Cynthia Gibson-Horn

Patent Trials and Appeals Board

Aug 2, 2019

12728873 - (D) (P.T.A.B. Aug. 2, 2019)

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.
12/728,873 03/22/2010 Cynthia Gibson-Horn MTH1.PAU.01B 6159
66854 7590 08/02/2019
SHAY GLENN LLP
2755 CAMPUS DRIVE
SUITE 210
SAN MATEO, CA 94403
EXAMINER
DEICHL, JENNIFER M
ART UNIT PAPER NUMBER
3784
NOTIFICATION DATE DELIVERY MODE
08/02/2019 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):
info@shayglenn.com
shayglenn_pair@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CYNTHIA GIBSON-HORN
__________

Appeal 2017-0056191
Application 12/728,8732
Technology Center 3700
____________

Before BRADLEY B. BAYAT, FREDERICK C. LANEY, and
PAUL J. KORNICZKY, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

Cynthia Gibson-Horn (Appellant) appeals under 35 U.S.C. § 134 from
the decision rejecting claims 41–51, 53–55, 57–59, and 61–78, which are all
the claims pending in the Application. We have jurisdiction under 35 U.S.C.
§ 6(b). Appellant waived hearing attendance scheduled for April 18, 2019.
We AFFIRM-IN-PART.

1 Our Decision references Appellant’s Appeal Brief (“Appeal Br.,” filed
June 22, 2016) and Reply Brief (“Reply Br.,” filed Feb. 24, 2017), the
Examiner’s Answer (“Ans.,” mailed Jan. 30, 2017), and Final Office Action
(“Final Act.,” mailed Oct. 7, 2015).
2 Appellant identifies “Motion Therapeutics Inc.” as the real party in interest.
Appeal Br. 1.
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CLAIMED INVENTION
Appellant’s invention relates to devices “for providing a patient
having a balance disorder, or proprioceptive loss, with a weighted garment
or orthotic device tending to improve the patient’s balance.” Spec. ¶ 2.
Independent claim 41, reproduced below, is illustrative of the subject matter
on appeal.
41. A system for improving a subject’s ability to control body
position or movement comprising:
at least one corrective weight; and
an individually personalized weight coupling garment,
the garment having a surface to which the at least one
corrective weight is attached or capable of being attached at one
or more diagnostically and uniquely personalized selected
positions and uniquely personalized selected amount of weights
at corresponding selected positions on the garment, which
positions and amounts of weight are reiteratively determined
according to individualized assessments made of the
individually assessed subject’s increased control over body
position and movement arising from proprioceptively sensed
stimuli from the one or more selectively placed repositionable
diagnostic weights uniquely positioned on the subject.

REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Watson
Prince
Sinaki
Irvin
Franco-Sion
Greenberg et al.
(“Greenberg”)
US 4,382,302
US 4,384,369
US 5,120,288
US 6,209,135 B1
US 6,557,176 B2
US 6,692,413 B1
May 10, 1983
May 24, 1983
June 9, 1992
Apr. 3, 2001
May 6, 2003
Feb. 17, 2004

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The following rejections are before us for review:
I. Claims 64 and 65 stand rejected under 35 U.S.C. § 101.
II. Claims 62 and 63 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
III. Claims 41–51, 53–55, 57–59, 61, 64–74, and 76 stand rejected under
35 U.S.C. § 112, second paragraph, as being indefinite.
IV. Claim 41–43, 45–47, 49, 51, 55, 57–59, 61, 63–74, and 76–78 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by Watson.
V. Claims 41–43, 45–47, and 49–51 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Sinaki.
VI. Claims 66–74, 77, and 78 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Prince.
VII. Claim 44 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Sinaki.
VIII. Claims 47, 48, and 50 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Watson and Irvin.
IX. Claims 53 and 54 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Watson and Franco-Sion.
X. Claims 53 and 54 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Watson.
XI. Claims 53 and 54 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sinaki.
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XII. Claim 75 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Watson and Greenberg.
XIII. Claim 75 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Prince and Greenberg.
(Ans. 2–4).
ANALYSIS
Rejection I – 35 U.S.C. § 101
Claims 64 and 65 recite:

64. An apparatus for rectifying a neuromuscular deficiency in
an animate bearer comprising, in combination: test means for
discerning a location of neuromuscular deficiency to the
animate bearer, and corrective means operatively coupled to the
animate bearer to offset the effect of the neuromuscular
deficiency.

