Passy-Muir, Inc.

Patent Trials and Appeals Board

Dec 17, 2021

2021002687 (P.T.A.B. Dec. 17, 2021)

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30 are withdrawn.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

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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

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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
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Application 15/372,211

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(“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

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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