Ex Parte Harry et al

Board of Patent Appeals and Interferences

Mar 5, 2012

10793729 (B.P.A.I. Mar. 5, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/793,729 03/08/2004 Jason D. Harry 701586-064381 6500
22204 7590 03/05/2012
NIXON PEABODY, LLP
401 9TH STREET, NW
SUITE 900
WASHINGTON, DC 20004-2128
EXAMINER
YU, JUSTINE ROMANG
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
03/05/2012 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 JASON D. HARRY,
JAMES J. COLLINS, JAMES B. NIEMI,
ATTILA A. PRIPLATA and STEPHEN J. KLESHINSKI
________________

Appeal 2010-002453
Application 10/793,729
Technology Center 3700
________________

Before STEFAN STAICOVICI, GAY ANN SPAHN and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002453
Application 10/793,729

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1, 2, 5, 6, 8-12, 15, 19-26, 28, 29, 31, 34, 35, 37, 40, 41,
43-46, 48-51, 53-55, 57, 58, 60, 61, 64, 65, 73-75, 80, 81, 98-110, 112, 114-
119, 180-194, 196, 199, 201-208 and 213-215. Claims 3, 4, 7, 13, 14, 16-
18, 27, 30, 32, 33, 36, 38, 39, 42, 47, 52, 56, 59, 62, 63, 66-72, 76-79, 82-97,
111, 113, 120-179, 200 and 209-212 are withdrawn (App. Br. 2 as
amended). Claims 195, 197 and 198 have been cancelled (App. Br. 2 as
amended). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

The Claimed Subject Matter
The claimed subject matter pertains to a foot stimulation system
having at least one stimulator that provides a subthreshold bias signal to
target cells. A subthreshold bias signal is required in each independent
claim as having a magnitude that is below a threshold where the target cells
are activated by a stimulus (claims 1, 24, 180 and 192). Method claim 192
corresponds with claim 1 which is illustrative of the claims on appeal and is
reproduced below:

1. A wearable system for neurological stimulation of a
human foot, the system comprising:
a platform having at least one stimulator adapted to apply
a stimulation to mechanoreceptors in the foot;
a controller including at least one bias signal generator
providing a driving signal to the at least one stimulator, the at
least one stimulator providing a subthreshold bias signal to
target cells in response to receiving the driving signal, the
subthreshold bias signal having a magnitude that is below a
threshold where the target cells are activated by a stimulus; and
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Application 10/793,729

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a power source providing electrical energy to the
controller, including the at least one bias signal generator.

References Relied on by the Examiner
Leeper US 4,080,971 Mar. 28, 1978
Yamazaki US 4,465,158 Aug. 14, 1984
Lyden US 5,203,793 Apr. 20, 1993
Reilly US 5,913,838 Jun. 22, 1999
Chen US 6,234,987 B1 May 22, 2001
Cutler US 6,290,661 B1 Sep. 18, 2001
Zimmerman US 2004/0077975 A1 Apr. 22, 2004
Yamana JP 11-235372 A Aug. 31, 1999

The Rejections on Appeal1
1. Claims 1, 2, 5, 6, 8, 9, 19-22, 29, 31, 37, 40, 41, 43, 44, 55, 57, 58, 60,
74, 75 and 192 are rejected under 35 U.S.C. § 102(b) as anticipated by
Reilly (Ans. 4).
2. Claims 10, 11, 12, 26, 45, 46, 48, 49, 50, 51, 53 and 54 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Reilly and Yamana
(Ans. 6).
3. Claims 15 and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reilly and Lyden (Ans. 7).
4. Claims 23, 107-110, 112, 114, 193, 194, 196, 1992, 201, 204 and 205
are rejected under 35 U.S.C. § 103(a) as being unpatentable over Reilly
(Ans. 7).

1 The rejection under 35 U.S.C. § 112, second paragraph, of claims 1, 2, 5, 6,
8-12, 15, 19-26, 28, 29, 31, 34, 35, 37, 40, 41, 43-46, 48-51, 53-55, 57, 58,
60, 61, 64, 65, 73-75, 98-110, 112, 114-119, 180-199, 201-208 and 213-215
has been withdrawn (Ans. 3).
2 The Examiner recites claims 193-199 yet claims 195, 197 and 198 have
been cancelled (Ans. 7, App. Br. 2 as amended).
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5. Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reilly and Chen (Ans. 8).
6. Claims 34 and 35 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reilly and Yamazaki (Ans. 9).
7. Claims 61, 64, 65, 73, 80, 81, 118 and 119 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Reilly and Cutler (Ans. 9).
8. Claims 1, 98-106, 192, 193, 202-204, 206-208 and 213-215 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Zimmerman
and Reilly (Ans. 10).
9. Claims 115-117 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reilly and Leeper (Ans. 10).
10. Claims 180-191 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zimmerman, Reilly and Cutler (Ans. 10).

