Ex Parte Merfeld et al

Board of Patent Appeals and Interferences

Jan 27, 2009

10738920 (B.P.A.I. Jan. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL M. MERFELD, WANGSONG GONG,
STEVEN D. RAUCH, and CONRAD WALL III
____________

Appeal 2008-2165
Application 10/738,920
Technology Center 3700
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Decided: January 27, 2009
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Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
MELANIE L. MCCOLLUM, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellants have requested rehearing (reconsideration) of the Decision
entered August 19, 2008. That Decision affirmed the Examiner’s rejections
of claims 1-5, 11, 12, and 38 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Lattner; and claims 36 and 37 stand rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of Lattner and Karell.
We have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2008-2165
Application 10/738,920

ANTICIPATION:
ISSUE
Did our analysis of the rejection of claims 1-5, 11, 12, and 38 under
35 U.S.C. § 102(b) as being anticipated by Lattner result in a new ground of
rejection?

FINDINGS OF FACT
FF 1. “Lattner’s apparatus comprises . . . 2. a controller, i.e., a
power/control unit that provides stimulation energy, for causing the actuator
to apply a signal, having a signal characteristic selected to jam the first
signal, to the vestibular nerve (FF 2 and 4)” (Decision 6).
FF 2. “Lattner teaches that . . . a ‘[p]ower/control unit . . . is any device that
provides stimulation energy to the patient via the stimulation element and
that is capable of controlling the application of this energy’ (Lattner 9: 42-
44)” (Decision 3).
FF 3. “Lattner does not, however, refer to the signal as a ‘stationary signal’”
(Decision 6).
FF 4. However, “[e]ven if, Lattner’s method of counteracting vertigo relied
on the use of non-stationary signals, there is no evidence on this record that
the controller of Lattner’s device would be incapable of causing the actuator
to apply a stationary signal to the vestibular nerve” (Decision 7). “Simply
stated, there is no evidence on this record that Lattner’s device would be
incapable of causing the actuator to apply a stationary signal as required by
Appellants’ claim 1” (id.).
FF 5. Lattner teaches that “[t]he user or manufacturer provides the
power/control unit with the stimulation parameters . . . . Thereafter, these
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parameters are changeable by the patient or adaptively changeable by the
control unit so that the target nerve firing rate is controllable to create the
desired stimulation function” (Lattner, col. 9, l. 67 - col. 10, ll. 1-6).

PRINCIPLES OF LAW
“[I]n an ex parte proceeding to obtain a patent, . . . the Patent Office
has the initial burden of coming forward with some sort of evidence tending
to disprove novelty.” See In re Wilder, 429 F.2d 447, 450 (CCPA 1970).
Nevertheless, “when the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990) (emphasis added).
Where “the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the Patent and Trademark Office can require [an] applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.” In re Best, 562 F.2d 1252, 1255
(CCPA 1977).
A new ground of rejection occurs when the Examiner and the Board
rejected a claim for different reasons. In re Kumar, 418 F.3d 1361, 1368
(Fed. Cir. 2005), citing In re Waymouth, 486 F.2d 1058, 1060-61 (CCPA
1973).
“[T]he ultimate criterion of whether a rejection is considered ‘new’ in
a decision by the board is whether appellants have had fair opportunity to
react to the thrust of the rejection”. In re Kronig, 539 F.2d 1300, 1302
(CCPA 1976).
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Application 10/738,920

ANALYSIS
The claims are directed to an apparatus for stimulating the vestibular
system. Claim 1 is illustrative:
1. An apparatus for stimulating the vestibular system, the apparatus
comprising:
an actuator for interacting with the vestibular nerve on which is
present a first signal; and
a controller for causing the actuator to apply a stationary signal to the
vestibular nerve, the stationary signal having a signal characteristic selected
to jam the first signal.

We disagree with Appellants’ contention that our recognition that
Lattner failed to characterize the controller’s signal as a “stationary signal”
is an express teaching that Lattner fails to teach the controller of Appellants’
claim 1 (Req. Rh’g. 1). Lattner’s failure to give the signal a name, e.g.,
“stationary signal” does not mean that Lattner’s signal is not stationary, or
that Lattner’s controller is not capable of causing (e.g., preprogrammed to
cause) the actuator to apply a stationary signal to the vestibular nerve.
Appellants’ claim 1 does not limit the range of possible signals that
can be provided by the controller to only those that are “stationary”.
Appellants admit that “[a] typical controller is built around a general purpose
microprocessor. By definition, such a general-purpose microprocessor can
always be programmed to place virtually any signal on the nerve. The only
barrier to such programming is the programmer’s own creativity” (Req.
Rh’g 4). Appellants also admit that there is no evidence on this record to
suggest that Lattner’s device is not programmed to place a variety of signals
on a nerve, including a stationary signal (id.; see also FF 4). In this regard,
we note that Lattner teaches that “[t]he user or manufacturer provides the
power/control unit with the stimulation parameters . . . . Thereafter, these
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Application 10/738,920