65. The apparatus of claim 64 where the test means comprises a
weight disposed on the animate bearer at a location determined
by the method of imposing a force on the animate bearer,
noting a loss of stability and operatively coupling the weight to
the animate bearer to offset the deficiency.

Appeal Br. 41–42, Claims App.
The Examiner construed claims 64 and 65 as being directed to or
encompassing a human organism. Final Act. 4. In particular, the Examiner
determined “[t]he claims recite the limitations ‘corrective means operatively
coupled to the animate bearer’ [(claim 64)] and ‘a weight disposed on the
animate bearer’ [(claim 65)] and therefore encompass a human organism.”
Id.
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Appellant argues “[t]he fact that a weighted vest or garment is
coupled to or related to discernment of a deficiency in a human or animal
does not mean that what is claimed is the human or animal wearing the vest
or garment instead of the vest or garment.” Appeal Br. 30. According to
Appellant, “[t]he claimed element is clearly the test means and corrective
means and not what might be functionally related in some manner to those
means, namely the subject who wears the vest or garment or who is the
intended object for the use of the vest or garment.” Id. at 30–31. We agree.
Claims encompassing a human being are not permitted under 35
U.S.C. § 101. See Animals-Patentability, 1077 Off. Gaz. Pat. Office 24
(Apr. 21, 1987) (indicating that human organisms are excluded from the
scope of patentable subject matter under 35 U.S.C. § 101).3 Here, the
language of the claims, as recited, do not encompass a human being but
rather describe the claimed apparatus’s intended use. For example, claim 64
recites a corrective means operatively coupled to the animate bearer, which
describes the manner of use of the apparatus. Similarly, claim 65 recites
operatively coupling the weight to the animate bearer to offset the
deficiency, which describes the intended manner and effect of the garment
when in use.
Thus, we do not sustain the rejection of claims 64 and 65 as
encompassing a human being.

3 See Leahy-Smith America Invents Act (“AIA”), Pub.L. No. 112–29,
§ 33(a), 125 Stat. 284, 340 (2011) (stating, “[n]otwithstanding any other
provision of law, no patent may issue on a claim directed to or
encompassing a human organism,” thereby codifying the USPTO policy
that human organisms are not patent-eligible subject matter).
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The Examiner additionally rejects claim 65 under 35 U.S.C. § 101 as
being “directed to multiple statutory categories-an apparatus and a method.”
Final Act. 4. Appellant disagrees and argues: “Claim 65 is a product-by-
process claim in that the location of the claimed weight is defined by a
method for determining that location. No method step is claimed as part of
the apparatus.” Appeal Br. 31. Appellant’s argument is not persuasive.
Product-by-process claims are claims to a product, and the
process steps describe the product made by the process recited in the claim.
“[T]he method of imposing a force on the animate bearer, noting a loss of
stability and operatively coupling the weight to the animate bearer to offset
the deficiency,” as recited in claim 65 however, does not recite the process
of making the product or apparatus. See Purdue Pharma v. Epic Pharma,
811 F.3d 1345, 1370 (Fed. Cir. 2016) (“[A] product-by-process claim is only
infringed by a product made by the process recited in the claim.”). Rather,
the method recited describes the process of using the product or apparatus.
See Reply Br. 9 (“The location is determined by the method step
limitations.”). As such, we agree with the Examiner that claim 65 is directed
to two statutory categories, an apparatus (machine) and the process of using
the apparatus.
Because § 101 requires that “the claimed invention must be to one of
the four statutory categories,” we sustain the rejection of claim 65 as being
improperly directed to two statutory categories.