ISSUE
Does Reilly anticipate a foot stimulation system having at least one
stimulator that provides a subthreshold bias signal to target cells as set forth
in claims 1 and 192?
Has the Examiner provided sufficient evidence and technical
reasoning for concluding that the cited art makes providing a subthreshold
bias signal to target cells obvious?

ANALYSIS
Each claim rejected as being anticipated by Reilly requires “providing
a subthreshold bias signal to target cells” (or similar such language) and
each claim requires this subthreshold bias signal as “having a magnitude that
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is below a threshold where target cells are activated by a stimulus” (see
independent claims 1 and 192). The Examiner states that “Reilly would
appear to include all of the positive claim limitations recited” and that the
“only difference appears to be whether or not the signal that is generated [in
Reilly] by the signal generator provides a subthreshold bias signal having a
magnitude that is below a threshold where the target cells are activated by a
stimulus” (Ans. 4). The Examiner states that different patients have
different threshold levels and accordingly, it is possible for patients with
“degraded sensory performance” to “not be able to sense the lowest power
level of the Reilly device because their condition is such that the magnitude
of the driving signals would be below the threshold where the target cells are
activated by the stimulus” (Ans. 4-5, see also 11, 12). The Examiner states
that the “Reilly device would therefore be capable of performing the claimed
system and method for those patients with a raised threshold level and
degraded sensory performance” (Ans. 5, see also 11, 12). The Examiner
concludes that “[t]herefore it would appear that Reilly anticipates the
claimed invention” (Ans. 6, see also 11).
Anticipation is a question of fact and a “claim is anticipated only if
each and every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference” (Verdegaal Bros., Inc. v.
Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987)). Reilly is
directed to a “vibrating foot massage insole apparatus” which can “deliver a
vibrating massage to the soles of a user’s feet” (Reilly 1:5-7 and 1:22-25).
Such a vibrating massage is not subthreshold bias signal as this term is
required in the claims and the Examiner does not identify where Reilly
expressly describes providing a subthreshold bias signal to target cells.
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Regarding Reilly inherently describing a subthreshold bias signal to target
cells, the predecessor to our reviewing court has determined that inherency
“may not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient”
(In re Oelrich, 666 F.2d 578, 581 (C.C.P.A.1981)). Here, the Examiner
relies on probabilities or possibilities in stating that it is possible that a
patient who may have sufficient degraded sensory performance may not be
able to sense the lowest power level of the Reilly device (Ans. 5, see also 11,
12). The Examiner acknowledges that Reilly does not necessarily generate a
subthreshold bias signal to target cells regardless of the patient, because
“different patients would have different threshold levels” (Ans. 6, see also
12). As the Examiner identifies no express or inherent disclosure in Reilly
of “providing a subthreshold bias signal to target cells,” we reverse the
anticipation rejection of claims 1, 2, 5, 6, 8, 9, 19-22, 29, 31, 37, 40, 41, 43,
44, 55, 57, 58, 60, 74, 75 and 192.
Claims 1, 10-12, 15, 23-26, 28, 34, 35, 45, 46, 48-51, 53, 54, 61, 64,
65, 73, 80, 81, 98-110, 112, 114-119, 180-194, 196, 199, 201-208 and 213-
215 are rejected as being unpatentable under 35 U.S.C. § 103(a) over various
prior art references (Ans. 6-10). In each rejection, the Examiner maintains
that the base claim (e.g., claims 1 and 192) remains anticipated by Reilly
(Ans. 13-15, 17). However, the additionally cited art does not cure the
deficiency of Reilly3 and further, the Examiner does not articulate a rational

3 The Examiner references Zimmerman’s Paragraph 57 as disclosing “sub-
and supra-threshold stimulation,” but this paragraph is directed to small and
large amplitude vibrations to provide tactile feedback (Ans. 10, 15). The
Examiner does not reference any other citation for providing subthreshold
stimulation.
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Application 10/793,729

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underpinning to support or explain why a person having ordinary skill in the
art would look to the cited art to provide the claimed “subthreshold bias
signal to target cells.” Because such is lacking, we reverse the obviousness
rejections of claims 1, 10-12, 15, 23-26, 28, 34, 35, 45, 46, 48-51, 53, 54, 61,
64, 65, 73, 80, 81, 98-110, 112, 114-119, 180-194, 196, 199, 201-208 and
213-215.

CONCLUSION
Reilly does not anticipate a foot stimulation system having at least one
stimulator that provides a subthreshold bias signal to target cells as set forth
in claims 1 and 192.
The Examiner has not provided sufficient evidence and technical
reasoning for concluding that the cited art makes providing a subthreshold
bias signal to target cells obvious.

DECISION
The rejections of claims 1, 2, 5, 6, 8-12, 15, 19-26, 28, 29, 31, 34, 35,
37, 40, 41, 43-46, 48-51, 53-55, 57, 58, 60, 61, 64, 65, 73-75, 80, 81, 98-
110, 112, 114-119, 180-194, 196, 199, 201-208 and 213-215 are reversed.

REVERSED

MP