Ex Parte Carroll

Board of Patent Appeals and Interferences

Jan 11, 2012

11198386 (B.P.A.I. Jan. 11, 2012)

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.
11/198,386 08/08/2005 William J. Carroll 000309-00077 8339
27557 7590 01/11/2012
BLANK ROME LLP
WATERGATE
600 NEW HAMPSHIRE AVENUE, N.W.
WASHINGTON, DC 20037
EXAMINER
GEDEON, BRIAN T
ART UNIT PAPER NUMBER
3766
MAIL DATE DELIVERY MODE
01/11/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM J. CARROLL
____________

Appeal 2010-000923
Application 11/198,386
Technology Center 3700
____________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
William J. Carroll (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 5, 8, and 10-12 under
35 U.S.C. § 103(a) as unpatentable over Wingrove (US 5,540,735, issued
July 30, 1996). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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THE INVENTION
Appellant’s claimed invention relates to surface electrical stimulation
that delivers electrical pulses across the skin for various purposes, such as
relief of pain, disuse atrophy, maintenance of range of motion, or healing of
tissue. Spec. 2, para. [0003]. Claim 5, reproduced below, is representative
of the subject matter on appeal.
5. A method of providing selective surface electrical
stimulation, comprising:
providing a first stimulation circuit, connected to at least
two first circuit electrodes in a first state;
providing a second stimulation circuit, connected to at
least two second circuit electrodes in the first state;
using a switch means, selectively changing circuit
connections in a second state so that the first stimulation circuit
is connected to at least one second circuit electrode and the
second stimulation circuit is connected to at least one first
circuit electrode.
CONTENTIONS AND ISSUES
Appellant argues claims 5, 8, 10, and 11 as a group. App. Br. 3-4.
We select claim 5 as representative, and claims 8, 10, and 11 stand or fall
with claim 5. See 37 C.F.R. § 41.37(c)(1)(vii). Appellant separately argues
claim 12. App. Br. 5-6.
The Examiner determined that the method of claim 5 would have been
obvious because even though Wingrove does not expressly disclose using a
switch means, “providing a mechanical or automatic means to replace
manual activity which has accomplished the same result involves only
routine skill in the art.” Ans. 3. The Examiner explained that use of “switch
means is nothing more than an automation of the manual repositioning of the
electrodes disclosed in Wingrove.” Ans. 4.
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Appellant argues that Wingrove does not render obvious the method
of claim 5 because Wingrove does not recognize the problem Appellant was
trying to solve, viz, low patient compliance with instructions to change
electrode configuration manually. App. Br. 3-4; Reply Br. 2. Appellant
argues for claim 12 that “Wingrove does not describe selectively changing
circuit connections sequentially from a first state (interferential stimulation)
to a second state (NMES1).” App. Br. 6. The Examiner determined that
claim 12 does not claim a sequence of stimulation and Wingrove’s Figures
9-11 clearly depict a selective changing of connections from a first state
(interferential stimulation) to a second state (NMES). Ans. 4-5.
The issues presented by this appeal are:
Would it have been obvious to one of ordinary skill in the art in view
of Wingrove to use switch means to selectively change circuit connections
as called for in claim 5?
Would it have been obvious to one of ordinary skill in the art in view
of Wingrove to apply interferential current stimulation in a first state and
NMES in a second state, as called for in claim 12?
FINDINGS OF FACT
The following enumerated findings are supported by at least a
preponderance of the evidence.
1. Wingrove discloses that “[n]euromuscular stimulation (NMS),
transcutaneous electrical nerve stimulation (TENS), and interferential
stimulation are three types of electrical stimulation utilized to relieve
pain or reduce edema.” Col. 1, ll. 26-29.

