Passy-Muir, Inc.Download PDFPatent Trials and Appeals BoardDec 17, 20212021002687 (P.T.A.B. Dec. 17, 2021) Copy Citation 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. 15/372,211 12/07/2016 Christy Leslie Ludlow PASSY.023C1 3972 20995 7590 12/17/2021 KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE, CA 92614 EXAMINER THANH, QUANG D ART UNIT PAPER NUMBER 3785 NOTIFICATION DATE DELIVERY MODE 12/17/2021 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): efiling@knobbe.com jayna.cartee@knobbe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHRISTY LESLIE LUDLOW and LARRY LEE HOOD Appeal 2021-002687 Application 15/372,211 Technology Center 3700 ____________ Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and BRADLEY B. BAYAT, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–4, 23–29, 31, and 32.2 We have jurisdiction under 35 U.S.C. § 6(b). A video hearing was held on December 13, 2021. We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “the assignee of the present application, PassyMuir, Inc.” Appeal Br. 3. 2 Claims 5, 6, 12–14, and 17–22 are cancelled and claims 7–11, 15, 16, and 30 are withdrawn. Appeal Br., Claims App. Appeal 2021-002687 Application 15/372,211 2 STATEMENT OF THE CASE Claimed Subject Matter Claims 1 and 23 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A device comprising: a first vibrotactile stimulator; a second vibrotactile stimulator; electronic components configured to set the first vibrotactile stimulator to operate at a first vibrating rate and set the second vibrotactile stimulator to operate at a second vibrating rate different than the first vibrating rate; and a collar configured to position the first vibrotactile stimulator and the second vibrotactile stimulator over a neck of a subject, wherein the first vibrating rate is between 50 Hz and 90 Hz and the second vibrating rate is between 90 Hz and 130 Hz. Rejection Claims 1–4, 23–29, 31, and 32 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ludlow et al. (US 2009/0187124 A1, pub. July 23, 2009) (“Ludlow”) in view of Radl et. al. (US 2012/0046579 A1, pub. Feb. 23, 2012) (“Radl”). ANALYSIS The Examiner’s rejection of independent claim 1 includes a finding that the combined teachings of Ludlow and Radl fails to teach a second vibrating rate between 90 Hz and 130 Hz for a second vibrotactile stimulator. See Final Act. 4–5. To the extent that the rejection relies on evidence for this claim limitation, the Examiner cites to Ludlow to teach a second vibrotactile stimulator and Radl to teach a different vibrating rates Appeal 2021-002687 Application 15/372,211 3 between the first and second vibrotactile stimulators. See Final Act. 4–5. To remedy the deficiency, the Examiner determines: With respect to “the second vibrating rate is between 90 Hz and 130 Hz”, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the Ludlow et al.’s reference to select the second vibrating rate such that it is between 90 Hz and 130 Hz, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Furthermore, since applicant’s publication in paragraph [0006] discloses various ranges of the first and second vibrating rates and fail to disclose that having the second vibrating rate “between 90 Hz and 130 Hz” solves any stated problem or is for any particular purpose, thus absent a teaching as to criticality that vibrating rate “is between 90 Hz and 130 Hz”, this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553,555,188 USPQ 7, 9 (CCPA 1975). Final Act. 5–6; see Ans. 14–15. The Examiner’s determination lacks adequate support. First, the modification of Ludlow’s second vibrotactile stimulator to operate at a rate between 90 Hz and 130 Hz appears to be supported only on legal precedent. In other words, the Examiner’s determination fails to provide a sufficient explanation of the applicability of the legal precedent to the facts of the present case. See Appeal Br. 10; In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds . . . [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)); see also Manual of Patent Examining Procedure Appeal 2021-002687 Application 15/372,211 4 (“MPEP”) § 2144 (“Supporting a Rejection Under 35 U.S.C. 103”). For example, the Examiner does not explain why having a second vibrotactile stimulator operate at a second vibrating rate between 90 Hz and 130 Hz –– when a first vibrotactile stimulator operates at a first vibrating rate between 50 Hz and 90 Hz –– is recognized as a result-effective variable, i.e., a variable which achieves a recognized result. See In re Antonie, 559 F.2d 618, 620 (CCPA 1977); see also MPEP § 2144.05 (II)(B) (“There Must Be an Articulated Rationale Supporting the Rejection”). Second, contrary to the Examiner’s determination, the Appellant’s Specification offers a reason for the criticality of the claimed range. See Appeal Br. 10; Reply Br. 5. As pointed out by the Appellant, the Specification at paragraph 118 describes “a first vibrating frequency between about 50 Hz and about 90 Hz (e.g., about 70 Hz) and a second vibrating frequency between about 90 Hz and about 130 Hz (e.g., about 110 Hz) can provide at least a 65% or 85% increase in the urge to swallow over control.” Appeal Br. 10; Reply Br. 5. The Examiner counters that this paragraph “teaches that the combination of the first and second frequency ranges can provide an increase in the urge to swallow over control, but does not specifically provide any criticality alone for the second vibrating frequency between 90 Hz and 130 Hz.” Ans. 15; see id. at 14. The Examiner’s position, however, fails to appreciate that claim 1 as a whole claims the combination; i.e., “the first vibrating rate is between 50 Hz and 90 Hz and the second vibrating rate is between 90 Hz and 130 Hz.” See Reply Br. 5; see also MPEP § 2144.05 (II)(A) (“Optimization Within Prior Art Conditions or Through Routine Experimentation”). Appeal 2021-002687 Application 15/372,211 5 Thus, we do not sustain the Examiner’s rejection of independent claim 1 and the claims that depend therefrom. The Examiner’s rejection of independent claim 23 and dependent claim 28 is substantially similar to the Examiner’s rejection of claim 1. See Final Act. 6–9. For similar reasons as discussed above, we determine that the Examiner’s rejection of claims 23 and 28, and the claims that depend therefrom, is inadequately supported. Thus, we do not sustain the Examiner’s rejection of independent claim 23 and the claims that depend therefrom. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 23–29, 31, 32 103(a) Ludlow, Radl 1–4, 23–29, 31, 32 REVERSED Copy with citationCopy as parenthetical citation