose.” Appeal Br. 11-12; Reply Br. 5.
However, Appellant does not direct our attention to supporting evidence, and
we note that Qui discloses an insole with indentations or cavities designed to
hold rigid, tablet-shaped magnets. See Qui 3:4, 16-30, 6:16-26, Abstract,
Figs. 1-3. Thus, the evidence on this record does not persuade us that the art
teaches away from the use of rigid magnets such as disclosed by Qui and
Bakst in an insole.
Appellant also argues that to modify Bove’s insole to achieve 3
MGOe would require “changes in polymer processing,” and would not be a
matter of routine design. Appeal Br. 12. This argument is not persuasive of
reversible error. Appellants do not direct our attention to credible evidence
of record supporting this proposition. As discussed above, the combination
of Bove and Qui may include rigid magnets as disclosed by Qui; therefore,
producing the magnets would not require polymer processing.
For the above reasons, we affirm the Examiner’s rejections of claims
9-12, 14, 15, 19, and 20.
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Appeal 2016-006738
Application 12/940,610
DECISION
We reverse the Examiner’s rejection of claims 1-3 and 7 under
35 U.S.C. § 103(a).
We affirm the Examiner’s rejections of claims 9-12, 14, 15, 19, and
20 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016).
AFFIRMED-IN-PART
9