Ex Parte Whelan et al

Patent Trial and Appeal Board

Nov 19, 2012

10442448 (P.T.A.B. Nov. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANDREW J. WHELAN, JOHN MARTINEZ, TIMOTHY COX,
STEPHANIE TOY, and JAMES WOODHAMS
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Appeal 2010-005552
Application 10/442,448
Technology Center 3700
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Before: JEFFREY B. ROBERTSON, WILLIAM V. SAINDON, and
THOMAS L. GIANNETTI, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 2, 6-27, and 30-44. We have jurisdiction under
35 U.S.C. § 6(b).

The Claimed Subject Matter
Claim 1, reproduced below with added emphasis, is illustrative of the
claimed subject matter.
1. A portable, self-contained medical therapeutic device
comprising:
an electromagnetic field generator;
an antenna coupled to the generator and arranged to
radiate the electromagnetic field;
a battery coupled to the generator;
an annular ring surrounding the battery;
a wire wound around the annular ring; and
an activator to initiate radiation of the electromagnetic
field, wherein the device is adapted to be disposed over a bodily
tissue to induce an alternating current in the bodily tissue and
promote at least one of communication between cells or cellular
stimulation.

References
The Examiner relies upon the following prior art references:
Struck
Rist
Ko
George
US 3,743,915
US 3,769,575
US 4,850,372
US 6,334,069 B1
Jul. 3, 1973
Oct. 30, 1973
Jul. 25, 1989
Dec. 25, 2001

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Rejections
The Examiner provisionally rejected claim 1 under the doctrine of
non-statutory obviousness-type double patenting over claim 50 of U.S.
patent application number 10/384,101.
The Examiner made the following obviousness rejections under 35
U.S.C. § 103(a):
I. Claims 1, 2, 6-9, 10, 13, 14, 17, and 21-27 over Ko and Rist. 1
II. Claims 11, 12, 15, 16, 18, 19, and 20 over Ko, Rist, and George.
III. Claims 30-38 over George and Struck.

SUMMARY OF DECISION
We REVERSE.

OPINION
We first address Appellants’ arguments with respect to the three prior
art rejections and then address the provisional double patenting rejection.

Rejection I – Ko and Rist
The Examiner found that Ko describes a medical therapeutic device
with a coil (i.e., wound wire) 10 but does not describe “an annular ring
surrounding a battery that provides the DC operating voltage.” Ans. 3. The
Examiner found that Rist shows “this feature of surrounding a battery with

1 The Examiner does not list claims 6-8 in the grounds of rejection but
discusses these claims in the body of the rejection. Ans. 4. Appellants
acknowledge that claims 6-8 are rejected. App. Br. 1. We consider the
Examiner’s omission of claims 6-8 to be a mere typographical error.
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an annular ring.” Id. 2 In particular, the Examiner found that Rist describes
an “annular ring comprising coil 30 surround[ing] battery 41.” Ans. 4. The
Examiner concluded that it would have been obvious “to use the structural
battery containment teaching” of Rist and “substitute the coil functions of
coil[] 10” of Ko. Ans. 4.
Appellants argue that even if coil 30 of Rist were substituted for the
coil 10 of Ko, there is no disclosure of wire wound around the annular ring
as required in claim 1. App. Br. 6.
Accordingly, the dispositive issue for Rejection I is whether the
Examiner properly addressed all the limitations of claim 1; specifically, an
annular ring and a wire wound around the ring. The issue turns on whether
the Examiner’s interpretation of the annular ring and wire of limitations of
claim 1 as reading on Rist’s “annular ring comprising coil 30” is reasonable.
We agree with Appellants that substituting the coil 10 of Ko for the
coil 30 and battery 41 of Rist still leaves the combination short an annular
ring. The claim requires an annular ring and a wire wound around that ring.
On page 4 of the Answer, the Examiner appears to be equating the two:
“[a]n annular ring comprising coil 30.” However, such a construction
effectively reads out the structural requirements for a ring and a coil: “an
annular ring …; a wire wound around the annular ring.” See Stumbo v.
Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing
claim constructions that render phrases in claims superfluous); Bicon, Inc. v.
Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“claims are interpreted
with an eye toward giving effect to all terms in the claim”).

