Ex Parte Caylor

Board of Patent Appeals and Interferences

Jun 27, 2012

11392001 (B.P.A.I. Jun. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte EDWARD J. CAYLOR III
__________

Appeal 2011-000569
Application 11/392,001
Technology Center 3700
__________

Before FRANCISCO C. PRATS, STEPHEN WALSH, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
system for monitoring kinematic motion of a patient. The Patent Examiner
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Claims 1-16 are on appeal. Claim 1, the only independent claim, is
representative and reads as follows:
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Application 11/392,001

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1. A system for monitoring kinematic motion of a patient, the system
comprising:
a patient exercise machine;
a first wireless transmitter configured to (i) be implanted into the
patient and (ii) transmit a first wireless signal when the patient is operating
the patient exercise machine;
a plurality of first antennas coupled to the patient exercise machine
substantially coplanar with each other, the plurality of first antennas
including a first coplanar antenna, a second coplanar antenna, and a third
coplanar antenna;
a second antenna coupled to the patient exercise machine non-
coplanar with respect to the plurality of first antennas; and
a controller electrically coupled to the plurality of first antennas and
the second antenna, the controller being configured to determine a location
of the first wireless transmitter based on output signals received from the
plurality of first antennas and the second antenna in response to the first
wireless signal.

The Examiner rejected the claims as follows:
• claims 1, 2, 6-9, and 10-14 under 35 U.S.C. § 103(a) as
unpatentable over Mire
1
and Menache;
2

• claims 3, 4, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable
over Mire, Menache, and Barnes;
3

• claim 5 under 35 U.S.C. § 103(a) as unpatentable over Mire,
Menache, Barnes, and Miranda.
4

1
Patent Application Publication No. US 2004/0171924 A1 by David A.
Mire et al., published Sep. 2, 2004.
2
Patent Application Publication No. US 2004/0178955 A1 by Alberto
Menache et al., published Sep. 16, 2004.
3
Patent Application Publication No. US 2006/0074319 A1 by Stephen R.
Barnes et al., published Apr. 6, 2006.
4
Patent No. US 7,191,013 B1 issued to Felix Antonio Miranda et al., Mar.
13, 2007.
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Application 11/392,001

3
Regarding independent claim 1, the Examiner‟s position is that Mire
taught the claimed system for monitoring kinematic motion, except that Mire
did not expressly teach the transmitter communicating with a plurality of
antennas to determine the location of the transmitter. (Ans. 4.) The
Examiner found that Menache taught a location system comprising 3
coplanar first antennas and a non-coplanar second antenna receiving signals
from marker tags and using RF direction algorithm processing for
determining motion and positioning in three-dimensional space. (Id.)
According to the Examiner, “[i]t would have been obvious in view of
Menache to use the tag and antenna system on the human and treadmill of
Mire in order to determine motion and positioning of the implanted sensor in
three dimensional space.” (Id.)(Emphasis added).
Appellant contends, among other things, that “[n]othing in Menache
describes the tags 52 as being implantable in a person.” (App. Br. 8.)
“Rather, the tags 52 are described throughout Menache as being placed on
an object such as the outer garments or limbs of a person or [on a] physical
structure such as a sword.” (Id.)
The Examiner responds that “[r]adio frequency tags are commonly
known in the art and are known to be capable of being implanted.
Furthermore, modifying Mire to put the tag or tags „on the body‟ can include
on the bone within the interior sensor system or on the exterior ….” (Ans.
8.)
While radio frequency tags capable of being implanted into a patient
may have been known in the art, we agree with Appellant (Reply Br. 4) that
the Examiner has not established that Menache‟s tags 52 were such
implantable tags. See In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988) (A
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conclusion that the claimed subject matter is prima facie obvious must be
supported by evidence.). Nor do we find that a skilled artisan would have
understood Menache‟s teaching to place its marker tag(s) “on” an object
such as a person (Menache [0058]) to include implantation of the tag(s) on a
bone. No such suggestion is disclosed in Menache. Rather, Menache taught
placing the tags on a person‟s limbs and joints. (Id.) Moreover, Menache
disclosed its invention as being directed to applications such as motion
capture for video games, television, feature films, digital stunts, etc., without
any reference to applications requiring or involving medical or surgical
procedures. (Menache [0298].) Consequently, the Examiner has not
established that substituting Menache‟s tags and antennas for Mire‟s
transmitter would have yielded a system comprising a wireless transmitter
configured to be implanted into a patient, as required by independent claim
1. Accordingly, we reverse the rejection of claim 1 and its dependent claims
2, 6-9, and 10-14.
Regarding the separate rejection of dependent claims 3, 4, 15, and 16,
the Examiner apparently relied on the same combination of Mire and
Menache as teaching or suggesting the claim limitations of independent
claim 1. (See Ans. 6.) Accordingly, we reverse the rejection of these claims
over Mire, Menache, and Barnes for the same reasons discussed regarding
the rejection of claim 1.
Regarding the separate rejection of dependent claim 5, the Examiner
apparently relied on the same combination of Mire and Menache as teaching
or suggesting the claim limitations of independent claim 1. (See Ans. 7-8.)
Accordingly, we reverse the rejection of this claim over Mire, Menache,
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Barnes, and Miranda for the same reasons discussed regarding the rejection
of claim 1.

SUMMARY
We reverse each of the obviousness rejections.

REVERSED

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