2019006511 (P.T.A.B. May. 26, 2020)

Albrecht Molsberger

Patent Trials and Appeals BoardMay 26, 2020

2019006511 (P.T.A.B. May. 26, 2020)

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. 14/359,579 05/21/2014 Albrecht Molsberger Q244789 6914 23373 7590 05/26/2020 SUGHRUE MION, PLLC 2000 PENNSYLVANIA AVENUE, N.W. SUITE 900 WASHINGTON, DC 20006 EXAMINER D ABREU, MICHAEL JOSEPH ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 05/26/2020 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): PPROCESSING@SUGHRUE.COM USPTO@sughrue.com sughrue@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALBRECHT MOLSBERGER Appeal 2019-006511 Application 14/359,579 Technology Center 3700 Before MICHELLE R. OSINSKI, ANNETTE R. REIMERS, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, 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 16–20, 22, 23, and 25–31. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 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 the sole inventor, Albrecht Molsberger. Appeal Br. 2. Appeal 2019-006511 Application 14/359,579 2 CLAIMED SUBJECT MATTER The claims are directed to a direct current application device and method of use. Claim 16, reproduced below, is illustrative of the claimed subject matter: 16. A direct current application device, the direct current application device comprising: a direct current source or an appliance configured to be linked to a direct current source; a first electrode configured to be connected to the direct current source, the first electrode comprising a plurality of needles comprising 3-12 needles which are configured to comprise an electrically conductive connection with each other; a second electrode configured to be connected to the direct current source, the second electrode comprising (i) a flat electrode, or (ii) a needle or a plurality of needles which are configured to comprise an electrically conductive connection with each other; and a current device configured to maintain a current at a constant level during an application of the direct current, or a battery as the direct current source, wherein, the direct current application device is configured to provide a maximum current of either 2,000 μA when the second electrode comprises (i) the flat electrode or 1,000 μA when the second electrode comprises (ii) the needle or the plurality of needles, and is further configured to provide an electric voltage that avoids a damaging effect on a body. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Deem US 2007/0060989 A1 Mar. 15, 2007 Spinner US 2007/0213771 A1 Sept. 13, 2007 Knopp US 2008/0312647 A1 Dec. 18, 2008 Appeal 2019-006511 Application 14/359,579 3 REJECTIONS Claims 16–20, 22, 25–28, and 30 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Deem and Spinner. Claims 23, 29, and 31 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Deem, Spinner, and Knoop. OPINION The claims each require a “direct current application device [that] is configured to provide a maximum current of either 2,000 μA . . . or 1,000 μA” and “that avoids a damaging effect on a body.”2 The Examiner’s rejection acknowledges that Deem does not teach the recited current values, and proposes modifying the teachings of Deem with those of Spinner. Final Act. 4–6. Specifically the Examiner reasons: It would have been an obvious design choice . . . to apply similar parameters as taught by Spinner to the device as disclosed by Deem in order to yield the predictable results of providing a device capable of providing anesthetic treatment for a patient requiring it while avoiding a damaging effect on the body. Id. at 4. Appellant disputes the Examiner’s reasoning, explaining that “the incorporation of Spinner’s stimulation parameters (0.2 to 8 mA) would make Deem fail to achieve its ‘disruption/destruction’ of the target structures because Deem needs 0.5 A (= 500 mA).” Appeal Br. 15 (citing Deem ¶ 93). Appellant contends that “the alleged combination of Deem and Spinner runs contrary to the purpose of Deem,” which “is clearly to 2 Independent claim 22 further specifies that the “body” is a human or animal body. Appeal 2019-006511 Application 14/359,579 4 provide a damaging effect on the body.” Id. at 15. Appellant has the better position. “[D]esign choice” is appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function. In re Chu, 66 F.3d 292, 298–99 (Fed. Cir. 1995)). Here, as noted above, Appellant identifies a significant difference between Deem and the claimed invention. Deem is directed to “disruption/destruction,” while the claimed arrangement is directed to preventing destruction. Compare Deem ¶¶ 2, 93 with Spec ¶ 64. The Examiner does not dispute that the current values applied in Deem are for the purpose of destroying tissue, as Appellant contends. Rather, the Examiner finds that “Deem is concerned with ‘avoiding a damaging effect on the body.’” Ans. 4 (citing Deem ¶ 73). The cited portion of Deem, however, is related to avoiding unintentional damage to structures surrounding the region where damage is intended. That does not change the fact that the current values applied in Deem are for “disruption/destruction,” rather than avoiding such “disruption/destruction.” The Examiner fails to establish that it would have been an obvious matter of design choice to modify Deem’s current values in the manner proposed. Other than design choice, the Examiner provides no reason why one skilled in the art would have wanted to provide anesthetic treatment to a patient with Deem’s device. Appellant contends that “Deem nowhere describes the use of an electric current for the purpose of providing a regional anesthetic (the purpose of Spinner).” Appeal Br. 16. The Examiner does not dispute this contention. Moreover, we note that the Examiner provides no findings as to why Deem is even analogous art. See In re Klein, Appeal 2019-006511 Application 14/359,579 5 647 F.3d 1343, 1348 (Fed. Cir. 2011) (“A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention.”) (internal citations omitted). For at least the reasons set forth above, the Examiner fails to establish the obviousness of claims 16–20, 22, 23, and 25–31. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 16–20, 22, 25–28, 30 103(a) Deem, Spinner 16–20, 22, 25–28, 30 23, 29, 31 103(a) Deem, Spinner, Knoop 23, 29, 31 Overall Outcome 16–20, 22, 23, 25–31 REVERSED