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Rejection II - 35 U.S.C. § 112, first paragraph
In rejecting claims 62 and 63 as failing to comply with the written
description requirement, the Examiner finds that the Specification “fails to
disclose the limitations ‘wherein the panel has a plurality of immediately
adjacent and continuous positions along a length of hook or latch fabric
extending across substantially the entire panel’ (claim 62) and ‘the garment
capable of receiving one or more sources of stimuli originating from a
weight over a plurality of immediately adjacent and continuous positions’
(claim 63).” Final Act. 4–5.
Appellant argues that “[i]t is clear that Figs. 2A, 2B, 4A, 4B, 5A–5C
and the related text each show immediately adjacent and continuous
positions where a weight could be placed on the article. For example, in Fig.
2A provides attachment patches (6-11); (3-5); (1-3-6, 7 and 8); and (2-5-9,
10 and 11), which comprise immediately adjacent and continuous positions
across a panel or the garment.” Appeal Br. 33.
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter
(i.e., using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellant was in
possession of the claimed invention. See id.
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Here, although the Specification does not explicitly refer to the phrase
“immediately adjacent and continuous positions,” a person of ordinary skill
in the art reviewing Appellant’s Figures 2A, which depicts the front panel
view of the vest, would reasonably understand that attachment patches (i.e.,
6–11) are shown immediately adjacent and in continuous positions across
the vest, and, thus, would have known that Appellant was in possession of
the claimed subject matter as of the filing date.
Accordingly, we do not sustain the written description rejection of
claims 62 and 63.

Rejection III – 35 U.S.C. § 112, second paragraph
Claims 41–51, 53–55, 57–59, and 61
With respect to the rejection of claims 41–51, 53–55, 57–59, and 61,
the Examiner based the indefiniteness rejection by reference to a variable
object under MPEP § 2173.05(b)(II) solely on the claim language and
statements made in paragraphs 4 and 6 of Appellant’s Declaration. Final
Act. 5 (quoting Declaration filed on April 14, 2014); see also Ans. 14–15.
In particular, the Examiner determined, based
on Applicant’s admission, it is impossible for one of ordinary
skill in the art to determine the scope of the claim given the
impossibility of ascertaining the location of the ‘uniquely
personalized selected positions’ and the number of ‘uniquely
personalized selected amount of weights’ before performing a
diagnostic test on a particular subject, or for that matter, after
performing the test because the requirements of the claim
change over time.
Final Act. 5.
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Appellant disagrees and argues that the Specification supports and
provides additional examples to enable one with ordinary skill in the art to
determine the positions and amount of weight to be attached to a garment.
Appeal Br. 13.
The difficulty with the rejection is that the Examiner must
“determine[] the scope of claims . . . not solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction ‘in
light of the specification as it would be interpreted by one of ordinary skill in
the art.’” Phillips v. A WH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en
banc) (quoting In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). For instance, Appellant’s Specification discloses a procedure for
using a computer or processor to measure and facilitate Center Of Gravity
(COG) correction via proper weight placement and various examples for
proper weight placement and weight amount. See Spec. ¶¶ 50–53. The
Examiner has failed to properly analyze and determine the scope of the
claims in light of Appellant’s Specification. On this record, the Examiner
has not provided adequate analysis and reasoning to demonstrate that one
skilled in the art could not ascertain, in light of the Specification, the
location of the positions. See, e.g., Andrew Corp. v. Gabriel Electronics,
Inc., 847 F. 2d 819, 821–23 (Fed. Cir. 1988).
Because the Examiner has failed to establish a prima facie case of
indefiniteness, we do not sustain the rejection of claims 41–51, 53–55, 57–
59, and 61 under 35 U.S.C. § 112, second paragraph.

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Claim 42
Claim 42 recites “wherein the at least one corrective weight is less
than 3% of the subject’s body weight.” Appeal Br. 39, Claims App.
The Examiner determined the limitation less than 3% of the subject’s
body weight “is rendered indefinite by reference to a variable object (see
MPEP 2173.05(b) II).” Final Act. 5. Appellant did not contest the
Examiner’s indefiniteness rejection of claim 42.
Appellant’s brief must present arguments responsive to every ground
of rejection stated by the Examiner in the Office action from which the
appeal has been taken (see 37 CFR §§ 41.31(c) and 41.37(c)(1)(iv)). If a
ground of rejection stated by the Examiner is not addressed in the
Appellant’s brief, Appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it (see id. § 41.39(a)(1)).
Accordingly, we summarily sustain this rejection.