2 Rist describes a metal detector utilizing an R-F oscillator coupled to a
frequency-determining coil. Col. 1, l. 64 to col. 2, l. 9.
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In light of the above, we conclude that the Examiner improperly read
the ring and wire limitations of claim 1 on the coil 30 and associated
structure of Rist. As such, we do not sustain the Examiner’s rejection of
claim 1 or of claims 2, 6-9, 103, 13, 14, 17, and 21-27, rejected therewith.

Rejection II – Ko, Rist, and George
Rejection II involves claims that depend from claim 10, and thus they
include the annular ring feature missing from Ko and Rist as set forth above
in our discussion of Rejection I. The Examiner’s findings with respect to the
additional reference George are not directed to an annular ring or a wire
wound around a ring, and as such, these findings do not cure the underlying
deficiency of Rejection I. See Ans. 5-6 (the Examiner’s findings with
respect to George deal with frequencies, duty cycles, and power levels). We
agree with Appellants that George does not disclose the features missing
from Rist and Ko. App. Br. 7. We therefore do not sustain Rejection II
because it has the same deficiency as Rejection I.

Rejection III – George and Struck
The subject matter of claim 30 involves a method of treatment that
includes a step of providing a device having a battery and an annular ring
surrounding the battery. The Examiner found that “George et al is capable
of eliciting a therapeutic response” and that “Struck discloses an annular
shaped structure 14 surrounding a battery B1.” Ans. 6.4 The Examiner

3 Claim 10 is independent but includes the argued limitations of claim 1. See
also App. Br. 7 (“[the rejection of] claim 10 should be [reversed for] … the
same reasons as claim 1”).
4 Struck’s invention is directed to a battery-powered implement and a circuit
to control the implement, with application to “electric shavers, nose clippers,
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concluded that it would have been obvious “to use the teaching of Struck to
surround the battery pack 18 of George et al because the teaching of Struck
is directed toward battery powered implements.” Id.
Appellants raise the issue of whether the Examiner articulated a
reason with rational underpinning supporting the conclusion of obviousness.
See App. Br. 7. In particular, Appellants argue that the Examiner merely
offers a conclusory statement. Id. We agree.
Simply because the Struck reference describes a battery-powered
implement does not mean that it would have been obvious to combine any
feature described therein with any feature of another battery-powered
implement. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (“a
patent composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art”). The Examiner offers no rationale tending to explain why it
would have been obvious to a person of ordinary skill in the art to modify
the therapeutic device of George to include the tool casing 14 of Struck as
proposed. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“there must
be some articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness”) (cited with approval in KSR, 550 U.S.
at 418). For example, the Examiner addresses neither the particular manner
in which one of ordinary skill in the art would have “use[d] the teaching of
Struck to surround the battery pack 18 of George” nor any particular
explanation for doing so. In addition, we note that a tube, such as the tool

manicure implements[, etc.].” Struck, col. 1, ll. 9-16. The “annular shaped
structure 14” referred to by the Examiner is the tool casing that houses the
motor, battery, switch, and the like. Id., col. 4, ll. 19-33.
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casing 14 in Struck, while related to a ring, is not itself a ring (a tube is an
elongated ring, like a cylinder is an elongated circle).
In view of the above, we do not sustain Rejection III because the
Examiner has failed to articulate a reason with rational underpinning to
support the conclusion of obviousness.

The Provisional Double Patenting Rejection
Because we do not sustain any of the Examiner’s prior art rejections,
consideration of the double patenting rejection is premature. In Ex parte
Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential), the Board
declined to reach a double patenting rejection after reversing a rejection
based on prior art:
The only remaining rejection [was] a provisional
non-statutory double patenting rejection. We
conclude that in this circumstance it [is] premature
for the original Board panel to address the
Examiner’s provisional rejection of the claims.
Accordingly, we do not reach the Examiner’s provisional double patenting
rejection of claim 1.

DECISION
We REVERSE the Examiner’s decision regarding claims 1, 2, 6-27,
and 30-44.
We do not reach the Examiner’s provisional double patenting
rejection of claim 1.

REVERSED

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