Ex Parte Libbus

Board of Patent Appeals and Interferences

Nov 29, 2010

10962845 (B.P.A.I. Nov. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte IMAD LIBBUS
____________________

Appeal 2009-002001
Application 10/962,845
Technology Center 3700
____________________

Before: LINDA E. HORNER, WILLIAM F. PATE III, and
KEN B. BARRETT, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-002001
Application 10/962,845
2
This is a response to a Request for Reconsideration (rehearing) in
Appeal 2009-002001. Rehearing is limited to matters overlooked or
misapprehended by the Board in rendering the initial decision.
As noted in our original decision of March 19, 2010 (hereinafter
“Decision”), Appellant’s claim 1 is directed to an article with only two
components--a baroreflex stimulator and a controller. Decision 2.
Appellant has chosen to further define these components by what they do
rather than recite any structural characteristics. Functional claiming is
entirely permissible. However, as the court stated in In re Swinehart, 439
F.2d 210, 213 (CCPA 1971):
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
Appellant argues that “Kieval generates a continuous, periodic, or
episodic signal…. None of these protocols modulate the intensity of the
stimulation as an inherent part of the stimulation protocol.” Req. Reh’g 2. As
noted in our Finding 2, Kieval use the term modulate(s) or modulation
several times in column 7; specifically in lines 35, 38, 47 and 53. See
Decision 5-6. Kieval states, “[t]he control signal activates, deactivates or
otherwise modulates the baroreceptor activation device 70.” Col. 7, ll. 34-36.
Therefore, we do not credit Appellant’s argument that Kieval does not
modulate the stimulation protocol. Kieval’s modulated control signal is a
function of the received sensor signal (col. 7, ll. 33-34), just as Appellant’s
modulation can be based on detected pulsatile parameters. Spec. 21:16-19.
Based on the above language found in the Kieval reference, the Examiner
Appeal 2009-002001
Application 10/962,845
3
has sustained the burden of showing that Kieval is both capable of
modulating the baroreceptor signal and that Kieval contemplates doing so.
Pages 3 and 4 of the Request for Rehearing are descriptions of how
Appellant’s device operates. Appellant states that Appellant’s device varies
the intensity of the stimulation when and while the blood pressure is normal.
Not only has Appellant relied on functional claiming, but the asserted
function of varying the stimulus while the blood pressure is normal does not
appear in independent claim 1.
On page 4 of the Request for Rehearing, Appellant states that Kieval
is not configured to change stimulation parameters in a manner that is
effective to abate baroreflex adaptation. We are of the view, based on the
above cited disclosure from column 7 of Kieval, that Kieval is operable to
modulate the baroreceptor signal and therefore is effective to abate
baroreflex adaptation.
On page 5 of the Request for Rehearing, Appellant again discusses
varying the intensity of baroreflex stimulation while the blood pressure is
normal. Appellant discusses varying the stimulation after each pulse. As
noted above these limitations are not found in claim 1.
On page 6 of the Request for Rehearing Appellant again discusses
providing stimulation while the blood pressure is normal. As noted above we
do not find this to be required by independent claim 1.
Appellant has chosen to claim the components of claim 1 functionally,
and the Examiner has shown that not only is Kieval capable of modulating
the baroreceptor activation device, such a protocol has been contemplated by
Kieval. See col. 7, ll. 34-36. Thus, our finding that claim 1 is anticipated by
Kieval is based on a preponderance of the evidence. As noted in our
Decision, Appellant has not provided any evidence to establish that Kieval’s
Appeal 2009-002001
Application 10/962,845
4
controller and algorithm would not necessarily vary or modulate an intensity
of the baroreflex stimulation and that such a modulation would not thereby
abate baroreflex adaptation. Decision 12.
Accordingly, while we have granted Appellant’s request for rehearing
to the extent that we have reconsidered our previous decision, the request is
denied with respect to making any change thereto. The Board’s decision is
now final for the purposes of judicial review.

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).

REHEARING DENIED

nlk

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P.O. BOX 2938
MINNEAPOLIS MN 55402