1 NMES stands for Neuromuscular Electrical Stimulation.
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2. Wingrove discloses that to apply interferential stimulation, the patient
must place four electrodes on his skin in a criss-cross pattern and
correctly connect four wires between each skin electrode and the
stimulation unit. Col. 2, ll. 3-16.
3. Wingrove teaches that “this treatment as currently applied is so
complex and cumbersome that many patients have difficulty or do not
follow their prescribed treatment.” Col. 2, ll. 21-23.
4. One object of Wingrove is to provide “an easy-to-use apparatus to
help patients relieve pain in their hands (or other flexing body
portions) caused by conditions such as carpal tunnel syndrome.”
Col. 2, ll. 43-45.
5. In the hand/wrist embodiment, Wingrove discloses “a wrist brace
positioning means with internal stimulation output contacts and
electrodes” that allows the patient to avoid having to “place separate
skin electrodes on his/her skin and then connect multiple wires from
the stimulator to the skin electrodes.” Col. 2, ll. 45-52.
6. Figure 9 of Wingrove “shows an interferential stimulation pattern that
can be produced” and Figures 10 and 11 “show alternative stimulation
patterns that can be produced.” Col. 3, ll. 25-28.
7. Wingrove discloses that “[i]deally, the stimulator 11 used in the
present invention can provide neuromuscular stimulation (NMS) or
transcutaneous electrical nerve stimulation (TENS), in addition to
interferential stimulation.” Col. 6, ll. 30-33.
8. Wingrove discloses that “[a]lthough the criss-cross pattern is the
preferred method, this invention may be used to apply stimulation
between any two electrodes supported by the wrist brace 12. As
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illustrated in FIGS. 10 and 11, the waveforms can travel between any
suitably connected pair of electrodes.” Col. 7, ll. 28-32.
9. Appellant’s Specification describes that “[i]nput 516 of switch 506 is
selectively connected to one of outputs A and B associated with input
516, depending on the state of switch 506,” and that “[i]nput 518 of
switch 506 is connected either to electrode 104 or to electrode 106’,
depending on the state of switch 506.” Spec. 6-7, para. [0026].
10. The Specification describes:
[S]witch 506 is shown schematically as a double pole, double
throw switch. However, it will be understood that the scope of
the invention is not limited to any particular type of switch.
The functionality of switch 506 can be implemented either as a
mechanical switch, a solid state or electronic switch, or in any
other known manner that produces similar results in terms of
the application of electrical stimulation in the desired patterns.
Spec. 7, para. [0027].
PRINCIPLES OF LAW
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (addition of a well-
known electronic sensor to a well-known mechanical adjustable pedal would
have been obvious).
Since KSR, the Federal Circuit has concluded that it would have been
obvious to combine: (1) a mechanical device for actuating a phonograph to
play back sounds associated with a letter in a word on a puzzle piece, with
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(2) an electronic, processor-driven device capable of playing the sound
associated with a first letter of a word in a book. Leapfrog Enter., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007). The court’s
conclusion of obviousness was based in part on the reasoning that
“[a]pplying modern electronics to older mechanical devices has been
commonplace in recent years.” Id. The Federal Circuit recognized that
“[a]n obviousness determination is not the result of a rigid formula
disassociated from the consideration of the facts of a case. Indeed, the
common sense of those skilled in the art demonstrates why some
combinations would have been obvious where others would not.” Id. (citing
KSR, 550 U.S. at 417 (“The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.”)). The Federal Circuit relied in part on the fact that
Leapfrog presented no evidence that the inclusion of a reader in the
combined device was “uniquely challenging or difficult for one of ordinary
skill in the art” or “represented an unobvious step over the prior art.” Id. at
1162 (citing KSR, 550 U.S. at 418).
Similarly, in Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318
(Fed. Cir. 2008), the court concluded that conducting previously known
methods of bidding through an Internet web browser was obvious because it
amounted to no more than applying the use of the Internet to existing
electronic processes at a time when doing so was commonplace. Id. at 1327.
Also, in Western Union Co. v. MoneyGram Payment Systems, Inc., 626 F.3d
1361 (Fed. Cir. 2010), the court found “the use of an electronic transaction
device where the prior art employed a fax machine to be an unpatentable
improvement at a time when such a transition was commonplace in the art.”
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Id. at 1370 (citing In re Mettke, 570 F.3d 1356, 1360-61 (Fed. Cir. 2009)
(finding it obvious to add Internet access to a prior art kiosk that included a
fax-machine)).
ANALYSIS
We agree with the Examiner that use of a switch means in the device
of Wingrove to switch the connections between the skin electrodes and the
stimulation unit, and thus switch between various known stimulation
patterns, would have been obvious to one of ordinary skill in the art at the
time of Appellant’s invention.
Wingrove discloses that it was known in the art to use NMS, TENS,
and interferential stimulation to treat pain and edema (Fact 1). Wingrove
recognizes the design need and market pressure to provide an easy-to-use
device for applying electrical stimulation therapy (Facts 2, 3). An object of
Wingrove’s invention was to provide a simple, easy-to-use apparatus to help
patients relieve pain using electric stimulation therapy that avoids requiring
the patient to place the electrodes on the skin and connect multiple wires
from the stimulator to the electrodes (Facts 4, 5). Wingrove discloses that
the hand/wrist brace embodiment can be used to provide an interferential
stimulation pattern and a NMS pattern (Facts 6-8). These patterns require
different connections between the electrodes and the stimulation unit.
The finite predictable solutions for switching between these
stimulation therapies is either to have two different wrist braces, one for
applying interferential stimulation and another for applying NMS, and
requiring a patient to don and use the proper brace at the appropriate time, or
to use the same brace and simply switch from the criss-cross connection
between the electrodes and the stimulation unit used for interferential
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stimulation to the connections used for NMS. We find, in light of design
need and market demand recognized in Wingrove, that a person of ordinary
skill in the art would have had good reason to pursue the known options
within his or her technical grasp at the time of Appellant’s invention. We
also find that the switch means disclosed in Appellant’s Specification were
known and that the use of switches in place of manual methods to switch
between one circuit and another was commonplace at the time of
Appellant’s invention (Fact 10). Thus, the use of switch means in Wingrove
to change between different stimulation patterns would have been obvious to
try and would have led to predictable results. Hence, Appellant’s claimed
invention is the product not of innovation but of ordinary skill and common
sense. See KSR, 550 U.S. at 417 (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.”). Appellant presented no evidence that the
use of switch means in Wingrove would have been uniquely challenging or
difficult for one of ordinary skill in the art or would have represented an
unobvious step over the prior art.
We agree with the Examiner’s reading of the language of claim 12 as
not requiring selectively changing circuit connections sequentially from a
first state (interferential stimulation) to a second state (NMES). Ans. 4-5.
Wingrove’s Figures 9-11 clearly depict a selective changing of connections
from a first state (interferential stimulation) to a second state (NMES) (Facts
6-8). For these reasons, we sustain the rejection of claims 5, 8, and 10-12
under 35 U.S.C. § 103(a) as unpatentable over Wingrove.
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CONCLUSIONS
It would have been obvious to one of ordinary skill in the art in view
of Wingrove to use switch means to selectively change circuit connections
as called for in claim 5.
It would have been obvious to one of ordinary skill in the art in view
of Wingrove to apply interferential current stimulation in a first state and
apply Neuromuscular Electrical Stimulation (NMES) in a second state, as
called for in claim 12.
DECISION
The decision of the Examiner to reject claims 5, 8, and 10-12 is
AFFIRMED.

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)(1)(iv).

AFFIRMED

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