parameters are changeable by the patient or adaptively changeable by the
control unit so that the target nerve firing rate is controllable to create the
desired stimulation function” (FF 5 (emphasis added)). Accordingly, the
evidence on this record suggests that Lattner’s controller is programmed or
configured with a variety of stimulation parameters (e.g., more than one
parameter) that are changeable to the patient or adaptively changeable by the
control unit (id.).
There is no evidence on this record that Lattner’s programmed
controller cannot cause the actuator to apply a stationary signal to the
vestibular nerve as required by Appellants’ claim 1. There is no evidence on
this record to support Appellants’ contention that the use of Lattner’s
programmed controller to cause the actuator to apply a stationary signal
would require a modification of Lattner’s device (Req. Rh’g. 4). Claim 1 is
not drawn to a method. Claim 1 simply requires the controller to cause the
actuator to apply a stationary signal to the vestibular nerve. While Lattner’s
controller may be capable of causing the actuator to apply a variety of
signals to the vestibular nerve, there is no evidence on this record that it
could not be used, without modification of its structure or programming, to
apply a stationary signal to the vestibular nerve. “Appellant[s] recognize[ ]
that an existing structure cannot be patented simply because one has
identified a novel use for that structure” (Req. Rh’g. 5).
Nevertheless, we agree with Appellants’ contention that just because
“a controller could have been programmed to carry out a claimed function
does not mean that the controller was in fact programmed to carry out that
function” (id. at 4). However, we disagree with Appellants’ contention that
“[t]he Decision suggests that so long a prior art device could have been
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modified to carry out the function of a claimed device, it anticipates the
claimed device under section 102” (Req. Rh’g 4).
As Appellants recognize “Lattner’s controller could, in principle, be
programmed to carry out virtually any function, including that recited in
Appellant’s [sic] claim 1” (Req. Rh’g 7). There is no evidence on this
record to suggest that Lattner’s controller was not programmed to cause an
actuator to apply a stationary signal to the vestibular nerve, or a stationary
signal in addition to a variety of other signals (see FF 1, 2, 4, and 5). Thus,
the question is not whether Lattner’s controller must be modified to perform
as claimed; rather the question is whether Lattner’s controller is already
programmed to perform as claimed.
Given the facts on this record it is proper to shift the evidentiary
burden to Appellants to demonstrate that Lattner’s device does not cause the
actuator to apply a stationary signal to the vestibular nerve (e.g., was not
already programmed to perform as required by Appellants’ claim or could
otherwise perform the claimed function) (see id.). Where “the claimed and
prior art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the Patent and Trademark
Office can require [an] applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.”
In re Best, 562 F.2d at 1255.
On reflection, we find no persuasive argument or evidence on this
record to support Appellants’ contention that “Appellant’s [sic] controller is
a ‘new machine… programmed to perform particular functions’ in
connection with causing placement of a stationary signal on a nerve” (Req.
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Rh’g 5). Nevertheless, we agree with Appellants’ contention that our
reasoning differs from that of the Examiner’s (Reg. Rh’g. 1-2).
CONCLUSION OF LAW
Our analysis of the rejection of claims 1-5, 11, 12, and 38 under 35
U.S.C. § 102(b) as being anticipated by Lattner resulted in a new ground of
rejection.

OBVIOUSNESS:
Appellants did not address the rejection of claims 36 and 37 under 35
U.S.C. § 103(a) as unpatentable over the combination of Lattner and Karell,
wherein we concluded, inter alia, that it would have been prima facie
obvious to use Karell’s signal generator (e.g., controller) in Lattner’s device
(Decision 11). Accordingly, we reaffirm our affirmance of this rejection.

TIME PERIOD FOR RESPONSE
In addition to affirming the Examiner’s rejection of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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Application 10/738,920

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner….

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record….

Should the Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the Appellant elects prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Board of Patent Appeals and Interferences
for final action on the affirmed rejection, including any timely request for
rehearing thereof.

REHEARING GRANTED-IN-PART

Ssc:

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