Claims 61
Claim 61 recites “the garment having a surface to which the at least
one corrective weight is attached or designated to be attached at the time of
examination at a diagnostically determined or selected position on the
garment.” Appeal Br. 41, Claims App.
The Examiner determined claim 61 is indefinite because “[i]t is
unclear what structure amounts to a designation of the position.” Final Act.
6. Appellant responds that “[a] designation is not a structure. A designation
is the selection of a weight to be attached.” Appeal Br. 33. The Examiner
fails to address Appellant’s response and explain why, in view of
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Appellant’s explanation, the limitation is indefinite. Indeed, one of ordinary
skill in the art would not understand the term “designation” in light of the
Specification to comport with structure, but rather that “the pockets or
receptacles may be numbered, or may be designated with alphabetic
characters, symbols, pictures, figures, or any combinations thereof.” Spec. ¶
33. As such, we do not sustain the rejection of claim 61 as indefinite.

Claims 64 and 65
In response to the Examiner’s rejection that the Specification does not
provide sufficient description of corresponding structures under 35 U.S.C. §
112, sixth paragraph, to perform the claimed functions recited for “test
means” and “corrective means” (Final Act. 6), Appellant states:
The disclosure is clear in its simplicity that corresponding
structure, material, or acts described in the specification and
equivalents thereof for the test means is a garment to which
weights are attached at positions, which may be identified by
indices, during the diagnostic reiterative procedure, and that the
corrective means is a garment to be worn in everyday use by the
subject with the weights attached at the corresponding positions
and in the amounts identified on the test garment.

Appeal Br. 37. According to Appellant, the Specification provides such
support because it discloses that the “vest is a garment that itself may be
used either as an end product (i.e., a garment to be worn by the patient)
or as a tool to determine the placement and size of weights to be
introduced into another garment, perhaps having greater aesthetic
appeal.” Reply Br. 16 (quoting Spec. ¶ 34). Because those skilled in the art
would understand what is claimed when the claim is read in light of the
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Specification, we do not sustain the rejection of claims 64 and 65 as
indefinite, for failing to disclose sufficient description of corresponding
structures. Thus, a means-plus-function claim “shall be construed to cover
the corresponding structure, material, or acts described in the specification
and equivalents thereof.” 35 U.S.C. § 112, sixth paragraph.

Claim 65
We sustain the rejection of claim 65 under 35 U.S.C. § 112, second
paragraph, because a single claim which claims both a product (apparatus)
and the process of using the product is indefinite. As discussed above under
the § 101 rejection, we disagree with Appellant’s contention that claim 65 is
a product-by-process claim. We agree with the Examiner’s position that a
single claim which claims both an apparatus (machine) and the method steps
of using the apparatus (process) is indefinite under 35 U.S.C. 112, second
paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639
F.3d 1303 (Fed. Cir. 2011). In Katz, a claim directed to “a system with an
interface means for providing automated voice messages . . . to certain of
said individual callers, wherein said certain of said individual callers
digitally enter data” was determined to be indefinite because the italicized
claim limitation is not directed to the system, but rather to actions of the
individual callers, which creates confusion as to when direct infringement
occurs. Katz, 639 F.3d at 1318 (emphasis added) (citing IPXL Holdings v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), in which a system
claim that recited “an input means” and required a user to use the input
means was found to be indefinite because it was unclear “whether
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infringement . . . occurs when one creates a system that allows the user [to
use the input means], or whether infringement occurs when the user actually
uses the input means.”).
Here, there is no dispute that the preamble of claim 65 is directed to
an apparatus, but the limitation “a location determined by the method of
imposing a force on the animate bearer, noting a loss of stability and
operatively coupling the weight to the animate bearer to offset the
deficiency” (Appeal Br. 41, Claims App.) describes a process of using the
apparatus.
Because claim 65 recites both an apparatus and the method for using
the apparatus, it does not apprise one of ordinary skill in the art of its scope,
therefore, rendering it indefinite.

Claim 66
The Examiner rejected claim 66 as indefinite because the recitation
“emanating from a group consisting primarily of . . . is an improper Markush
limitation.” Final Act. 6. In response, Appellant has agreed to “amend
claim 66 to delete ‘primarily’ in further proceedings. [According to
Appellant, t]he term is harmless surplusage.” Reply Br. 13–14. As such, we
summarily sustain the rejection of claim 66 as indefinite.

Claims 67–74
As to claims 67–74, the Examiner determined that “[i]t is unclear
whether the claims require the pockets themselves or merely points of
attachment in the same areas as the pockets recited.” Final Act. 6. We are
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persuaded by Appellant’s argument that the phrase “areas defined by
pockets,” as recited in claims 67–74, “explicitly claim ‘the locus of points’
corresponding to the area defined by enumerated pockets.” Appeal Br. 35.
In other words, the term “locus of points” broadly corresponds to the areas
defined by the numbered pockets and combinations thereof. As such, we do
not sustain the indefiniteness rejection of claims 67–74.

Claim 76
The Examiner interpreted claim 76’s limitation “attachment is
selected from a group having . . . [as] an improper Markush limitation.”
Final Act. 7. According to the Examiner, “[t]he wording ‘a group having’
suggests that there are species not listed which are intended to be covered by
the claim. Therefore, the language presents uncertainty and ambiguity with
respect to the question of scope of the claim.” Ans. 15.
Appellant argues that “the Examiner’s reading of the claim is
unreasonable in that attachments selected from the group of attachments
having: (1) hook and latch fabric, (2) complemental magnets, (3) slitted
stretchable enclosures integral to said apparatus for said weight’s insertion,
and/or (4) weight packets sewn on said apparatus does not suggest that there
is an attachment #5 or higher. The gerund, ‘having’ is simply grammatical to
describe the kind of attachment in each case.” Reply Br. 15. We are
persuaded by Appellant’s argument. The Examiner has not adequately
explained why the recited claim language, in light of the Specification, is
rendered indefinite.
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Because the Examiner has failed to establish a prima facie case of
indefiniteness, we do not sustain the rejection of claim 76 as an improper
Markush limitation.

Rejection IV - 35 U.S.C. § 102(b) by Watson
Claims 41, 55, 61
Independent claims 41, 55, and 61 are directed to a system including
two structural components: “at least one corrective weight,” and a
“garment.” See Appeal Br., Claims App.
The Examiner finds the claimed corrective weight corresponds to
Watson’s weights 22, and that Watson’s vest 10 constitutes the claimed
garment. Final Act. 7. The Examiner also finds that Watson discloses a vest
10 (garment) having a surface to which at least one weight 22 is attached.
Id. The Examiner maintains that Watson is capable of performing the
remaining functional limitations. Ans. 11.
Appellant argues “Watson teaches away from the claimed invention in
that the symmetrical distribution of weights on the Watson vest provide for
strengthening thigh and other running muscles in a balanced fashion.”
Appeal Br. 17. We agree with the Examiner (Ans. 11) that teaching away is
irrelevant to an anticipation analysis. Celeritas Techs., Ltd. v. Rockwell Int’l
Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998); see also Seachange Int’l, Inc.
v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005).
Appellant also argues that “[t]he functional limitations attributed to
Watson, namely a garment that has weights attached at diagnostically
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selected positions and amounts on the garment, is utterly lacking from
Watson’s disclosure.” Appeal Br. 17–18.
There is no dispute that the structural limitations of claim 41, 55, and
61 are met by Watson. The only question being whether the functional
limitations recited in the claims can be found in Watson. Schreiber teaches
that writing a claim by mixing structural and functional limitations comes at
a price. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). The price
being, when the structural limitations are met by a single prior art reference,
and when the examiner “has reason to believe” that the prior art reference
inherently teaches the functional limitation, the burden shifts to the patent
applicant to show that the functional limitation cannot be met by the single
prior art reference. Id. (citing In re Swinehart, 439 F.2d 210, 213 (CCPA
1971)).
Here, the Examiner provides justification for this belief by finding
that “Watson’s vest is capable of being loaded in a manner and with weights
in such positions as to assist a user in maintaining balance,” as claimed.
Ans. 12. Watson discloses “a vest adapted to be worn upon an athlete’s
torso with front and rear flexible panels to which a plurality of weights may
be selectively detachably affixed individually.” Watson, col. 2, lines 19–22.
Watson’s weights operate in a similar environment as Appellant’s claimed
corrective weights. Moreover, Watson’s design depicted in Figure 1, and
relied upon by the Examiner, is similar in design to the claimed system, as
shown in Appellant’s Figure 2A and 2B embodiment. As such, we find that
the Examiner’s belief is grounded in sufficient rationale so as to establish a
prima facie case of anticipation. See Schreiber, 128 F.3d at 1478
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(explaining that the examiner’s observation that the prior art device had the
“same general shape” as the claimed device established a prima facie case of
inherent anticipation); see also Mytee Prods., Inc. v. Harris Research, Inc.,
439 F. App’x 882, 886 (Fed, Cir. 2011). Therefore, the Examiner met the
initial duty of supplying a factual basis for supporting the proffered
inherency position to shift the burden to Appellant to show that the prior art
structure does not inherently possess the functionally defined limitation of
the claimed device.
Appellant, however, has not offered any explanation as to why the
vest and weights disclosed in Watson are not capable of performing the
claimed function. Instead, Appellant argues improbable inherency and
refers to Appellant’s Declaration. Appeal Br. 20–22. Appellant’s arguments
fail to persuasively rebut the Examiner’s rejection because they fail to show
that Watson’s prior art structure does not inherently possess the functionally
defined limitations of the claimed system.
Accordingly, we sustain the rejection of independent claims 41, 55,
and 61, including their dependent claims, which are not separately argued.

Claim 63
We reverse the anticipation rejection of claim 63 because Watson fails
to expressly or inherently disclose “a plurality of immediately adjacent and
continuous positions.” Appeal Br. 24. Watson discloses a plurality of
adjacent positions that are spaced apart. See Watson, Fig. 1. The term
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immediately is defined as “with no object or space intervening.”4
Appellant’s Figures 2A and 2B show a plurality of immediately adjacent and
continuous positions consistent with the ordinary and customary definition
of the term because there is no space intervening the numbered positions
(i.e., 6–11). As such, the Examiner has not shown that Watson is capable of
receiving one or more sources of stimuli originating from a weight over a
plurality of immediately adjacent and continuous positions, as required by
claim 63.

Claims 64 and 65
As discussed above, claim 64 is recited as a means-plus-function
claim. In order for a prior art element to meet a § 112, sixth paragraph
means-plus-function limitation, the prior art element must either be the same
as the disclosed structure or be a § 112, sixth paragraph equivalent. In re
Donaldson Co., Inc., 16 F.3d 1189, 1195 (Fed. Cir. 1994). Two structures
may be “equivalent” for purposes of § 112, sixth paragraph if they perform
the identical function, in substantially the same way, with substantially the
same result. Kemco 208 F.3d at 1364.
Here, Appellant does not dispute that the structures that Watson
discloses are within the scope of means that are covered by the means-plus-
function limitations. Instead, Appellant argues “[n]o disclosure is identified
from Watson that does in fact disclose the claimed test means and corrective
means to treat a neuromuscular deficiency.” Reply Br. 6. Appellant,

4 https://www.dictionary.com/browse/immediately (last visited July 24,
2019).
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nevertheless, does not offer any evidence or technical reasoning to
demonstrate that the structures Watson discloses would be recognized by a
skilled artisan to lack the functional characteristics claimed. A claim
containing a “recitation with respect to the manner in which a claimed
apparatus is intended to be employed does not differentiate the claimed
apparatus from a prior art apparatus” if the prior art apparatus teaches all
the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647
(BPAI 1987). Therefore, we sustain the rejection of claims 64 and 65 as
anticipated by Watson.

Claims 66–78
We are not persuaded by Appellant’s argument (Appeal Br. 26–27,
Reply Br. 6) because, as discussed above, claim 66 is directed to an
apparatus but Appellant’s arguments focus on the manner in which a
claimed apparatus is intended to be employed. In other words, each
structure of apparatus claim 66 recites the intended use of that structure after
the term “for.” For example, claim 66 recites “an article of clothing for
rectifying a neuromuscular deficiency . . . .” Appeal Br. 41, Claims App.
Distinguishing the intended use of the article of clothing from Watson’s
article of clothing fails to differentiate the claimed apparatus from Watson’s
prior art apparatus. For these reasons, we sustain the rejection of claims 66–
78 as being anticipated by Watson.

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Rejections V, VII, & XI
We affirmed the rejection of claims 41–43, 45–47, and 49–51 as
anticipated by Watson. Consequently, we find it unnecessary to reach a
decision about the cumulative rejection of claims 41–43, 45–47, and 49–51
as anticipated by Sinaki, which encompasses the same claims (see MPEP
706.02 - Prior art rejections should ordinarily be confined strictly to the best
available art). See 37 C.F.R. § 41.50(a)(1) (“The affirmance of the rejection
of a claim on any of the grounds specified constitutes a general affirmance
of the decision of the examiner on that claim . . . .”).
Thus, we vacate the Examiner’s 35 U.S.C. § 102(b) rejection of
claims 41–43, 45–47, and 49–51 by Sinaki (see Ex parte Gutsch, 2009 WL
1899607 (BPAI 2009) (nonprecedential) (vacating cumulative rejections).
We also vacate the rejection of dependent claims 44, 53, and 54 as being
anticipated by or alternatively unpatentable as obvious over Sinaki.

Rejection VI - 35 U.S.C. § 102(b) by Prince
In contesting the rejection of claims 66–74 and 77–78 as being
anticipated by Prince, Appellant argues: “Prince is not an article of clothing
having any structural capability for rectifying the set of nine specifically
defined neuromuscular deficiencies. The fluid filled chambers are not
structurally located to correct deficiencies which are loci dependent, but
provides a variable exercise weight load which is evenly distributed around
the user’s body independent of any defined locus of points to increase
stamina, strength and overall muscle development.” Appeal Br. 29–30.
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We are not persuaded of Examiner error because, as discussed above,
distinguishing the manner in which a claimed apparatus is intended to be
employed does not differentiate the claimed apparatus from a prior art
apparatus if the prior art apparatus teaches all the structural limitations of the
claim. As such, we sustain the rejection of claims 66–74 and 74–78 as
anticipated by Prince.

Rejections VIII, IX, X, XII, & XIII
We summarily sustain rejections VIII, IX, X, XII, and XIII because
these rejections have not been contested by Appellant.

DECISION
The rejection of claims 64 and 65 under 35 U.S.C. § 101 as
encompassing a human being is reversed.
The rejection of claim 65 under 35 U.S.C. § 101 as directed to two
statutory categories is affirmed.
The rejection of claims 62 and 63 under U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement is reversed.
The rejection of claims 41–51, 53–55, 57–59, and 61 under 35 U.S.C.
§ 112, second paragraph, as indefinite is reversed.
The rejection of claim 42 under 35 U.S.C. § 112, second paragraph, as
indefinite is summarily sustained.
The rejection of claim 61 under 35 U.S.C. § 112, second paragraph, as
indefinite is reversed.
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The rejection of claims 64 and 65 under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to disclose sufficient description of
corresponding structures is reversed.
The rejection of claim 65 under 35 U.S.C. § 112, second paragraph, as
indefinite for claiming both a product and the process of using the product is
affirmed.
The rejection of claim 66 under 35 U.S.C. § 112, second paragraph,
as indefinite is summarily sustained.
The rejection of claims 67–74 under 35 U.S.C. § 112, second
paragraph, as indefinite is reversed.
The rejection of claim 76 under 35 U.S.C. § 112, second paragraph, as
indefinite is reversed.
The rejection of claims 41, 55, and 61 under 35 U.S.C. § 102(b) is
affirmed.
The rejection of claim 63 under 35 U.S.C. § 102(b) is reversed.
The rejection of claims 64 and 65 under 35 U.S.C. § 102(b) is
affirmed.
The rejection of claims 66–78 under 35 U.S.C. § 102(b) is affirmed.
The cumulative rejection of claims 41–43, 45–47, and 49–51 under 35
U.S.C. § 102(b) as being anticipated by Sinaki is vacated.
The cumulative rejections of claims 44, 53, and 54 under 35 U.S.C. §
102(b) as anticipated or alternatively under 35 U.S.C. §103(a) as
unpatentable over Sinaki is vacated.
The rejection of claims 66–74 and 77–78 under 35 U.S.C. § 102(b) as
being anticipated by Prince is affirmed.
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The rejection of claims 47, 48, and 50 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Watson and Irvin is summarily sustained.
The rejection of claims 53 and 54 under 35 U.S.C. § 103(a) as
unpatentable over Watson and Franco-Sion is summarily sustained.
The rejection of claims 53 and 54 under 35 U.S.C. § 103(a) as
unpatentable over Watson is summarily sustained.
The rejection of claim 75 under 35 U.S.C. § 103(a) as unpatentable
over Watson and Greenberg is summarily sustained.
The rejection of claim 75 under 35 U.S.C. § 103(a) as unpatentable
over Prince and Greenberg is summarily sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART